The assignment deed, which had assigned the rights of the original film to the Plaintiff, prima facie did not transfer them the right to make a sequel or a prequel.
Zee Entertainment Enterprises v. Ameya Vinod Khopkar & Ors.
Zee Entertainment Enterprises Limited (ZEE) approached the Bombay High Court seeking a permanent and an ad-interim injunction against four defendants from releasing De Dhakka 2 which they claimed was evidently a sequel to the original film, De Dhakka, over which they had rights. The defendants included Ameya Vinod Khopar and another producer (defendants No. 1 and No.2) and Satya Films (defendant No. 4, owned by defendant No. 3) who were the producers of the original film, who had then assigned their rights to ZEE. The dispute was particularly concerned with the copyright in the underlying literary work including title, characters, script and dialogues in De Dhaka, and the trademark over the original film title, which the Plaintiff claimed was transferred to them through an Assignment Deed and hence the Defendants had no right to make De Dhaka 2 using the same.
ZEE relied on a Deed of Assignment that was entered into with Satya Films back in 2008 to establish that they had rights over any future works concerning De Dhakka. While the 2008 Assignment Deed transferred ‘Negative rights’ over De Dhakka, the Plaintiff relied on the phrase “Negative rights or any other rights that may be discovered or come in the future” to make their claim over De Dhakka 2. It was argued that if the Assignment Deed is read in its entirety and taken as a whole, the Plaintiff received all rights concerning the film and future works.
The Defendants used the same argument in favour of reading the Assignment Deed as a whole and in its entirety to arrive at the diametrically opposite conclusion that ZEE was not given any right over the prequel or sequel of the film.
The Court’s Reasoning
To resolve this dispute, Justice Colabawalla scrutinized the language of the Assignment Deed and relied on the precedent set in Narendra Hirawat & Co. v. M/s Alumbra Entertainment & Media Pvt. Ltd & Ors to arrive at a decision that went in favor of the Defendants. This judgment holds that, since the words ‘sequel rights’ appear nowhere in the Assignment Deed it cannot be concluded that the Defendants had assigned to the Plaintiff a right in the sequel too. Also, since the agreement was specifically for transferring the ‘Negative Rights’ of De Dhakka, it cannot be concluded that the Defendants assigned or even intended to assign more rights than those explicitly mentioned in the Assignment Deed. Further, the judge also relied on the claim made by the Defendants that De Dhakka 2 has a completely different script, different dialogues, different concept, different characters and different locations and different music. Citing these reasons after looking into the language of the Deed, the judge concluded that there was no prima facie case for granting an injunction.
Facebook Incorporation and Another v. Surinder Malik and Others – Delhi High Court
The dispute between the Parties arose on account of the facebook’s alleged infringement of the Respondents’ mark “DA MILANO” by advertising and offering to sell products under an identical mark of the Respondents.
The Court observed that Facebook did not play an active role as intermediaries and merely had the duty to take down posts which were brought to their notice by the Respondents.
Accordingly, the Court directed facebook to take down unauthorized posts which infringe the Respondents’ mark on express notification by the Respondents.
The Court also directed the facebook to intimate the Respondents of doubtfully offending posts on their platforms to enable the Respondents to pursue action in relation to them.
MTR Badam Drink’s Hot Win Against Counterfeiters
MTR Foods, a well-known FMCG in India since 1924, is the registered trademark owners of the brand name “MTR”. Among its several products, Badam Drink Mix is one of the most popular. Recently it was brought to MTR’s notice that several shops and supermarkets in Tamil Nadu were selling badam drink mixes with the trademark “MTR” resembling the real MTR’s appearance/trade dress. In court proceedings, the Madras High Court noted that the carton, get up, label design of the cartons, of the counterfeiters are similar to MTR product’s design and label. The Court, therefore passed an ex-parte injunction against the sellers from using the trade dress of MTR Badam Drink Mix and passing off the goods as that of MTR. The Court further ordered the sellers to surrender the cartons, packing materials, catalogues, publicity materials bearing similar trade dress as MTR for destruction.
May 10, 2019
Internet Broadcasting Not Covered Under Sec.31D Copyright Act - Bombay High Court.
Tips Industries Ltd. Versus Wynk Music Ltd. & Anr.
"The internet broadcasting organizations cannot enjoy the benefits of a Statutory License under Section 31-D. The intention of the Legislature while enacting the amending legislation viz. the Copyright (Amendment) Act, 2012, was to restrict the grant of Statutory License under Section 31-D to radio and television broadcasting organisations".
The defendants pressed into service an Office Memorandum issued by Department of Industrial Policy and Promotion on behalf of Government of India on September 5, 2016, which clarified that "the provisions of Section 31-D of the Copyright Act, 1957 are not restricted to radio and television broadcasting only but cover internet broadcasting also".
The Court rejected this memorandum by observing that Central Government did not have power to make such interpretations. "The said Memorandum lacks a 'statutory flavour' and cannot prevail over interpretation which is drawn under the Act and the Rules (which in-turn were formed under Section 70 of the Act). The interpretation of Section 31-D in the said Memorandum is inconsistent with the interpretation drawn by this Court and this Court is not bound by the said Memorandum", observed the Court.
Prior determination of royalty necessary before invoking Section 31D "Prior determination of royalty rates is a necessary precondition for the exercise of rights in respect of a Statutory License under Section 31-D. A holistic reading of the Act and the Rules, including Rules 29, 30 and 31 of the Rules, indicate the Legislature's intent to make fixation of royalty rates a mandatory step before grant of license under Section 31-D", said the Court.
The Court observed that "the Defendants through their outright purchase / download services are enabling their subscribers to actually store electronic files of the Plainti's sound recordings on their devices.
Storing the files of the Plaintiff's sound recordings in electronic medium by the Defendants is nothing but making of another sound recording embodying the Plaintiff's sound recording.
This right is an exclusive right granted to the owner of the copyright in the sound recording under Section 14(1)(e)(i) of the Act and the Defendants cannot be allowed to continue the same without any permission or authorization of the Plaintiff".
April 07, 2019
Design Cannot Constitute Trademark'; Delhi HC Dismisses Passing Off Suit By Crocs Inc
IN THE HIGH COURT OF DELHI AT NEW DELHI
CROCS USA VS AQUALITE INDIA
CROCS USA VS ACTION SHOES
CROCS USA VS BIOWORLD MERCHANDISING
CROCS USA VS LIBERTY SHOES
CROCS USA VS BATA INDIA
CROCS USA VS RELAXO FOOTWEAR
The passing off suits based solely on the registered design were held to be not maintainable.
Dismissing the suits filed by multinational footwear manufacturer Crocs, the Delhi High Court has held that suit for action against passing off solely based on a design registered under the Designs Act 2000 is not maintainable.
"In my opinion, a registered design confers on the registrant, only the right to restrain another from infringing the design and not to, also claiming the registered design as its trade mark/trade dress, restrain another from passing off its goods as that of the registrant, by copying the registered design", held Justice Rajiv Sahai Endlaw.
Delhi High Court Allows Composite Suit For Design Infringement And Passing Off
Earlier this month, a five-judge bench of the Delhi High Court (the "Court")1 held that two causes of action, one for relief with respect to passing off, and another with respect to design infringement under the Designs Act, 2000, can be joined and tried in a composite suit.2
The present suit, out of which this reference arose, was filed by the plaintiff, Carlsberg Breweries, alleging infringement of a registered design and passing off of the plaintiff's trade dress, against Som Distilleries, essentially imitating the Carlsberg product.
The defendant objected to the frame of the suit, pointing out that in Mohan Lal v. Sona Paint3 (the "Mohan Lal Case"), the two claims, for passing off and design infringement could not be combined in one suit.
A single judge analysed the parties' submissions concluding that the issue decided in the Mohan Lal Case required a second look. He referred the question of whether a composite suit could be maintained, where the parties to the proceedings are the same, for re-consideration to a larger bench.
This was done in light of Order II Rule 3 of the Code of Civil Procedure, 1908 (the "CPC"), which permits joinder of causes of action.
3. ISSUES REFERRED TO THE BENCH
The single judge referred the following questions to the larger bench:
Is the court compelled by anything in law to reject a plaint for misjoinder if two causes of action cannot be clubbed? ("Issue 1")
Are the two causes of action so disparate or dissimilar that the court cannot try them together in one suit? ("Issue 2")
4. ANALYSIS BY THE COURT AND JUDGMENT
4.1 Issue 1
While dealing with the first issue, the Court placed reliance on the decision delivered by a division bench of the Court in Jay Industries v. Nakson Industries4, where the division bench held that two different causes of action in fact can be a part of the same transaction.
The Court also placed reliance on the meaning of the term cause of action as explained by the Supreme Court of India (the "Supreme Court") in Kusum Ingots & Alloys Ltd. v. Union of India and Another, in which the Supreme Court observed the following:
"6. [...] cause of action implies a right to sue. The material facts which are imperative for the suitor to allege and prove constitute the cause of action. Cause of action is not defined in any statute. It has, however, been judicially interpreted inter alia to mean that every fact which would be necessary for the plaintiff to prove, if traversed, in order to support his right to the judgment of the Court."
Relying on the above mentioned cases, the Court held that, under the CPC, there is no threshold bar on the maintainability of suits on the perceived ground of misjoinder of causes of action, which would prevent the Court from trying a composite suit with two causes of action.
The Court also observed that Order II Rule 3 of the CPC already lays down which causes of action can be united in one suit and what the bar on them is.
In that context, the Court noted the following:
"37. These are, if one may say so, the express bar or exceptions to the rule in Order II Rule 3. The other bar is the kind visualized in Section 80 Code of Civil Procedure, 1908, a threshold procedural step without following which a suitor cannot enter the court."
Thus, the Court answered the first question by stating that the conclusion in the Mohan Lal Case was erroneous.
4.2 Issue 2
As for the second question, the Court noted that both causes of action are against the same defendant and in respect of the same set of acts and transactions. The only distinction is that the relief claimed is different and, therefore, the Court held that claims for design infringement and for passing off could be clubbed together in one suit.
It also noted the following:
"45. ...that the basic facts which impel a plaintiff to approach a court, complaining of design infringement are the same as in the case of passing off. In such circumstances, it is inconceivable that a cause of action can be "split" in some manner and presented in different suits. In this context, this court notes that whereas Order II Rule 3 enables plaintiffs to join disparate causes of action, Order II Rule 2 compels the whole claim to be clubbed together."
On this issue, Justice Valmiki Mehta, who was a part of the five-judge bench, separately held the following:
"18. On account of existence of common questions of law and fact between the two causes of action of infringement of a registered design and passing off, therefore to a considerable extent, the evidence of the two causes of action will be common. In such a situation to avoid multiplicity of proceedings there should take place joinder of the two causes of action of infringement of a registered design and passing off against the same defendant in one suit, otherwise multiplicity of proceedings will result in waste of time, money and energy of the parties and also of the courts."
Magic rice variety from Assam gets GI tag
In what can be termed as a proud moment for the small farmers of Assam, the Boka Chaul (mud rice) has received a Geographical Indication (GI) tag by the government of India’s Intellectual Property India (IPI) body. This is the only product after Muga silk, Joha rice and Tezpur litchi to have earned the GI tag.
Boka chaul is a native rice of the state of Assam which is well-known for its unique property of preparation by just soaking it in water at room temperature. It is a variety of rice grown in many parts of lower Assam, including Nalbari, Barpeta, Goalpara, Kamrup, Darrang, Dhubri, Chirang, Bongaiagoan, Kokrajhar and Baksa.
Grown mostly for personal consumption by farmers, the Boka Chaul is sold in farming areas for Rs 60-80 per kg, as opposed to Rs 100-150 per kg across towns and cities. In Guwahati, it’s generally available during festive and winter seasons across all major departmental stores, including GNRC, SICEDM and NEDFi House.
This variety of rice is mostly used as part of the traditional cuisine
April, 10, 2018
Delhi High Court Decides upon Delay in Filing a Patent Examination Request
The question regarding the condonation of delay in the filing a request for examination of a patent application was once again decided by the Hon’ble Delhi High Court in the case of Sphaera Pharma, Pte. Ltd. And Anr.Vs Union Of India.
Sphaera Pharma (the Petitioner), claimed that they had developed some new compounds which were useful in the treatment of cancer. The Petitioner, thereafter, filed a patent application (no.3114/DEl/2012) with the Indian patent office on 05.10.2012.
Accordingly, the Petitioner was also required to file a request for the examination of the patent application within 48 months from the date of filing the initial patent application.
The Petitioner had also filed Form 30 with respect to the Patent Application so that the request for examination could be taken on record.
However, the said request was not uploaded due to some technical reasons and as a result the patent application was shown as abandoned under Section 11B of the Act. Thereafter, the Petitioner filed a review petition for its patent application which was not considered by the Patent Office.
The Petitioner, aggrieved by the Patent Office, filed a writ petition before the Hon’ble Delhi High Court for the restoration of the Patent application.
The Petitioner contented that the Controller of Patents had the power under Rule 138 of the Patent Rules, 2003 (“Rules”) to extend the prescribed time period, for filing a patent examination request, for a period of one month.
The Court discussed the Nippon case judgment and clarified that the time-limit prescribed under the Act for filing a Patent examination request is mandatory in nature and cannot be relaxed under any circumstances. The Delhi High Court has re-affirmed the issue regarding time limit for filing a request for examination of a Patent application. The Court has clarified that the time limit of 48 months is mandatory in nature and must be adhered to regardless of the delay caused due to any technical reason, any error in entering the priority date for the Patent or due to any other reason.
March 31, 2018
ARTIFICIAL INTELLIGENCE AND COPY RIGHT OWNERSHIP.
The rapid growth of Artificial intelligence (AI) in producing artistic work has raised a controversial question of the Copyright Ownership.
This article address the issue of IP ownership of AI generated works and provides for some feasible solutions to remedy the copyright laws which lacks protection for authorless works produced by Artificial Intelligence”
Google has just started to fund computer software which will write local news. A short story written by Japanese computer software made it to second rounds of national literary prize. And an artificial intelligence company called deep mind has created software that can generate music by listening to music. All these foregoing flashy news stories are evident of the benefit and popularization of Artificial Intelligence in the modern world.
Earlier, the computer generated works relied heavily upon the input provided by the programmer, the software was very much like a tool or a mechanism like brush or canvas. But, of late, the rapid development in technology especially artificial intelligence forces us to think about the nexus between computers and creative processes. This nexus is a result of machine learning software, a subset of artificial intelligence that is capable of learning from the past experience without being specifically programmed by a human.
When machine learning algorithms are applied to literary works, music and art; they learn from the inputs provided by the programmer and generate a new piece of work while making independent decisions to determine what the new work looks like. Today these computer programs are often referred to as neural network, a process which is akin to the thought process of humans.
Complications for Copyright Law
Works which are produced by machine learning programs could create implications for copyright laws. Traditionally, the ownership of copyright work was not in question as the software was used as a mere tool to support the creative process. Furthermore, creative works are granted protection only if they are original in nature and the definition of originality requires a human mind. Copyright laws of Germany and Spain states that work of human minds will only be protected.
So, there are two ways in which copyright ownership can be bestowed on computer generated work. Firstly, copyright protection can be denied as there is no involvement of human mind. Secondly, it can be attributed to the creator of the program.
There are many countries whose laws are not compliant with non human copyright ownership. For ex. – in United States, the Copyright Office has declared that it will register an original work of authorship, provided that the work was created by a human being. This position flows from the case of Feist Publications v Rural Telephone Service Company. Following the lead, in a recent Australian case (Aschos Pty Ltd v Uorp Pty Ltd), the court ordered that the copyright protection cannot be granted as the work was produced with substantial intervention of computers.
The Court of Justice of the European Union also declared in Infopaq International A/S v Danske Dagbaldes Forening that the copyright work must reflect the author’s own intellectual creation, which clearly means the human author is necessary.
The second option is to grant copyright ownership on the programmer or developer itself. It is evident in countries like India, New Zealand, UK, and Hong Kong. This approach is present in section 9(3) of the UK law – Copyright, Designs and Patents Act (CDPA).
“In the case of a literary, dramatic, musical or artistic work which is computer generated, the author shall be taken to be the person by whom the arrangements necessary for the creation of the work are undertaken”
This definition creates another question; who should be considered by law to be the person making the arrangements for the work generated, whether the person is the programmer or the user of the programme. This is asking whether the copyright should be given to the maker of the pen or the writer.
Similarly, taking the example of artificial intelligence, there are algorithms capable of generating a work and the user’s contribution to the creative process is just to press a button while the software will do its thing. So, on whom the authorship should be bestowed, creator or the user of the algorithm.
There are some case laws which indicate that the above question can be solved on case to case basis. In an English case – Nova Productions v Mazooma Games, the court had to decide on the authorship of computer game and it held that the player’s input is not artistic in nature, thus he has contributed no skill or labour of an artistic kind.
At last, things in the future are going to become more complex as the use of artificial intelligence by artists will become more widespread and the machines will get better by producing more creative works , further blurring the line between artwork that is made by a human and by a computer. Enormous advancement in computing and availability of large datasets for processing is gradually making computers better at mimicking humans, thereby creating problems to distinguish between human generated and machine generated work. As of now, we are not at that stage where no human intervention is required by artificial intelligence but we are not far from achieving that stage, so we have to devise some type of protection for these creative works.
Finally, granting copyright to the person who made the artificial intelligence software seems to be more pragmatic and sensible approach and it will ensure that companies keep investing in technology, keeping in mind that they will get a return on their investment.
February 28, 2018
Jurisdiction of courts in online transactions: Impresario Entertainment & Hospitality Pvt Ltd V. S & D Hospitality
Over the last decade or so, the Delhi HC has become the hub for cases pertaining to IP litigation. This prompts parties to initiate proceedings in Delhi HC relating to IP laws which has eventually raised questions regarding the jurisdiction of the court especially in online transactions. This issue has been dealt by Mukta Gupta, J. in the present case.
Background of the case
The plaintiff is a company that provides restaurant services with its registered office in Mumbai and is carrying its business in HKV, New Delhi and a restaurant under the name and style of ‘SOCIAL’ which it has trademarked and has various coffee shops as well. It came to know in 2017 that the defendant has 2 restaurants in Hyderabad under the name ‘SOCIAL MONKEY’. Also, it has a popular beverage by the name ‘A GAME OF SLING’ and the defendant has named a beverage as ‘HYDERABAD SLING’ which is identical and/or deceptively similar to the plaintiff’s beverage.
Hence, the plaintiff had filed for seeking permanent injunction against the defendant from manufacturing, selling, marketing, advertising, and/or offering its services under the trademarks ‘SOCIAL’ and ‘STONE WATER’ or anything similar to them or any attempt to pass off its trademark in defendant’s outlets.
Both these outlets have entered into contract with popular websites like Zomato and Dine Out and so the information of both, along with menu and contact info is available on the websites of Zomato and Dine Out.
Without going into the merits of the case, the court must first satisfy itself that it has the jurisdiction to entertain the case. So, the issue before the court in this case was whether it had the jurisdiction to entertain the case or not?
The primary contention of the defendant was that the court didn’t have the jurisdiction to entertain the suit as it neither had its registered office in Delhi nor it carried on any business in Delhi. Also, plaintiff’s registered office was located in Mumbai which was also outside the jurisdiction of Delhi HC. Defendant’s other contention was that the plaintiff failed to prove its principal office’s location as Delhi.
Responding to this, the plaintiff contended that it didn’t have any office or branch in Hyderabad and that its principal office for financing and licensing of all its brands was located in Delhi only.
The plaintiff also contended that due to the presence of the defendant on websites like Zomato and Dine-out, it was in a position to invite the customers of its plaintiff to visit its outlet in Hyderabad. This was vehemently opposed by the defendants as a misconceived proposition as mere booking or placing an order through internet was insufficient to conclude that a transaction had taken place.
The plaintiff had also contended that the defendant was planning to expand pan India as it had filed for trademark application which was opposed by the defendant stating that the plaintiff’s qua timet action lacks the necessary ingredients of any imminent danger.
Plaintiff also claimed that at least one customer from Delhi had booked a table in defendant’s outlet in Hyderabad and so the cause of action had arisen in Delhi.
Held and Analysis
Gupta J dismissed the case, for want of jurisdiction.
In reaching to this decision, the court relied heavily on the standards of jurisdiction set by the Delhi HC in the case of Banyan Tree Pvt Ltd. v. A. Murali Krishna Reddy. In the Banyan Tree case, the court has held:
“…that the mere accessibility of the Defendants website in Delhi would enable this Court to exercise jurisdiction. A passive website, with no intention to specifically target audiences outside the State where the host of the website is located, cannot vest the forum court with jurisdiction.”
Necessary distinction was made between the ‘purposeful availment’ test and the ‘purposeful avoidance’ test. The court held that to establish the case, it was incumbent upon the plaintiffs to show that the defendants had purposely tried to target the customers of the jurisdiction of forum State. Once it was established, it was now upon the defendants to show that they had intended to avoid the availment of the jurisdiction of the forum State. Applying this in the case of the websites, the court held that mere interactivity of the website in the forum State did not attract its jurisdiction.
Considering the extent of burden of proof on the plaintiff to show that the defendant had purposefully availed the jurisdiction of the forum State, the court held that the defendant must enter in some commercial transaction with the customers of the forum State intending to pass off their goods as that of the plaintiffs. Material must be produced to the court by the plaintiff regarding the same and not the mere possibility of it.
The court thus held that even if the defendant attracted or had been able to attract the customers from other jurisdictions by way of Zomato and Dine-out, the customers would still be required to go to Hyderabad to avail the services. The best that could be done by the customers of other jurisdictions, the court held, was to book a table at defendant’s restaurant which ultimately led the completion of transaction at Hyderabad where the cause of action would eventually lie.
January 10, 2018
Delhi High Court grants iconic ‘Tunday Kababi’ shop exclusive right to trademark
The Delhi High Court has ruled that the ‘Tunday Kababi’ name belongs exclusively to Mohammad Usman, the grandson of Haji Murad Ali ‘Tunday’ in Lucknow.
The court was hearing a case between M.U. Eating Point, owned by Mr. Usman, and a competing food chain, ‘Lucknow Wale Tunday Kababi’.
The latter is owned by Mohammad Muslim, who claims to be the maternal grandson of Mr. Ali.
Claims to lineage
Mr. Usman filed a case in the Delhi High Court in 2014 after coming to know that Mr. Muslim had given franchisee rights to a person in Delhi to open a restaurant under the name ‘Lucknow Wale Tunday Kababi’.
The debate over the ownership of the name ‘Tunday Kababi’ quickly turned into that of who had claims to the lineage of late Mr. Ali, the legendary one armed chef.
In 1905, Mr. Ali started his kabab-parantha shop on Gol Darwaza Street, in the middle of old Lucknow’s busiest marketplace, the Chowk area.
Since he had only one arm, he was referred to as ‘Tunday’, which translates to “without an arm” in Urdu.
Mr. Ali was also offered the royal patronage of the Nawab of Lucknow after he won a contest for making the most delicious kababs.
His eatery then came to be known as ‘Tunday Kababi’ or ‘Tunday ke Kabab’ in Lucknow and the recipe of its signature dish is a well-guarded secret.
Mr. Usman claimed he has been using the trademark ‘Tunday Kababi’ and its logo since 1995 when his father Haji Rais Ahmad started another outlet in Aminabad, Lucknow.
Mr. Muslim, however, told the High Court that he is the maternal grandson of Mr. Ali and was therefore the direct legal heir to the family business.
Mr. Muslim claimed that since Mr. Ali was without any children, he adopted the daughter of his brother. She had married Mohd. Hanif and Mr. Muslim was born out of wedlock.
Justice Jayant Nath, in his judgment pronounced last month, said that Mr. Muslim has filed no evidence to support his contention as being legal heir of Mr. Ali.
‘Nothing on record’
“There is also nothing on record to support his (Mr. Muslim) contention that he has any right in the trademark ‘Tunday Kababi’ or logo ‘Tunday Kababi’,” the High Court said.
“The mark ‘Lucknow Wale Tunday Kababi’ used by the defendants is structurally, visually and phonetically identical to the registered trade mark of the Plaintiffs (M.U. Eating Point),” the judge said adding, “There is a clear violation of the statutory as well as common law rights of the Plaintiffs”.
“…the Plaintiffs have established that they are the registered owner of the said trademark…Thus they have a statutory right to the exclusive use of the same,” the High Court said.
January 6, 2018
Delhi High Court Denies ‘bookmyshow’ an Interim Injunction Against ‘bookmysports’
The Delhi High Court in Bigtree Entertainment v Brain Seed Sportainment, recently denied the Plaintiffs, proprietors and owners of the website bookmyshow.com, an interim injunction against the Defendant’s use of the domain bookmysports.com.
The sole question that as considered to decline an interim injunction was whether BOOKMY, as the part of the Plaintiff’s trademark, which was being used by both parties, was descriptive or invented.
The Court’s conclusion that the term was descriptive was based on three observations –
Firstly, the Court held that the existence of domain names using the prefix BOOKMY, both prior and subsequent to the Plaintiff’s mark, indicated that the prefix was descriptive.
Secondly, the Court held that the words BOOKMY was not an arbitrary coupling of words, but rather a phase describing the particular activity that the Plaintiff and others were engaged in. The Court stated, of the prefix, that ‘it is instead an apt description of a business that is involved in the booking of a particular thing for its consumers, whether it is a concert, a movie, or a sports facility.’
Thirdly, the Court held that, because the Defendant had led evidence suggesting that the prefix BOOKMY was in use by other companies, and the Plaintiffs had not led evidence to show that BOOKMY is only associated to the Plaintiff’s trademark, the Plaintiff was unable to prove that the prefix had obtained distinctiveness or a secondary meaning, in order to accord it protection.
Accordingly, the Court dismissed the application for injunction.
December 20, 2017
Toyota Loses Trademark Battle over Prius at Indian Supreme Court
Toyota Jidosha Kabushiki Kaisha vs M/S Prius Auto Industries Limited
In a path-breaking development for Indian trademark law, the Supreme Court reiterated yesterday that IP rights are “territorial” and not “global”. The court was deciding a matter involving “Prius”, the brand under which Toyota sells its leading “hybrid” car.
The court held that merely because Prius is well known outside India does not mean that it enjoys a “reputation” in India as well. That has to be independently established!
The court ruled in favour of the Defendants, noting that the Plaintiff had not supplied enough proof of its “reputation” in the Indian market. In other words, although trans-border reputation was now very much a part of Indian law (ever since the Whirlpool decision), such reputation could not merely be asserted, but must be proved. And within the “territory” of India. The court notes:
“…if the territoriality principle is to govern the matter, and we have already held it should, there must be adequate evidence to show that the plaintiff had acquired a substantial goodwill for its car under the brand name ‘Prius’ in the Indian market also..”
In other words, although the mark may be very well known abroad, that by itself is not sufficient. Reputation in the local milieu must be proved as well. The court noted that in the year 2001(which, as per the Plaintiff, was the effective date on which a significant cross section of Indian consumers would have known of their mark), the Internet was still not in widespread use and therefore not many would have learnt of the mark:
“The advertisements in automobile magazines, international business magazines; availability of data in information-disseminating portals like Wikipedia and online Britannica dictionary and the information on the internet, even if accepted, will not be a safe basis to hold the existence of the necessary goodwill and reputation of the product in the Indian market at the relevant point of time, particularly having regard to the limited online exposure at that point of time, i.e., in the year 2001.”
Further, the mere appearance of the mark in the context of news stories would not suffice. “The news items relating to the launching of the product in Japan isolatedly and singularly in the Economic Times (Issues dated 27.03.1997 and 15.12.1997) also do not firmly establish the acquisition and existence of goodwill and reputation of the brand name in the Indian market.”
The court therefore ruled as below:
“All these should lead to us to eventually agree with the conclusion of the Division Bench of the High Court that the brand name of the car Prius had not acquired the degree of goodwill, reputation and the market or popularity in the Indian market so as to vest in the plaintiff the necessary attributes of the right of a prior user so as to successfully maintain an action of passing off even against the registered owner.”
October 25, 2017
Delhi HC Allows Ericsson’s Plea For “Confidential Club” In Patent Case Against Xiaomi
The Delhi High Court, on Tuesday, allowed telecom major Ericsson’s plea for constitution of a “confidential club” in its ongoing legal tussle with Chinese handset maker Xiaomi. A confidential club essentially consists of only certain persons, usually the lawyers and some key witnesses, who are permitted to view the documents in question.
Justice Yogesh Khanna saw no impediment in creation of such club and explained, “The reason probably is in today’s world of globalization, where competition is at its peak, the organizations may not be inclined to disclose trade secrets/confidential or its details, it had entered with different parties lest may cause serious prejudice to such parties because of competition involved.
July 07, 2017
Delhi HC Awards 5 Lakh as Damages To Yahoo Inc
The Delhi High Court on Monday directed payment of Rs. 5 lakh as damages to US-based Yahoo Inc. for trademark infringement by a website called ‘yahookochi’. The Court restrained the website from using its trademark or any other deceptively similar mark.
There is also no plausible explanation for the adoption of the identical mark as part of trading name and domain name of the defendants. Further, the defendants cannot have any justification for the adoption of the mark YAHOO. The potentiality of harm is enormous on the internet as the plaintiff has a very wide internet presence and operates various YAHOO formative websites,” Delhi High court.Delhi High Court, thereafter, directed payment of compensatory damages of Rs. 2 lakhs and punitive damages of Rs.3 lakhs
Delhi HC Restrains Use Of ‘Ilmcampus.com’ For Infringing IILM’s Trade Mark.
In a suit filed by Institute for Integrated Learning in Management (IILM) against ILM Consulting Pvt Ltd, the Delhi High Court has ordered the latter to not to use ILM as its trade name and also restrained it from using website with the domain name name www.ilmcampus.com.
In an ex parte decree, Justice Deepa Sharma observed that the defendant is using the said websites and also using the abbreviation ILM for their academy, and both are deceptively similar to that of registered trademark of the IILM and its websites.
Restraining the use of ILMcampus.com, the court said the witness proved that the general public while surfing the internet may come across www.ilmcampus.com, which is deceptively similar to that of plaintiff‟s websites i.e. www.iilm.edu, ww.iilm.in and www.iilm.ac.in and people would think that they are surfing the plaintiff‟s websites because the defendant is also engaged in an educational field, including the placement of the students and providing them with educational and employment opportunities.
May 01, 2017
Arnab Goswami’s Republic TV Finds Itself in the Eye of Yet Another Legal Storm; Times Group Claims That Arnab Is Not Entitled to Use the Phrase ‘Nation Wants to Know’
Arnab Goswami has been served a legal notice by his former employer, the Times Group, which contends that he is not entitled to use the phrase ‘Nation Wants to Know’ in connection with his new show. The gravamen of the Times Group’s claim appears to be that the Times Group is exclusively entitled to use this phrase, so Goswami’s use is unauthorized and violative of the Group’s rights.
April 01, 2017
1) Delhi High Court Declines to Grant Monsanto an Interim Injunction in Dispute with Nuziveedu
Justice R. K. Gauba of the Delhi High Court passed a 95 page order yesterday in the patent and trademark infringement lawsuit filed by Monsanto against Nuziveedu Seed Ltd., Prabhat Agri Biotech Ltd. and Pravardhan Seeds Pvt. Ltd.
To briefly recap the origins of dispute, Monsanto licensed its Bt. Technology to Indian seed companies like Nuziveedu which incorporated this technology in its cotton seeds so as to render them resistant to attacks by boll-worms. The Indian seed companies sell these seeds and pay a “trait fee” to Monsanto. In October, 2015 a group of 8 Indian seed companies, Nuziveedu being the largest amongst the pack stopped paying Monsanto royalties that were due to the company because Monsanto had refused to lower its “trait fee”. The seed companies had demanded a reduction of the “trait fee” because state governments were passing new price control orders fixing “trait fees” and retail prices of seeds. Monsanto responded by terminating its contracts with the seed companies and also initiated arbitration for recovery of Rs. 400 crores from the Indian seed companies. In addition, Monsanto also initiated the present lawsuit in 2016 before the Delhi High Court against three companies, mentioned above, seeking an injunction against them for patent and trademark infringement.
To put it briefly, Justice Gauba’s 95 page order has held Monsanto’s termination of the contract to be prima facie illegal and has allowed Nuziveedu and the others to continue using the technology provided that the trait fee is paid in accordance with the prevalent laws till the suit is finally disposed. I assume this means that the parties will have to adhere to the central government’s price control order which not only fixes the retail price of the seeds but also the “trait fee” or the royalties payable to Monsanto by Nuziveedu.
There is little doubt that the order is a significant setback for Monsanto.
2) Delhi High Court Rules on the Jurisdiction of the ASCI; Holds that It Can Adjudicate upon Claim of Infringement and Passing Off
In a very interesting judgment delivered earlier this month, the Delhi High Court ruled on the jurisdiction of the Advertising Standards Council of India (ASCI) to adjudicate upon complaints relating to copyright infringement in advertisements
Holding that the existence of provisions under the Copyright Act, 1957 and the Trademark Act, 1999 exclusively empowering the district court to adjudicate upon claims of infringement does not operate as an embargo to the ASCI adjudicating upon claims of infringement, the court grounded its judgment in the desirability of vesting self-regulatory bodies with greater powers in order to enable them to function as efficacious alternative dispute resolution mechanisms.
March 05, 2017
In the High Court of Madras, Aachi Spices and Foods,v. M/s. Sri Kallazhakar Enterprises Theni .…. Defendant
The case of the Plaintiff is that the Plaintiff Company has been carrying on the business of manufacturing and selling various kinds of masalas and spices from 1995. The Plaintiffs are dealing in about 130 different products bearing the trademark AACHI. The Plaintiffs have also spent huge money towards advertising their products under the trademark AACHI in all forms of media and had also received awards for the quality of their products and customer service. The expression AACHI has become very popular and is a very valuable intellectual property of the Plaintiffs and the said trademark is unique and distinctive.
1. The subject matter of the suit is in respect of AACHI KULAMBU CHILLY MASALA label mark. This label mark is consisting of the word AACHI masala in yellow letters written in red background. Above the word AACHI masala a device of a multi coloured flying bird displayed inside the device of an oil drop in yellow background. Below this pictorial device a device of a China plate, containing various ingredients of masalas and spices prominently displayed in various colours. This label as a whole is the registered trademark of the Plaintiffs. The turnover and promotional expenditure incurred by the Plaintiff had been gradually increasing every year from 1995. It had further been stated in the plaint that the Registrar of Trademarks had granted registration for the said label mark in Reg. No. 1318495 on 01.11.2004 in Class 30. Thus, the Plaintiffs have sole proprietary right over the said label mark. The Plaintiffs had also obtained registration of the trademark AACHI in different classes with respect to other description of goods in the same class and other classes. While so, in March 2009, the Plaintiffs came to know that the Defendant is selling similar Kulambu Chilly Masala, bearing the mark JPR MASALA-KULAMBU CHILLY MASALA in the same colour scheme and get up, which is a blatant infringement of the registered trademark of the Plaintiffs and both are visually and phonetically similar. As the Defendant is violating and copying the trademark of the Plaintiffs, the conduct of the Defendant would amount to fraud.
2. It had been further stated that the Defendant is using the deceptively similar label mark of the Plaintiffs. The use of the same is bound to create confusion and deception in the market. The general public will assume that there is a business relationship between the Plaintiffs and the Defendant has no right whatsoever to use the said trademark of the Plaintiff, which is visually, phonetically and deceptively identical to that of the Plaintiffs. The conduct of the Defendant amounts to falsification of the trademark, an offence punishable under the Trade Marks Act, 1999 apart from action of infringement of the registered trademark of the Plaintiffs. The trademark has been adopted by the Defendant in order to enrich themselves illegally. The Defendant should not be allowed to malign and dilute the goodwill and reputation enjoyed by the Plaintiffs. In such circumstances, this civil suit has been filed for the reliefs as stated above.
3.Considering the oral and documentary evidence, viz. Ex.P1 to Ex.P13 adduced by PW.1, this Court is of the view that the Plaintiff has proved the suit claim in respect of the reliefs (a) and (b) . Accordingly, this civil suit is decreed only in respect of the reliefs (a) and (b) with costs.
February 20, 2017
ARNAB GOSWAMI MEETS HIS MATCH
Mr. Goswami's trademark application was filed on November 20, 2016, in Class 35, which relates to advertisement and publicity services.
It is pertinent to note, that the Trademark Registry did not raise any objection on the basis of Section 9 (2) (d). '
However, it did raise an objection based on Section 9 (1) (a) in the following words: "As the mark is a common surname/personal name/geographical name/ornamental or a non-distinctive geometrical figure and as such it is not capable of distinguishing the goods or services of one person from those of others."
However, this controversy was put to rest subsequently, as Mr. Goswami has since rebranded his channel to 'Republic TV'.
February 14, 2017
In the High Court of Delhi at New Delhi, Sun Pharma Laboratories Ltd v Mylan Laboratories Ltd. & Anr. .…. Defendants
CS (OS) 1098/2016 & IA No. 21119/2014 (under Order 39 Rules 1 & 2 CPC)
In a setback to India's biggest pharma company, the Delhi High Court recently refused to provide Sun Pharmaceuticals any interim relief in their trademark infringement case against rival drug manufacturer Mylan Laboratories for the production of the cancer medication Oxaliplatin. Sun Pharmaceuticals and Mylan are also at loggerheads at the Intellectual Property Appellate Tribunal (IPAB) on the same issue and are both seeking invalidation of each others trademark registrations for the drug.
In its verdict, the Delhi High court observed that is existed no case for passing of a temporary injunction at the present stage, as had been pressed for by Sun Pharmaceuticals. The its reasoning the court stated, "The mere fact that the plaintiff (Sun Pharma) is the prior user or registrant of its trademark is inconsequential." Instead, the court told both companies that they could approach the bench once the IPAB eventually passes its judgement on the issue under contention.
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