Category Archives: Legal Issues

Uber v. Waymo and Lessons for Trade Secret Protection for Companies

It’s been over 100 years since the establishment of the theory of the separate juristic personality of a corporation. Nevertheless, a corporation still functions through humans. The unique competitive edge that corporations wield in the market as against other competitors is by virtue of certain ideas or information pertaining to a particular ingredient of an edible product, method of conducting business or the list of certain supplies that a company may hold on to very closely.

This competitive edge can be diluted or gained by the acts of unauthorized disclosure by the human actors who are acquainted with the idea/information/method during the period of employment by the company. The law on trade secrets in India stands previously enumerated on this blog, so the author shall focus his efforts on the lessons one can learn from this case.

The recent Waymo v. Uber[1] settlement is yet another lesson for R&D intensive industries, especially in a field as nascent as self-driving vehicles, to implement best practices in order to prevent dominant firms such as Uber from, maliciously or otherwise, diluting competition in the market by unconscionably acquiring trade secrets from smaller firms. The present case concerned the theft, amongst other valuable, of sensitive Waymo business information including the manufacture, sampling, calibration and testing of the sensors, Waymo’s highly confidential proprietary design of a LiDAR circuit board,[2] a laser-based scanning and mapping technology that uses the reflections off objects around it to create a real-time 3D image of the world.

It also enabled LiDAR, when mounted onto a car, to help the car navigate even in pitch dark and without the need for any steering wheels or pedals, thus effectively giving Waymo a first mover advantage in the field of driverless cars. Waymo Manager Anthony Lewandowski, who subsequently left the company along with the SD card containing all the data in tow to start his own self-driving truck company, that was later acquired by Uber, was the principal defendant charged with unjust enrichment, misappropriation and infringement of Waymo’s intellectual property.

While many were shocked that Uber and Waymo settled midway through the trial despite the weak case that Waymo brought against Uber, it has been noted[3] that Waymo would have probably received less from the settlement than it sought due to the onerous burden to prove the third party was actually aware of the tainted origin of the trade secrets and intentionally hired Lewandowski from that point of view.

The protection of trade secrets has more to do with the confidential information that a departing employee carries in their head because of a fiduciary relationship (or one of trust) due to which the information was disclosed which attracts an obligation of confidence, even if there might not be actual documents to prove unjust enrichment from stolen trade secrets.[4] This obligation need not even be express, it can even be implied.[5] In India, common law protection through actions in equity and tortious liability such as breach of confidence as well as non-compete clauses in contracts of service (tested against the plank of section 27 of the Indian Contract Act) is accorded. Thus, corporations only have exorbitant legal fees and damage to their reputation to account for if they do not carry out diligent vetting of the employee and his files. Any trade secrets’ origins need to be traced when hiring an employee, especially from a competitor.

Although Waymo did have standard security measures in place, such as dual authentication processes for access to all documents, encrypted and password-protected communication, or having separate vendors for supply of different parts, these measures are inadequate when the enemy is within. Companies need to have mechanisms in place that monitor the behaviour of employees both before they leave for new opportunities as well as when they have joined from a competitor. Critical information should only be disclosed on a “need-to-know” basis. For employees with access to critical information, an investigation into whether the employee has ever downloaded or copied this information en masse should be carried out. At the end of the day, when the line between confidential information and trade secrets blurs, it is the degree of sensitivity of the information that the employer impresses upon the employee that counts.[6]

A non-disclosure provision that applies when the employee departs and joins another competitor should be added as a matter of practice, subject to reasonableness and specific enumeration of geographical extent of application, scope and duration. Companies should take note that not all information or ideas are trade secrets if it is not the subject of transformation into a protected work,[7] and only something that was learned in course of the previous employer’s business having entered the employee’s head after application of due skill and knowledge.

In American Express Bank Ltd. v. Priya Puri,[8] the Court refused the plaintiff’s request for an injunction against the defendant for using mere names and addresses of the customers of a bank at her new workplace as she had only used knowledge in the public domain to further her own career prospects. As was held in the case of Ambiance India Pvt. Ltd. v. Naveen Jain,[9] business acumen, ways of dealing with the customers or clients, or routine day-to-day affairs of the employer in the knowledge of many cannot be considered trade secrets or confidential information. Thus, section 27 of the Indian Contract Act, 1872 has been used to balance the interests of both trade secret owners as well as employees even after the termination of service of an employee.


It is not enough to simply prove that the employee had access to important trade secrets and limitation to it has to be narrowly and specifically tailored. In fact, this issue goes beyond the legal sphere. A strong management and constant update of industry’s best practices in safeguarding intellectual property can cement a company’s first mover advantage that matters greatly in industries that go through rapid shifts in technological progress, as well as save companies, a humongous amount of money by way of future profits and legal disputes.  As has been noted, Silicon Valley’s high rate of technological innovation lies in “talent mobility”, or the refusal to enforce non-compete clauses. However, this comes with the caution to make sure one is acquiring talent and know-how, not the trade secrets.[10] The law of confidentiality imposes a strict burden on companies alleging breach of confidentiality against a previous employee lest they disproportionately impinge on the employee’s fundamental right to freely conduct his trade or profession once he leaves the company.[11] What we can learn from Uber v. Waymo is that, best practices have not been evolved even in the talent and ideation heavy tech industry, which should be zealously protective of innovation; the case should act as a wake-up call for development of context-specific security measures where currently the extent of active legal safeguards are the minimal, rarely enforced, non-disclosure and non-compete agreements.

Author: Swrang Varma, intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at


[1] Waymo LLC v. Uber Technologies, Inc., (3:17-cv-00939).



[4] Diljeet Titus v. Alfred A. Adebare, 2006 (32) PTC 609, 130 (2006) DLT 330.

[5] Margaret, Duchess of Argyll (Fame Sole) v. Duke of Argyll, [1965] 1 All ER 611, [1965] 2 WLR 790.

[6] Faccenda Chicken Ltd. v. Fowler, [1986] 1 All ER 617.

[7] Burlington Home Shopping Pvt. Ltd. v. Rajnish Chibber, 61 (1996) DLT 6.

[8] (2006) III LLJ 540, (2006) 110 FLR 1061.

[9] 122 (2005) DLT 421, 2005 (81) DRJ 538.


[11] Article 19(1)(g), The Constitution of India.


Battle of the Brands: Gilead Sciences Inc. vs. Merck & Co. Inc

The legal dispute between the two pharmaceutical majors Gilead Sciences Inc. and Merck & Co. Inc. involving Hepatitis C drugs clearly indicates the high stakes involved when it comes to intellectual property.

It all began in 2013, back in the day when Gilead Sciences Inc, filed for a New Drug application (NDA) with the FDA for the treatment of HCV which includes Sofosbuvir. Sofosbuvir was known to treat multiple genotypes of the disease with a higher cure rate and lesser side effects. On administration of Sofosbuvir, duration of the treatment reduced when compared to conventional medical therapy. Gilead launched and marketed the drug with the trade name Sovaldi which was a combination of Sofosbuvir and anti viral agent ribavarin. Gilead launched another drug Harvoni with sofosbuvir as one of its components. In 2013 itself, FDA approved Sovaldi, and it earned the company huge profits.

Legal issues arose when Idenix Pharmaceuticals, filed a complaint stating that by manufacturing Sovaldi and Harvoni Gilead had infringed their U.S patent 7608600. The patent claims a method of treating persons affected by HCV by administering the drug orally via a capsule or tablet containing hydrogen, amino acid ester and a nitrogen base like thymine or adenine. This patent was granted in October 2009.

Although Gilead did have patents of its own in the field of HCV treatment, Idenix claimed that the patents infringed on their ‘600 patent. Gilead was granted a U.S patent 8415332, which mentions that the drug is effective in preventing multiplication of the virus when administered in combination or alternation with an antiviral, antibacterial or anti cancer treatment. This patent was filed by Pharmasset in 2010, a pharmaceutical company which was then purchased by Gilead in 2011.

The ‘600 patent was the first patent mentioned in the case, the following patents were also claimed to be infringed by Idenix:

U.S Patent No. 6915054

U.S. Patent No. 7105499

U.S. Patent No. 7608597

U.S. Patent No. 8481712

In the case of infringement against patent ‘597, the case fell in the favour of Idenix who then received 10% of the total revenue as royalties which was $25.4 billion. They received a total of $2.5 billion.

Merck (which acquired Idenix in 2014) claimed that the use of Sofosbuvir , key ingredient in Gilead’s Sovaldi and Harvoni contributed to the infringement of their patents ‘499 and ‘712.

‘712 deals with compounds of a specific structure, whereas ‘499 claims methods of administration of the drug alone or in combination with other HCV treatment.

Gilead mentioned in their case that the patent claims were invalid and agreed to pay the charges if proven otherwise. On reviewing the case, the court came to a decision that Gilead’s claims were false. During the court proceedings it was found that the claims in the patents ‘499 and ‘712 were not invalid. In March 2016, the jury awarded Merck $200 million in damages for the sales of Sovaldi and Harvoni. In April of the same year Gilead filed for a motion to reopen the case and to allow evidence to be submitted against Merck. The motion was passed and the case was reopened.

Gilead claimed that Merck tried to write off the patent rights and attempted to receive permanent licence of the compound from Pharmasset (Gilead’s company of interest). It also claimed that Merck scientist stole the structure of the compound and failed to mention the details of these happenings during the court procedures. It was proven later that the scientist turned patent lawyer did try to deceive Gilead, and also lied to the court. The jury found the evidence provided by Gilead in support of Merck’s misconduct and as a result passed an order to Merck to return the $200 million.

The ongoing case between these two drug conglomerates reached a new high when Merck lost another $2.5 billion to Gilead with respect to its patent ‘597 in 2018. The legal dispute began when it was not clear if Pharmasset derived Sofosbuvir on its own or from an Idenix patent.

The US District Court judge in Delaware passed the judgement stating the patent claims were too broad. The patent should be such that, a skilled person should be able to develop a drug without considerable experimentation. The judge also determined that the drug couldn’t easily be developed from the Idenix patent, favouring Gilead’s defence. Merck believes there is more to the case than what meets the eye. Unless either one of them decides to settle, they will continue to battle it out in the court.

Both the drug developing giants have lost and gained in billions in the past few years. In the era of biosimilars, such cases will be seen more often in the near future. Science & technology together with law now exist in a symbiotic relationship, where both facilitate each other striving for a common goal.


Author: Poorvi R Balkundi, intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at




[3] Mark S. Reisch, Gilead wins reversal in $2.5 billion dispute with Merck, Chemical and Engineering News, February 2018





[8] United States District Court, Case no 13-cv-04057-BLF, Gilead Sciences Inc. (Plaintiff) vs Merck & Co Inc. et al (Defendant)

[9] United States District Court For the District of Delaware, case no 14-846-LPS, Idenix Pharmaceuticals LLC Universita Degli Studi DI Cagliari,(Plaintiff) vs gilead Sciences Inc. (Defendant)

Referential Names & Intellectual Property Infringement

With progression of time we are witnessing the rise of Intellectual Property (IP) issues in India across industries. Every new case raises a few new questions and simultaneously rests some old ones. While traditionally IP disputes arose mainly in the pharma  and software industries, recent trends have shown a noticeable surge in other industries including the Appliances and Consumer Electronics (ACE). One such case in the Bombay High Court, belonging to a particular segment of the ACE industry, highlights relevant issues for the entire industry.

This suit for IP infringement was instituted by the multinational electronics company Seiko Epson, against Jet Cartridge (India) Pvt. Ltd. Epson, a company whose very name stands for “Son of Electronic Printer” quite imaginably has a strong IP portfolio around its printers, basis which it alleged that Jet Cartridge, was infringing on their IP rights on two counts- one, that of the registered designs of the nozzles that are used in cartridges, and the other of using their trademark ‘EPSON’ without authorization when they label their products as “Compatible with EPSON”.

Assessing the first aspect involves a simple test of comparing the registered designs with that used by the defendants.   The Indian Industrial Design registrations with numbers 235236 & 235237, titled “Packaging Container ” along with 235238 & 235239, titled “Container Cap with Stopper”, entitles EPSON under the Design Act,  2000, to exclusive use of the designs covered. The order by the court dated 23 November 2016 reflects that the counsel appearing for Jet Cartridge, Dr. Saraf, made a statement- as regards the design infringement, the defendants will change the nozzle of the cartridge from the plaintiffs’ proprietary design and they will do so with immediate effect. The nozzles of all existing products and inventories which have not yet gone into market will also be changed.

Coming to the more interesting part of the case, the argument that the trademark law allows EPSON to an outright exclusive use of its name, even if it were used merely as a reference, was a contentious one. Ordinarily,  in a trademark infringement matter, the court sees whether the defendant used a mark identical or similar to the plaintiff’s mark in a manner that may confuse/ deceive a consumer into believing that the defendant’s goods/ services are actually that of the plaintiff’s. Typical examples include using minor spelling or visual variations, strikingly similar packaging or direct  counterfeiting. In this case, however, the question really was whether the inscription “Compatible with EPSON” on a cartridge packaging would qualify as infringement . If so why, and if otherwise why not?

On one side, the argument stands that a clear indication is provided that the cartridge does not belong to EPSON but is merely compatible for use with EPSON printers and hence not misleading. While on the other hand, would it be unrealistic to assume that a casual customer might be led to believe that the company selling the products are authorized by EPSON to do so, and is indirectly buying it from EPSON. Honorable Justice Gautam Patel, had the following to say on this aspect:

Ms. Oberoi for  the plaintiffs  would have it that the defendants are prohibited  from  using the name EPSON  at all, even in a purely  descriptive sense to demonstrate  compatibility, because this is the plaintiffs’ trademark , even if the defendants do not use that word  as a trade mark  but only as a descriptor  to identify compatibility. Prima facia, this does not seem to be a supportable or tenable proposition  in law. A laptop repair service may, for instance, say that it can repair  laptops of  various  makes and brands and names these, but not use these as trademarks. Persons make various kinds of accessories (screen  protectors, peripherals,  etc.)  and  these  are  often  denominated  as  being compatible  with  a certain name  product:  mobile  phones, for instance, of specified makes and brands. This use is not illicit. The plaintiffs  enjoy  a  monopoly  in the  mark  and  are  entitled  to prevent unauthorized  use of  the mark. The defendants are clear that they do not use the name as a mark but only to identify that their cartridges are compatible with printers manufactured by the plaintiffs. There cannot be the kind of monopoly that Ms. Oberoi suggests. At her instance, I  will leave contentions open in  this regard till the replies and rejoinders are filed.

While the court was open to further deliberation and debates over its initial view on the subject matter, as the trend goes, the dispute was settled between the parties. The consent terms dated 20 December 2016 that were tendered to the court had Jet Cartridge reaffirming its undertaking to change the nozzle designs altogether, whereas EPSON agreed to their use of “Compatible with EPSON” on their packaging. Thus, an important perspective regarding the legal principles and consequences on the use of referential naming was set.

Author: Abhishek Pandurangi, Partner, Attorney of Law at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at

A Take on Producer’s Right in ‘Dubbing’ and ‘Remaking’ of a Movie

Can a producer of a film remake or dub it without the permission of the author of the script? The answer to this question is given by a division bench of Madras High Court in a recent case of Mr. Thiagarajan Kumararaja vs. M/s Capital Film Works (India) Pvt. Ltd. and another.

In this case the Plaintiff, the author of the script of an award-winning Tamil movie “AARANYA KAANDAM” prayed for a permanent injunction against the producers of the film from remaking and dubbing the film in other languages claiming that it would be a copyright infringement of his script.

The following judgement was passed against the judgement and decree passed by a single judge dated 08/09/2016 in which the honourable single judge dismissed the appeal.

In this appeal the following issues came up in front of the division bench:

  1. Whether the producer of the film has any right to dub the in a different language?
  2. Whether the producer of the film has any right to remake a film in a language different from the original one?
  3. If the answer for the first issue is in affirmative, can there still be any injunction against them?

The appellant argued that the dubbing is also remaking a film and it would amount to infringement of his copyright in the script.

The respondents defended that dubbing is only ‘communication to the public’ and it would not amount to infringement of copyright because they are the authors of the cinematograph of the film and hence they are the owners of the copyright of the cinematograph of the film.

The court held that dubbing is included in the term “otherwise enjoyed” of the definition ‘communication to the public’ under section 2(ff) of the Copyright Act, 1957which reads as follows:

“2(ff)”communication to the public” means making any work available for being seen or heard or otherwise enjoyed by the public directly or by any means of display or diffusion other than by issuing copies of such work regardless of whether any member of the public actually sees, hears or otherwise enjoys the work so made available.

 Explanation: – For the purposes of this clause, communication through satellite or cable or any other means of simultaneous communication to more than one household or place of residence including residential rooms of any hotel or hostel shall be deemed to be communication to the public.”

Therefore, court is of the view that dubbing is included in the cinematograph of the film. It was also held by the court that the producers are the ones who take initiative to make the film and that they are the producers under section 2(uu) of the Copyright Act, 1957 and that producers are the authors of the cinematograph of the film under section 2(d)(v) of the Copyright Act, 1957. Hence dubbing does not amount to infringement and dubbing rights are held with the author of the cinematograph i.e. the producers. This also answers the third issue that since the rights of cinematograph lies with the producer so there cannot be any injunction against the dubbing of a film in different language.

The court is of the view that remaking a film would amount making changes to the main script of the film and hence would amount to infringement of the exclusive copyright given to the author of the script. Therefore, the producers of the film do not have a right to remake a film.


From the judgement of the above discussed case it can be concluded that the producer is the person who takes initiative to make the film and he is the author of the cinematograph of the film and hence holds the right over it. Dubbing is included in “communication to the public”. Dubbing is also part of the cinematograph and only includes change in the audio track of the film and hence it does not amount to infringement of copyright of the author of the script. But remaking a film would lead to making changes to the underlying script without the permission of the author of the script therefore, it leads to infringement of the copyright of the script writer.

Author: M.Sai Krupa, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at




West Bengal’s Sweet Triumph in the Bitter Clash with Odhisa


The Geographical Indications Of Goods (Registration And Protection) Act, 1999 defines ‘geographical indication’ as ‘an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin.’

The objective of this IP is to protect the interests of its producers and further their economic interests by assuring quality and uniqueness, which are attributable to the place of its origin. Mysore Silk, Darjeeling Tea, Coorg Orange, Kashmir Pashmina etc. are some instances of GI.

 Claims of Origin Lying In Odisha

Odisha’s government claimed to that the sweet, RASSOGOLLA originated in the city of Puri in the 13thcentury and legend has it that Lord Jagannath offered these sweets to his consort Lakshmi, as an apology for not taking her along during the ritual chariot ride. Further, they stated that its first form was ‘kheer mohana’, that later evolved into ‘pahala rasagolla’. So much so, various historians commented on the sweet’s origin in Odisha, one of them being Asit Mohanty  who quoted from an article published in the April, 2011 edition  of ‘Saptahik Bartamaan, a popular Bengali magazineto prove that rasogolla was indeed Odisha’s gift to the world. He further went on record with Odisha’s local newspapers and said “Many Brahmin Odia cooks (whom we call ‘Thakur’) came to Bengal in search of work in the middle of the nineteenth century. It was through them that many recipes from that state, including ‘rasogolla’, landed in Bengal.”

However, things heated up in June 2015, when Odisha’s science and technology minister Pradip Kumar Panigrahi set up committees to trace the origin of the dish, moreover, they announced 30 July as ‘Rasagolla Dibasa’ to celebrate its origin in Odhisa.

Claims of Invention in West Bengal

West Bengal contended that rosogulla originated in the 1868 by a renowned local confectioner Nabin Chandra Das. Post Odisha’s claims the descendants of Nabin Chandra Das planned to challenge the Odisha government with the support of documentary evidence. With the assistance of historian Haripada Bhowmick they prepared a booklet, which they proposed to send to Chief Minister Mamata Banerjee for necessary action at her end.

On the other end, the Bengal government left no stone unturned and filed a court petition in tandem with an application for a Geographical Indication (GI) recognition to finally settle the origin debate. The government took assistance from KC Das Sweets for all required documents and information to authenticate the claims of invention occurring in West Bengal by Nabin Chandra Das.


The Directorate of Food Processing Industries of West Bengal made an application in 2015, for a Geographical Indication (GI) status to “Banglar Rasogolla”. Clarifying further, the government stated there was no conflict with Odhisa as its application was for a specific variant which varied “both in colour, texture, taste, juice content and method of manufacturing” from its alternative, produced in Odisha. On 14 November 2017, the GI Registry of India granted West Bengal the GI status for Banglar Rasogolla.


At first sight, when one reads of the controversy between two state governments over the origin of a sweet, it may seem over hyped. But on giving it a second thought, you can see that this debate is not merely about Bengali and Odia sentiments but this may also convert into fruitful business for confectioners in the two states. The GI status to Bengali Rasgulla makes it clear that “Rasgulla” is a generic term and thus cannot be given a GI tag as a whole. Hence, tomorrow even Odisha’s government could make an application for its regional variant of Rasgulla. Therefore, technically the question of Rasgulla’s origin has yet not been resolved but as a wise man had once said “Some questions are best left unanswered”.

Author: Ms. Avadhi Jain, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at





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[1]. 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.

Despite being well reasoned judgement, the court has in this case intended to relate the cause of action with the completion of transaction. So, clouds of uncertainty still hover over the situation where delivery of goods can be made to the forum State or where assistance of an intermediary can be obtained. Not much can be said where the defendants are set ex parte as has happened in the previous case of Impresario Entertainment & Hospitality Pvt. Ltd v. Urban Masala[2] where Manmohan J. granted an ex parte injunction in the favour of the plaintiff against the defendant without even considering the jurisdictional claim.


The present case has dealt at length with the competency of the courts to entertain cases related to online transactions. Mere accessibility of the defendant’s website in the forum State can no longer be a ground for the courts to exercise jurisdiction.

Further, the law laid down in Banyan Tree (discussed here) has been upheld and the court has further narrowed down. The judgment in this case has paved the way for a more rigorous and consistent standard in determining the competency of the courts to entertain cases in case of online transactions.

Author: Hunney Mittal, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at


[1]CS (OS) No.894/2008

[2]CS(COMM) 441/2017

[3] CS(COMM) 111/2017

Personality Rights in Indian Scenario

Personality Rights

Personality rights means a right of person related to his or her personality. They can be protected under right to privacy or as a property of a person. This is important to mostly celebrities because people use a celebrity name or a photograph to advertise their trade and this usage influences their sales. Anyone can misuse a celebrity’s name or a photograph very easily for their trade, therefore it is important for a celebrity to register a trademark of their name to save their personality rights.

Position of Personality Rights In Indian Law

In India, the closest statute to protect personality rights is Article 21 of the Constitution of India under right to privacy and right to publicity. There is no statute or law that protects personality rights in India per se. Nevertheless, these days India also started recognising these rights through many significant judgements. One of the most important judgements related to personality rights was given in ICC Development (International) Ltd. vs. Arvee Enterprises[1], by the Delhi High Court in 2003, it was held that:

“The right of publicity has evolved from the right of privacy and can inhere only in an individual or in any indicia of an individual’s personality like his name, personality trait, signature, voice. etc. An individual may acquire the right of publicity by virtue of his association with an event, sport, movie, etc”.

Further, in TITAN Industries vs. M/s Ramkumar Jewellers[2] on 26th April 2012, the defendant used an identical advertisement hoarding to the Plaintiffs’ advertisement that featured the famous couple Mr. Amitabh Bachchan and Mrs. Jaya Bachchan. Further, the defendant also did not seek any permission or got into any agreements with either the couple or the plaintiff. Thus, the Delhi High Court granted the permanent injunction explaining the right to publicity:

“When the identity of a famous personality is used in advertising without their permission, the complaint is not that no one should not commercialize their identity but that the right to control when, where and how their identity is used should vest with the famous personality. The right to control commercial use of human identity is the right to publicity”.

Also, in case of Mr. Shivaji Rao Gaikwad (aka Rajinikanth) vs. M/s. Varsha Productions[3] an Interim injunction was passed against the release of a film “Main Hoon Rajinikanth” by Varsha Productions by referring to the judgements from the above-mentioned cases.

The most recent case regarding the personality rights is Mr. Gautam Gambhir vs D.A.P & Co. & Anr.[4] on 13th December 2017, wherein the defendant was using Gautam Gambhir’s name in running their lounge and restaurant, which was mistaken by people to be associated with the said famous personality.  Thus, the applicant sued the defendant…

In this case the interim injunction was not granted as the defendant’s name was also Gautam Gambhir, apparently, he has to carry on his business in his name and he neither claimed that the business is related to the cricketer nor he displayed any pictures of the cricketer anywhere. He very prominently displayed his own pictures everywhere to show his own identity. And when the logo of the restaurants was being registered no objection was raised by anyone. Seemingly it was decided that the defendant has not made any use of the reputation of the plaintiff’s name in his trade. Therefore, the interim injunction was not granted, and all the pending applications were disposed of.

However, the case is again under consideration by Division bench of Delhi High Court which seems to focus more on Personality rights. Further, a notice was issued on 17th January, 2018 to the defendants DAP & Co for which the reply is expected on 20 March 2018[5]


From the above discussion it can concluded that, only the illegal and unrightful usage of the personality rights with unjust intentions are punishable under the law. To be more precise, it is clear by the above discussed case laws that a celebrity’s name can not be used for any commercial use without any prior consent of the concerned celebrity, as these celebrities acquire their brand value through their hard work. Therefore, any use of their name or photographs that is commercially utilized, must be exploited by the celebrities themselves and no one else.

Author: M. Sai Krupa, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at


[1]2003 (26) PTC 245

[2]2012 (50) PTC 486 (Del)

[3]2015 (62) PTC 351 (Madras)

[4]CS(COMM) 395/2017









Jaypee Infratech Insolvency Case


The Inception of Insolvency and Bankruptcy code [IB Code] was envisaged as a historical moment in the Indian corporate sector as it is a single uniform comprehensive legislation that aims at a speedy solution to corporate insolvency through an established time bound procedure, early identification of financial failure, and other such broader reforms that aimed at increasing the ease of doing business and safeguarding the right of creditors.

However, after the implementation and a numerous judicial adjudication on the code, certain lacunas have surfaced. The Supreme Court and National Company Law Tribunal’s [NCLT] adjudication in the jaypee infratech case has created a suspicion whether all the stakeholders are covered under the ambit of the umbrella legislation i.e. the IB Code.


The Jaypee infratech project started its wish town city project in Noida. Two subsidiary companies of Jaypee group were involved, firstly the Jaiprakash Associates Limited(JAL) which allocated the letters to homebuyers; secondly, Jaypee Infratech Limited (JIL) who received the payments in its bank account from the homebuyers.  It collected 25000 Crore rupees from around 35000 homebuyers.  However, years after its inception the project remains abandoned  and merely a skelton has been built for the purpose of appeasing the homebuyers that something is built. It is alleged that in the guise of wishtown city project that the money was diverted to Jaypee group’s other flagship projects such as formula one racing centre and the Yamuna Expressway. It was further alleged that the Jaypee group had assumed that it will take years for the Indian legal system to adjudicate just in case any litigation arises out of the matter.

A small group of homebuyers aggrieved by the pace of the project, approached the National Consumer Disputes Redressal Commission (NCDRC) but much to the disappointment of the homebuyers, the commission did not adjudicate on the same. The Apex court decided  to hear the matter through a Public Interest Litigation(PIL) that came after the adjudication by the NCLT and presently,  the matter is sub-judice before the supreme court.


The matter came up before the Allahabad bench of NCLT after a petition by the IDBI which advanced a loan that amounted to approximately 526 crore rupees to the company. The company did not pay back to the bank and since bank was a secured creditor it had the right to ask for Insolvency Resolution Process (IRP) under section 7 of the IB Code.

Jaypee group agreed to pay back the amount to the bank as it had the capacity to do so and by paying back it would be eligible for loans afresh and then it would be legally free from its obligations. As the homebuyers do not fall under the ambit of secured creditors, the jaypee group did not have a legal obligation to pay them. Hence, it was a win-win situation for the company. Thereafter, homebuyers and other stakeholders realized that they are not adequately represented under the IB Code, but however, homebuyers are vital stakeholders in real estate industry sector, they should have been NCLT adjudicated to pay back the outstanding amount of 526 crore rupees to bank. The ruling was a huge setback to the homebuyers as there saving and investments both were jeopardized and they lost the money and remained without the home.

Supreme Court

The homebuyers then moved to the Supreme Court which recognized the glaring lacuna and error and adjudicated that the interest of the homebuyers are supreme and cannot be left unrecognized and unattended. Chief justice Deepak Misra said that “the savings of the homebuyers cannot be brushed aside by citing technical reasons”, in furtherance of such reasoning it directed Jaypee group to deposit 2000 Crore in installments to the Supreme Court’s registry.  The apex court further restricted the owners of Jaypee group to not to alienate their properties. Supreme Court through such an order has lifted the veil of Jaypee group by holding it accountable for the works of its subsidiaries and it also moved beyond the principle of Limited Liability. It has asked the Insolvency Resolution professional Anup Jain to submit resolution plan within 45 days, to which IRP has asked entities and companies to invest in the infrastructure project.

The Supreme Court surely did save the saving of the homebuyers or at least has taken an affirmative action in that pursuit. However, the case has brought up to the surface a glaring error that IB Code do not recognize homebuyers as secured creditors and furthermore do  not provide any remedy to their redressal. Another issue that surfaced was whether NCLT which was introduce to eliminate multiple judicial proceeding in different forum living up to the expectation? As in the instant case, the proceeding went on in 3 forums i.e. NCLT, NCDRC and the Apex Court. Thus it is high time for the legislators to revise and amend the IB Code and make sure that it is includes in its ambit all the stakeholders.

Author: Udit Rao, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at



[2] The+Insolvency+And+Bankruptcy+Code+2016+Key+Highlights







Mattel, Inc. and Ors. V. Aman Bijal Mehta and Ors


The use of catchy words and established brand name in a song, to attract the attention of the viewer is not something that is new these days. This was witnessed in Salman Khan starrer “Dabangg”. The movie used the words “Zandu Balm”, a product of Emami group (hereinafter Emami), in one of their songs. Emami served a legal notice on the makers of the movie for copyright infringement. However, the parties i.e. makers of Dabangg and Emami agreed mutually and the matter was settled out of court. The author further would be discussing one of the latest instances before the High Court of Delhi, in the matter of Mattel, Inc. and Ors. V.  AmanBijal Mehta and Ors [1], wherein a similar situation had cropped up.


“Tera Intezaar” is a Sunny Leone and Arbaaz Khan starrer. The movie was scheduled to be released on 24th November, 2017 but was eventually released on 1st December, 2017. The movie contains a song with the word ‘Barbie’ while the chorus line of the Sunny Leone song is, “I am a sexy Barbie Girl”.  Mattel Inc. is the manufacturer of the trademark Barbie dolls. The makers of the movie received a notice from Mattel Inc. just three days before its release, objecting to its song “Barbie Girl”. The two major contentions of Mattel Inc. were:

  1. Mattel had alleged that the song represents their product i.e., Barbie in a manner which is detrimental to the values and interests of the target customer base that they cater to.
  2. Mattel had objected to the actress featuring in the song, as she is a prominent figure from the adult entertainment industry and most of the customer base of Mattel’s product is younger girls and children. According to Mattel Inc. this would be inappropriate and also would degrade the distinctive mark that Barbie holds.

In a similar case between Mattel Inc. V. MCA Records Inc [2].

The song, by a Danish group called Aqua, includes the lyrics, “I’m a Barbie girl, in a Barbie world.”

Mattel claims that the customers who buy Barbie dolls were duped into thinking that the song was an advertisement for the doll or part of Mattel’s official line of Barbie products. Mattel also claims that Ad materials for the song used the same electric pink colour which is used by Mattel for packaging Barbie dolls.

MCA sold an estimated 1.4 million copies of the recording. The music company calls the song a parody protected by the First Amendment. Mattel lost in lower courts. California-based 9th U.S. Circuit Court of Appeals rejected the notion that consumers were misled by the song. Appeals Judge Alex Kozinski, known for colourful language wrote “the parties are advised to chill.”

Facts of the case

Mattel Inc. with its subsidiary Mattel Toys (India) Pvt. Ltd (hereinafter plaintiff) raised the same heat and filed a suit against the makers of the Film despite the uncommon advice.

Barbie has been identified as a well known trademark in various jurisdictions. The plaintiff is the owner of the trademark “Barbie” and other merchandise related to or connected to it.

The plaintiff, around 15th November, 2017, came across a music video on YouTube of a song titled “Barbie Girl” from the movie “Tera Intezaar” scheduled to be released on 24th November, 2017. The title and lyrics of the song used the trademark “Barbie” without an authorisation of the plaintiff and in a manner that will harm interests of the target customer of the Plaintiff. The sales in India of Barbie products over the last five years have exceeded 2000 million Indian rupees.

Plaintiff claims that the defendants have adopted the mark “Barbie” in order to generate publicity and attract unwanted attention for commercial exploitation and gain. The Barbie girl in the impugned song has been impersonated by an actor who is a prominent figure from the adult entertainment industry.

Analysis by the court

The Court observed that an ex parte order as sought by plaintiff, restraining the defendants from releasing the film “Tera Intezaar” with the impugned song would send a wrong signal to the public at large since CBFC has not granted a certificate to the movie.

Justice End law then noted that the Central Board of Film Certification (CBFC) had been tasked with imposition of “prior restraints” on movies. It, therefore, opined that once a film is cleared by the CBFC, it is presumed that the same is not defamatory. He further added “If after a film has been so cleared by CBFC, the Courts were to act as super Censor Board at the mere asking, it will have the potential of imposing arbitrary and at times irrational prior restraints causing severe damage to the right of freedom and expression.”

Mattel under section 151 of CPC applied to conduct the ex parte hearing ‘in camera’. Court rejected the application as it did not see any point in holding only ex parte hearing ‘in camera’ and entire trial in open court.

The court was of the view that ex parte order to restrain the defendants from releasing the film “Tera Intezaar” with the impugned song, ought not to be granted.

The court was of the opinion that it will be prejudicial to the plaintiff if it did not take into account the compilation of the judgements on the points related to Bloomberg, deletion and removal; (ii) infringement through objectionable content; and, (iii) trademark dilution; and, on (iv) in camera proceedings.

So, Justice End law in the order stated “It will be open to the counsel for the plaintiffs to, with or without a copy of this Order, call upon the defendants to delete the word “Barbie” from the impugned song and to notify the defendants that on their failure to do so, the plaintiffs would be entitled to damages from the defendants.”

Accordingly the makers of the Film changed the song’s name to “I’m Sexy Baby Girl.

Critical appraisal

According to author the court’s view that, the CBFC clearance is the prima facie assumption on the legality of the work and the courts acting as superior censor will dilute the worth of freedom of speech, is the right stand.

The court considered the angle of public interest, with regard to ex parte order as sought by plaintiff, restraining the defendants from releasing the film Tera Intezaar with the impugned song. This was an important consideration pursuant to the recent chaos created on the release “Padmavat.”

Author: Ms. Aditi Limaye, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at


[1] 20182018AD(Delhi)3, 245(2017)DLT677

[2] 296 F.3d 894




Thank ‘God’! It Is Not Trademarkable: Analysing the Monopoly over the Names of Gods and Holy Books

Rumours have it that Hindus have 33 Crore Gods. From an IPR perspective, it simply means that there are 33 crore names that are in a fix as potential trademark names. The recent judgement of Bombay High Court in the case of Freudenberg Gala Household Product Pvt. Ltd. v. GEBI Products Ltd[1] has opened the Pandora’s box of whether names of Gods should be registered as trademarks. The problem also lies in trademarking names of Holy Books like Ramayana and Mahabharata. Claiming monopoly and enjoying exclusivity over such names poses a threat to the commoners as well as the devotees.

The names of Holy books and Gods are considered good luck and show positive meaning, and thus are preferred by many while associating brand names. For example, ‘Ganesha’ means auspicious and good start whereas ‘Laxmi’ is associated with good fortune. These names do not possess distinctiveness in itself and to acquire secondary distinctiveness, it has to draw commercial magnetism so that the brand name and business become synonymous in public mind.  There has to be some kind of mental association in the minds of the purchaser. However, the registration of such names as word marks, should ideally be refused as names of Gods like Laxmi or Ganesha raise the question of distinctiveness. Mostly the Courts have held that it is difficult to get distinctiveness on God’s name. The consumer has yet not been able to associate any brand with that of the God’s name. However, that remains a question of fact whether a common word like that of God’s name, has acquired secondary meaning or distinctiveness and thus will depend from case to case.

The problem lies not only in the names of Gods and Goddesses but also in using names of Spiritual leaders. Denial of exclusivity over the names of spiritual leaders has been reasoned as no commercial monopoly can be allowed over a religious figure. Italian Supreme Court in in the case of George V. Entertainment S.A. and George V. Records E.U.R.L. v. Buddha CafèS.r.l.(Decided on: 26 January 2016, No. 1277) denied registration of Buddha as tradename of a coffee café in Milan.  The Applicants argued that Buddha was distinctive as tradename and had no connection with coffee; hence was an arbitrary fanciful name. The Court held that the tradename calls out religion but also directs a way of life.

Another situation that arises is when the names of Gods are used for registration of products which are condemned or bad in nature. In the case ofA.T. Raja, Madras v. Mangalore Ganesh Beedi Works[2], the trade name used on the pack of cigarettes was ‘Ganesha’. The case was contended on two arguments. Firstly, that the product was not good in nature and is vice in Hinduism. Secondly, people would use the pack with pictorial depiction of Ganesha and throw it in the bins after use. The Allahabad High Court rejecting the contentions held that nothing was shown to suggest that smoking hurts religious susceptibilities and also observed that photographs of Gods are used in wedding invitation cards by Hindus. Once the purpose is over, the cards are also thrown in the dustbins. The progressive interpretation of the Court was well appreciated. The Court had used judicial wisdom and not believed in literal interpretation of Section 9 (2)(b) of the Trademark Act.

Practically speaking, the image of the God and Goddesses can only be used as Intellectual Property by someone who is most likely not traceable today. Trusts like that of Sabarimala Temple are mere custodians of the deities. From the cases discussed in the paper, it is clear that the Courts have taken a strict stand on handing exclusivity of God’s name as that would prohibit the devotees and the commoners from using the name. What is not being discussed currently by the Indian Courts is the implications of registering names of Gods, Spiritual leaders and Holy books. The decision is only settled when there is any other party who opposes the usage of such names. The only exception being Kerala High Court in Sabarimala case who had suo-moto initiated proceedings. However, the Court dismissed the proceedings.  It is high time that the Registry takes into action the above discussed ratios before allowing and refusing such trade names.

The Courts are also not examining the Constitutional aspect of the rights enjoyed by the Trusts on such registration of names. One more question that remains unanswered is on the limit of inclusion of class whose names can hurt the religious susceptibilities. Can we not trademark the names of demigods, saints, kings and creatures from all mythological stories too? If such trademarks are allowed in future, then ‘God’ knows how many popular images in public domain will be allowed to enjoy exclusivity in the hands of proprietor.

Author: Ms. Esha Himadri, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at


[1] (Unreported, Commercial Appeal No. 72 of 2017, Decided on: 01.08.2017)

[2] (1999 19 PTC 104)

[3] Lisa E. Cristal and Victor F. DeFrancis, ‘Choosing and Defending a Trade Mark’ [2000] Vol. 17 No. 3, Protecting Intellectual Property.



[6] Osho International Forum v Osho Dhyan Mandir [2000] CN FA0006000094990, National Arbitration Forum, USA.

[7] Picture of the deity – Trademark No. 1420800 and the title ‘Sabarimala of Women’ -Trademark No. 1420799 under Class 42 of the Trade Marks Act, 1999.

[8] Eighth Standing Committee Report on the Trade Marks Bill, 1993, Clause 13.3.