Category Archives: Legal Issues

Recent Grant of Patent is Valid Ground of Defence for Refusal of Interim Injunction in Infringement Suits: Galatea Ltd & Anr. V. Diyora and Bhandari Corporation & Ors.

BRIEF FACTS

Plaintiffs are Israeli companies, engaged in the business of developing and providing inclusion scanning methods in rough diamonds and the Defendants are Indian companies are also engaged in the business of manufacturing and providing inclusion scanning services and in some cases are engaged in selling of inclusion scanning machines and rendering inclusion scanning services to its customers. The Plaintiffs claimed infringement of their suit patent by the Defendants by using of infringing machines, directly or indirectly. An ex-parte interim injunction prayed by the Plaintiffs was rejected by the Ld. Single Judge on the ground that the Plaintiffs have not fulfilled the prima facie conditions necessary for an ex-parte injunction. The said Order rejecting the injunction was challenged in Gujarat High Court.

 CLAIMS

 Plaintiffs claimed that previous several inventions have been made to the presence of inclusions in transparent and partly polished stones through imaging but none could determine the exact location of the inclusion since refractive index of the stone and the air lead to generation of multiple images produced by a single inclusion further more inventions took place to reduce the refraction and to obtain accurate location of inclusions but they also failed. Plaintiffs’ claims to have invented an apparatus and a method which are the subject matter of Plaintiffs’ suit patent and the Defendants are manufacturing or procuring, importing and selling duplicate/infringing machines. They are using such machines to provide services to third parties.

JUDGEMENT OF LEARNED SINGLE JUDGE 

By the judgement dated 26.03.2008, Ld. Single Judge rejected the interim injunction application of the Defendants on the following ground:

  1. On the basis of commissioner’s report, no apparatus was found in the machine of the Defendants which would infringe Plaintiffs suit patent prima facie and the said machine is liable to be tested and after such only it can be determined whether infringement has taken place or not.
  2. The suit patent was considered to be new in the sense that it is granted on 22.2.2016 and its validity is yet to be adjudicated.
  3. Patents which are granted to the Plaintiffs in other countries cannot be made basis of an action of infringement in India.

Similarity in the end results of the machine does not determine the infringement

  1. Defendants pleaded against the use of vacuum pump or any apparatus for removal of bubbles and only because the end result of the two machines is the same, would not constitute infringement of the Suit Patent.
  2. The Defendants were directed to maintain separate accounts for sale of any machines manufactured and/or sold by any of the defendants and restrained them from using any device for bubble removal in their machines till final disposal of the suit.

Appeal was preferred by the Plaintiffs against such Order of the Ld. Single Judge.

APPEAL BEFORE DIVISION BENCH

Interpretation of Section 107(1) and 64 of Patents Act

Mere grant of patent would not give an indefeasible right to the plaintiffs to enforce the patent in a suit and to claim the interim injunction pending such suit. If the patent is old time tested one, existing since long, the Court would consider it with due regard and would lean in favour of enforcing it in absence of any other reason to the contrary. On the other hand, if the patent is relatively new, the Court would be slow in enforcing it at the interim stage, unless shown to be beyond vulnerability. In the context of patent being new or old, the Courts have often employed a yardstick of six years time. The Bench relied on judgments of TVS Motor Company Limited(supra), V. Manioka Thevar v. Star Plough, TEN DC Wireless Inc and Anr. V. Mobi Antenna Technologies (Shenzhen) Co Ltd Works, Melur.

 Essentials for deciding to grant or refuse an injunction in a Patent infringement suit are:

  1. Whether patent is an old time tested one or a recent one?
  2. Whether the person interested have either applied for revocation of the patent or opposed the patent in the suit?
  3. Whether in such proceedings the defendants have made out a prima facie case of vulnerability of the patent on any of the grounds otherwise available for revocation of the patent such as lack of any innovative step or existence of prior art?

Held

The Bench held that the predominant prima facie feature of the patented apparatus and method invention claimed by the Plaintiff is the vacuum pumps which remove the impurities and bubbles to eliminate the possibility of third refractive index which removes distortion in images of inclusions in the gemstone.  Controller’s report was also taken into account that vacuum pumps are essential part of the suit patent and Defendants also stated that they are not using vacuums pumps in their device which was also revealed from the Court Commissioner’s report who, at the time of inspection, did not find any device containing vacuum pumps.

Most integral reasoning given by the Court for refusing the interim injunction to the Plaintiffs was that the Patent itself is a recent one and has not been previously tested in court of law, also the Defendants have succeeded in demonstrating the vulnerability of the suit patent by citing various similar techniques used widely for of inclusion in gemstones. Considering all factors and arguments, the Hon’ble Court refused the interim injunction since it was found that prima facie case, irreparable loss and balance of convenience bends towards the Defendants, at the present stage.

Author: Ms. Vatsala Singh, Litigation Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at vatsala@khuranaandkhurana.com.

Reference:

[1] R/APPEAL FROM ORDER NO. 109 of 2018, High Court of Gujarat

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Regulation of Content Available On Video-On-Demand Players Like Netflix, Amazon Prime, Zee5, Hotstar

There are various video-on-demand streaming (VOD) platforms like Netflix, Amazon Prime, Hulu, Hotstar etc. which provide online streaming services allowing people watch a wide-variety of contents like TV Shows, web-series, sitcoms, movies, documentaries etc. What makes these VOD’s different from a typical television channel or a movie theatre is that they allow the viewer to choose and decide what, where and when to watch the videos we like. Therefore, one can enjoy unlimited viewing of the content available on such online streaming platforms without taking pain of watching a single commercial. These platforms are subscription based , a person can avail the services from these platforms which include video contents along with rating guides and episode synopsis in-order to help viewers decide what they want to watch and what they don’t. However, these VOD’s are facing multiple court cases wherein there are allegations of depicting contents on their apps which are not morally good for the society.  Before going into the details of the issue, it is important to understand the reason why such issue has arisen in the first place. For a better understanding let’s have a look at the petition filed before the Delhi and the Bombay High Court.

The Petition

Few days back, a PIL has been filed in Delhi High Court by an NGO called Justice for Rights Foundation seeking framing of guidelines to regulate the functioning of online media streaming platforms /on-demand entertainment apps such as Netflix, Amazon and others[1] alleging that they show “unregulated”, “uncertified”, “sexually explicit”, “vulgar”, “inappropriate”, “religiously forbidden” and “legally restricted” content. Some of their shows often “depict women in objectifying manner”. In August, 2018 the Ministry of Information and Broadcasting has received an application to ban shows like Sacred Games, Game of Thrones, Spartacus etc. in India. The petition was filed before the Hon’ble court seeking guidelines in order to regulate the uncertified, pornographic, sexually explicit, vulgar, profane and legally restricted contents broadcasted on the online platforms including Netflix, Amazon etc. seeking a writ of mandamus to the respondents to frame legal provisions/guidelines in order to regulate the said online platforms and contents broadcasted on the online platforms, and to direct the respondents to pass necessary directions to all such online platforms to remove such content with immediate effect. It was alleged that these shows contain “obscene, nude and vulgar scenes” which are cognizable offences under the Cinematography Act, Indian Penal Code, Indecent Representation of Women (Prohibition) Act and the Information Technology Act. For instance, content from ‘Charlie and the Chocolate Factory’ where the scene depicting animal (the holy ‘Cow’) abusive is available for view (for viewers of age 7 years and above) on Amazon Prime video.

A similar petition has also been filed before the Nagpur bench of Bombay High Court by Divya Gontia against AltBalaji for broadcasting show ‘Gandi Baat’ and against Netflix for ‘Sacred Games’.[2] In this case, the petitioner has approached the court under Article 226 and 227 of the Indian Constitution in the interest of securing justice to the general public of the country and especially members/supporters of Indian National Congress whose revered figure Shri Rajiv Gandhi is sought to be defamed in the name of artistic freedom. It was alleged that the show ‘Sacred Games’ has inappropriate dialogues, speeches and even political attacks which are derogatory in nature and harms the reputation of the former Prime minister Shri Rajiv Gandhi. The petitioners have taken the reference of Secretary, Ministry of Information and Broadcasting, Govt. of India v. Cricket Association of Bengal where the court observed that in today’s context electronic media has become the most powerful tool because of its audio visual impact and its widest range covering almost all the sections of the society and can be easily accessible by the children at home. [3] Further, it was also alleged that the show incorrectly depicts historical events of the country like Bofors case, Shah Bano case, Babri Masjid case and communal riots, which is maligning the reputation of the former Prime Minister Rajiv Gandhi and also defames him internationally. The petitioners have taken the plea that the portrayal of historical figures especially a former prime minister has to be done in a historically accurate manner and creativity cannot be used as a pretext to malign or sully their image. Also, it is reprehensible that only for the sake of TRP and to earn some profit the producers have come down to such a level that they have projected former prime minister in the bad light when he is a role model to millions of Indians.

What Are The Consequences?

In the aforementioned petition filed before Delhi High Court, the main issue before the court is that Netflix and Amazon are broadcasting illegal and morally inept contents on the on-demand web shows which are vulgar, vile and violent. The petition was filed seeking intervention from the High Court to clamp down on the “unregulated, uncertified, sexually explicit, vulgar, profane and legally restricted content broadcasted on the online platforms including Netflix, Amazon Prime Video etc. The petitioner has demanded the Hon’ble High Court to frame regulatory guidelines for online shows and to ban objectionable content on online shows. In case if the court has accepted the arguments of the petitioner, then there are highly likely chances that these on-demand entertainment apps can face possible ban. However, the matter was not taken up since the bench did not assemble and it is expected to be taken up next on November 14.

Are There No Laws To Restrict Such Platforms?

The answer to this question is NO. There are various acts that govern different domains; however, since such VOD platforms are actually a mix of many domains, there is no single law which covers it completely. For example, in the above mentioned petition ,it was alleged that the contents depicted in these VODs platforms is violative to the Information Technology Act, 2000 (hereinafter referred to as the ‘IT Act’). Section 79 of the IT Act puts onus on the intermediaries to observe due diligence while discharging their duties under the act and to observe guidelines as prescribed by the Central government. However, Section 79 of the IT Act does not apply to all the online platforms in the present case as a blanket provisions as these platforms stream third party content and also give self generated content.

Further, the Cinematograph Act, 1952 is not applicable to an online movie streaming service as the same along with its rules only govern the censorship of films in Theatres and Television, and content that is streamed online does not fall under the domain of Cinematograph Act. Further, the Section 3 of the Cinematograph Act provides for the establishment of Central Board of film Certification   (CBFC) and the purpose behind is to certify films which are intended for “public exhibition”. The term “public exhibition” has not been defined anywhere in the act or its rules therefore, there is issue of interpretation involved that whether public exhibition would include only to film available for watching only in public places like Multiplex or it would also include video content available to public for watching whether in public or private.

The Cable Television Network (Regulation) Act, 1995 governs the cable network operators, and under Rule 6(n) of the Cable Television Network (Regulation) Rules, 1994 they are required to ensure that the films that can be accessed by their viewers should be certified from CBFC. Going by this analogy, the term “exhibition” of films can be said to include “exhibition” of films for private viewing by the public.

Why These Acts Cannot Be Applied To Video–On-Demand Platforms?

However, the problem persists as different media are regulated by different legislative frameworks, one cannot compare Netflix or Amazon prime with a multiplex as Netflix provides viewing in Private. We can also not compare Netflix with a Cable operator as they have pre fixed sequence of content and viewer can not choose what and when and where he wants to view the content, all he can do is to change the channel, but he does not have any control over the sequence of the content, whereas in the case of video-on-Demand Platforms viewer has absolute control over what, when, where he want to watch. Another major difference between Cable operator and video-on-demand platforms is that the former uses satellite signals to distribute content whereas the latter uses networks of telecom operator and hence they cannot be equated.

Indecent Representation of Women

The scenes depicted on these online entertainment apps are also violative to the Indecent Representation of Women (Prohibition) Act (IRWA), 1986 which seeks to “prohibit indecent representation of women through advertisements or in publications, writings, paintings, figures etc”.  The Act penalizes persons involved in the publication, distribution and packaging of prohibited materials however, such material can be published for scientific purposes or representation of ancient monuments. Recently, the Nagpur bench of the Bombay High Court took a strong view over pornographic contents of Netflix, Amazon Prime, Hotstar and other channels on internet and directed the Information and Broadcasting Ministry to initiate effective steps to control and regulate these contents. The bench comprising of Justice Bhushan Dharmadhikari and Justice Murlidhar Giratkar also directed the concerned ministries to set up a pre-screening committee for monitoring the contents before they are released on online media. The direction issued by the High court will be helpful in curbing crudity, sexual or unsavoury language, vulgar actions, nudity, sex and immodesty on web series.

Right To Free Speech And Expression

These video-on-demand cannot be left to broadcast unrestricted, unregulated content in the name of right to free speech and expression, as even the fundamental right of freedom of speech and expression granted under article 19(1)(a) of the constitution of India, 1950 is also subject to certain restrictions, like respect of the rights or reputation of others, protection of national security or of public order or of public health or morals etc. The word ‘reasonable restriction’ corresponds to the societal norms of decency. The contents shown on such online platforms are definitely violative of Article 19 of the Indian Constitution and therefore the said platforms are bound by reasonable restrictions guaranteed under article 19(2). The fundamental right to carry on trade or business does not extend to carry on trade or business of products or equipment that could interfere with the safety, health or peace of the citizens. Furthermore, the said content on such online platforms shows women in bad light and merely as an object which is also violative of their fundamental right to live with dignity as enshrined under article 21.

Conclusion

In the above backdrop, it is high time for the government to come up with stringent laws in order to put a check on the contents that are not morally appropriate for the society. In the present case, no efforts were made to regulate the said online platforms or to remove such legally restricted contents in order to put an end to this problem. This ignorance of the government actually provides such platforms another opportunity to perpetuate the illegality. The said online platforms go unchecked due to lack of certifications or legislations and are not regulated properly because of lack of guidelines or provisions of law specifically dealing with such contents. Now, it really becomes important to tackle such online platforms which operate unregulated and unchecked on an urgent basis.

I strongly believe that anything that disturbs public tranquility or public peace disturbs public order. The right of freedom of speech and expression cannot be extended in order to accommodate “just anything” to be beamed in every home especially when it concerns the former prime minister of our country who is a hero to the millions of people. Netflix in the present case have taken undue liberty and have completely distorted the historical facts which directly impact the reputation of Shri Rajiv Gandhi and are highly slanderous. In Kanu Biswas v. State of West Bengal case, the court held that “in order to determine the effect of an act on the law and order situation in the society, it is important to see the disturbance of the current life of the community which leads to the disturbance in the public order.”[4] We believe that the inaction on the part of the Information and Broadcasting ministry in not taking a proactive step to control and regulate the online streaming platforms led to the violation of Fundamental Rights guaranteed under Article 19 and 21 of the Indian constitution because there is an inseparable interconnection between freedom of speech and stability of society.

We believe that the screening of pornographic contents, vulgar gestures and talks are overriding the Indian culture and morality and there is no controlling and monitoring authority for such video-on-demand platforms. Therefore, it becomes important that there must be a monitoring machinery to control such web contents. Also, in interest of the public at large, the Hon’ble court must impose deletions on visuals and dialogues relating to former Prime Minister Rajiv Gandhi which are found to be derogatory in nature and under article 19(2) reasonable restrictions can be imposed on freedom of speech and expression on account of ‘Public order’ which is synonymous with public peace, safety and tranquility.

Author: Mr. Shubham Borkar, Senior Associate – Litigation and Business Development, Mr. Rishabh Tripathi, Legal Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at shubham@khuranaandkhurana.com.

References:

[1]  Justice for Rights Foundation v. Union of India W.P (C) No. 11164/2018.

[2]  Nikhil Bhalla v. Union of India Writ Petition (Civil) Number 2018/7123.

[3]  Secretary, Ministry of Information and Broadcasting, Govt. of India v. Cricket Association of Bengal (1995) 2 SCC 161.

[4]  Kanu Biswas v. State of West Bengal [1972] 3 SCR 831.

Case Comment: M/S Shree Rajmoti Industries Vs M/S Shri Vishwaprabha Food

Brief Facts of the Case

The plaintiff in this case claimed to be owner of the trademark “Rajmoti” that it adopted in 1962. The plaintiff used “Rajmoti” as a trademark as well as a distinctive logo for edible oils that included cotton seed oil and groundnut oil. The plaintiff later expanded the business to mineral and aerated waters, beers, fruit drinks, juices, etc. The word “Rajmoti” is also a remarkable feature of the Plaintiff’s business name i.e. M/S Shree Rajmoti Industries. The plaintiff claimed that its trademark was registered in classes 29 (Meat, Fruits, Milk and Oils), 31 (Grains, Fresh Fruits and Vegetables), 32 (Water and Non-Alcoholic Beverages), 35 (Business Services and Consulting) and 42 (Technology and Software Services).

The defendant in the case at hand was engaged in manufacturing and selling of rice. The plaintiff claimed that the defendant used the mark “Rajmoti Rice” and thus the act of using an identical mark as that of the plaintiff constituted trademark infringement and passing off.

The plaintiff prayed for a decree of permanent injunction preventing the defendant from using rice or any other goods under the impugned trademark or label bearing the word “Rajmoti Rice” or any other trademark or label which is either identical with or deceptively similar to the word “Rajmoti”.

Issue before the Court

Whether the use of the word “Rajmoti” for rice would violate plaintiff’s right’s in the trademark “Rajmoti”?

Holding of the Court

The single judge bench of the Calcutta High Court ordered an ex parte interim injunction. The court reasoned that the principle of irreparable harm was applicable in the present case.

In order to answer the question before it, the court took into consideration the usage of the marks by both the parties and concluded that the plaintiff had been extensively used the mark for decades unlike the defendant who could not support its claim that it had been using the marks since 2007.

The court took into account the nature of the products and the way these products are sold in the markets. It concluded that both rice and oil are usually sold in close proximity and the customer base is also identical. The court then said that it was common for an owner of a trademark to employ the same mark for similar products while expand business. The court relied on Supreme Court’ judgement in Laxmikant Patel v. Chetanbhai Shah where it was held that the business may be carried on in the future especiallyfuture market expansion should also be taken into consideration while judging passing off.

Finally, the court applied Section 29(2) of the Trade Marks Act, 1999 and held if the trademark is identical to the registered trade mark, it is sufficient if the goods are either identical or similar for constituting infringement under the section.

As in the present case, the products, edible oils and rice were of similar nature and thus, the plaintiff must be provided remedy in form of interim injunction.

Author’s Comments

Judging by the facts and evidence presented before the court, the case seems to be a classic example of passing off and infringement.

The evidence showed that the plaintiff used its trademark since 1961 as opposed to the defendant who claimed that it has been using the said trademark since 2007 but could not produce evidence before the court to prove its usage. Further, sales figures of plaintiff are in crores which shows the widespread usage of his trademark. There is no question of delay in filing of the suit for injunction. As rightly held by the court in this suit, the nature of goods sold by the plaintiff and the defendant are of similar nature and so is the market of consumption of these goods. It is important to note that customers of the plaintiff are common and unwary people who could be easily misled. Thus, it is highly likely that the defendant’s usage of plaintiff’s trademark would deceive customers and can cause damage to plaintiff’s business reputation.

We must also throw light on court’s mindfulness of “natural expansion of business” doctrine.In light of these circumstances, we should visit a recent Supreme Court’s judgement inNandhani Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd. where this doctrine was argued. The court, in this case, finally held that the respondent’s/plaintiff’s business was solely meant for trading in milk products only (class 29) and it had not intent to expand its business to other products that fall under class 29 or 30 in the future. Relying on this conclusion, the court ruled in favour of the appellant who dealt with food products such as meat and fish.

In the present case, however, the plaintiff’s consistent expansion of business coupled with its extensive use of the trademark was the reason behind court applying “natural expansion of business” doctrine in favour of the plaintiff. Further, the fact that defendant failed to show that it had been using the trademark in good faith for products in which the plaintiff’s goods had not acquired distinctiveness.

The case is important as the doctrine of natural expansion of business has been comparatively less prominent in Indian trademark regime.

Author: Mr. Parimal Kashyap, 3rd year BA LLB(Hons.) at Dr. Ram Manohar Lohiya National Law University, Lucknow Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at  pratistha@iiprd.com.

Apple Fights Qualcomm Patents With 5G And National Security Claims

Apple and Qualcomm’s long battle over patent licensing fees has taken a surprising turn due to 5G and national security concerns.  The International Trade Commission hearing in Washington, D.C may block the import of certain iPhones that allegedly to violate Qualcomm patents.

A very peculiar claim by Apple says that banning iPhones made with patent-infringing Intel modems might threaten United States national security.   Apple makes iPhones that alternate between Qualcomm and Intel modems, a ban affecting only Intel’s modem would increase Qualcomm business. In new generation iPhones the performance of Intel’s 4G cellular chips are not as good compared to Qualcomm’s processor but Apple have relied upon Intel’s modem because of differences over Qualcomm’s patent licensing fees. Intel is working on developing 5G modems at this point of time which can put US ahead of China  in the race of 5G. So hurting Intel’s modem sale might affect the country’s national  interest.

The gist of the lawsuits : Apple is saying that Qualcomm abused it’s monopolistic market position and charged the company  five times more in payments than all other cellular patent licensors they have agreements with,  combined, relating to baseband processors used in iPhones. The legal tussle between Apple and Qualcomm seems far from over but Qualcomm has high hopes that a victory will give it an edge in patent royalty negotiation with Apple which it has perceived  as a very challenging customer.

Qualcomm denies that any wrong has been committed  and slams Apple on numerous accounts. It also accused Apple  of “giving government agencies false and misleading information and testimony” about the company, and for interfering with contracts it has with “manufacturers of Apple’s cellular devices.” In addition to this Qualcomm claims Apple has intentionally misrepresented the performance of iPhones with it’s modems.

It’s not fair to blame Apple for wanting to break away from the monopoly of Qualcomm on iPhone modems, and Qualcomm obviously wants to be omnipresent in the hands of maximum number of people .

Whatever be the result, our phone isn’t as good as it could be because of a very ugly corporate tussle.

Author: Ms. Tanuja Prasad, Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@khuranaandkhurana.com.

References:

[1] https://mashable.com/2017/04/11/qualcomm-suing-apple-affects-iphone-quality/#aat2fi8tpPq3s

[2] https://blog.ipleaders.in/ip-licensing-agreements/

[3] https://www.techiexpert.com/qualcomm-vs-apple-legal-fight-on-nsg-and-5g/

A Win Over The Battle Of Trademark Infringement By Registered Mark Dealing Under A Different Class

The Delhi High Court in the matter of L’AIR Liquid Societe Anonyme Pour I Etude Et I Exploitation Des proceded Georges Claude And Anr. v. M/S Liquid AIR & Ors. reaffirmed that even if a registered trademark is used as business name or trading style, it will constitute infringement under section 29(5) of Trademarks Act. This decision came in the suit filed by a French company(represented by Khurana & Khurana Advocates and IP Attorneys) claiming their rights to the trademark ‘AIR LIQUIDE’, which is claimed to be commercially used by them in more than 60 countries in the world since 1902. The grievance of the plaintiffs was that the defendants were using the domain name www.liquidair.in along with the mark ‘LIQUID AIR’ as their trade name, which is deceptively similar to their mark. The noteworthy aspect of this judgment is that the Hon’ble High Court opined in favour of the plaintiffs despite both the parties being in different classes. The plaintiffs in the instant case are one of the leading manufacturers of industrial gases in the world, having commenced its business in 1902 and operate under classes class 1,6, 10 and 11, whereas the defendants operate in class 39, being the distributors of industrial gases. The Hon’ble High Court was of the view that the business of both the parties in the present case are essentially connected or affiliated to each other and there is a strong likelihood that potential consumer may be mislead owing to the deceptive similarity between the two trade marks in question.

The plaintiff sought an injunction on the ground that the marks used by defendants are identical/deceptively similar and they were involved in the same business of trading and marketing of gas related products as that of plaintiff. The Delhi High Court on 9th May, 2018 passed an ex-parte ad-interim order of injunction restraining the defendants from dealing, directly or indirectly, in any goods/services similar to the goods/services of the plaintiff under trademark ‘LIQUID AIR’ or any other mark deceptively similar to plaintiffs trademark “AIR LIQUIDE” and from using the domain name www.liquidair.in or any other domain name comprising of the term Liquid Air or any term similar to “AIR LIQUIDE”, to the plaintiffs.

Against the courts ex-parte order, the defendants moved an application for vacation of the interim injunction and took the plea that their firm was registered in 1995 with the Registrar of Firms. Further, they said that they are involved in the trading of gas products and not in manufacturing of gases. They also averred that they were the members of All India Industrial Gas Manufacturers Association (AIIGMA) from 2002 till 2012. The plaintiffs took the plea that they are registered proprietors of the mark ‘AIR LIQUIDE’ and the use by the Defendants would constitute infringement and passing off.

The Delhi High Court after listening the arguments and counter arguments from both the parties opined that the use of the trade mark “LIQUID AIR” by the defendants in class 39 does constitute infringement. Further, the Hon’ble High Court opined that the defendants’ intended use of the impugned mark although in a class different but essentially allied to the plaintiffs’ business constitutes infringement and incontrovertibly contravenes the intellectual property rights of the plaintiffs and therefore, the defendant cannot under any circumstances be allowed to continue the use of the impugned mark. In the of the facts and circumstances of the instant case the Hon’ble Delhi High Court held that:-

  • The Defendant would not adopt any mark or name which is identical or deceptively similar to the plaintiffs mark “AIR LIQUIDE”. Also, the court directed the defendants to change the firm name “LIQUID AIR” w.e.f. 1st April, 2019, subject to the plaintiffs giving up the claim for damages.
  • The Defendant shall obtain the requisite approvals from the Registrar of Firms or any other authority including the registrar of Companies.
  • The Defendants must surrender the domain name liquidair.in and would not use it for any of their business activities in future. Also, the Defendants cannot adopt any other domain name or website name which contains any mark or name identical or deceptively similar to the mark ‘AIR LIQUIDE’.

Principles of Passing off In Trademarks: Wockhardt Limited Vs. Torrent Pharmaceuticals Ltd.

Background

Torrent Pharmaceuticals Ltd. (Plaintiff/ Respondent) owned a trademark a trade mark called “CHYMORAL” and “CHYMORAL FORTE”, which is a drug administered post-surgically for swellings that may arise and/or wounds that may arise. They filed a suit for infringement and an interlocutory application for passing-off against the rival, Wockhardt Limited (Defendant/ Appellants) for violating its trademark rights by use of the mark “CHYMTRAL FORTE”. Single Judge Bench of Bombay High Court refused to grant the interim injunction for passing-off in favor of Torrent and against Wockhardt. The said order was challenged before the Division Bench, the same was set aside and Torrent was granted interim injunction for passing-off. The said Order of Bombay High Court was appealed, by Wockhardt, in Supreme Court.

Classical Trinity of Passing Off

  • There 3-elements which are to be satisfied to prove a case of passing off are: a) Goodwill and Reputation; b) Misrepresentation by the Defendant; and c) likelihood of damages.
  • The Court held “that though passing off is, in essence, an action based on deceit, fraud is not a necessary element of a right of action, and that the defendant’s state of mind is wholly irrelevant to the existence of a cause of action for passing off, if otherwise the defendant has imitated or adopted the Plaintiff’s mark”. Likelihood of damages is sufficient. The bench quoted the judgment in Laxmikant V. Patel vs. Chetanbhai Shah.

Acquiescence and Delay: Not the same

  • The Court refused the Single Judge’s injunction refusal ground of acquiescence and stated that “We do not think that because the appellants stepped in the year 2014 with notice of the first respondent’s registration and use of the mark that means the appellant-plaintiff has acquiesced in the same. That is not a positive act and which is required to deny the relief on the ground of acquiescence.” Reference was made to the SC judgment in M/s Power Control Appliances and Ors. vs. Sumeet Machines Pvt. Ltd.
  • “Acquiescence is a species of estoppel and therefore both a rule of evidence and a rule in equity. It is an estoppel in pais: a party is prevented by his own conduct from enforcing a right to the detriment of another who justifiably acted on such conduct.”
  • With respect to the point of acquiescence, the Division Bench held that ‘Delay is not to be confused with acquiescence. The latter implies knowledge, and where “knowledge of the defendant’s mark and product is shown and coupled with a long period of inaction against the alleged invasion of an exclusivity claim”, it is not enough to say that “there is no positive act”, as acquiescence explicit consent rather than silent.

Verdict

The Supreme Court bench upheld the law laid down in Laxmikant V. Patel vs. Chetanbhai Shah regarding passing off, dismissed the appeal in favor of Torrent Pharmaceuticals Ltd. and upheld the order of Divison Bench of Bombay High Court.

Author: Ms. Vatsala Singh, Litigation Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at vatsala@khuranaandkhurana.com.

Miss Kajal Agarwal vs. The Managing Director, M/s V.V.D. & Sons Pvt. Ltd.

FACTS

The Appellant is a well-known South Indian actress. The Respondent – Company entered into a advertisement agreement with the Appellant. It was contended that the parties have mutually agreed to the terms of the agreement and it was also agreed, in the written agreement which the appellant didn’t sign, that all the promotion/ advertisement material can be used by the Respondents only for the period of one (1) year from 29/12/2008 to 28/12/2009. The Appellant contended that the Respondent continued to use the promotion/ advertisement material in violation of the terms and agreement and the agreement did not incorporate the changes suggested by the Appellant. Consequent to such violation, the Appellant issued a legal notice to the Respondent on 12/09/2011, despite which Respondent continued to use such advertisement material.

The Respondent contended that the advertisements are being used in compliance of the agreement and the Appellant has been given the decided remuneration as per the terms of the agreement, for such advertisement. The Respondent further asserted that it holds Copyrights over the advertisement film, which falls under the category of ‘cinematography’, therefore, being the first owner of the ad-film the Respondent can exploit such work for the period of 60 years, as per the Act. Since the Appellant has been duly compensated for the ad-film, now the Respondent cannot be denied copyright over their original work.

ISSUES RAISED

5 issues were framed by the Hon’ble Court for consideration, which are as follows:

  1. Where the Copyright Act gives the first owner of the copyright of the cinematograph film a term of 60 years to exploit the work under section 26 of the Act, whether the same could be restricted by the parties by way of a contract for a lesser period?
  2. Whether in a cinematograph film more particularly in an advertisement film, where apart from the appellant as performer it also involves various other players like the cameraman, music director, director of the advertisement film etc., and the respondent as a producer and the first owner of the copyright of the film can be restricted to exploit his production for a lesser period than the one conferred by the Copyright Act based on an agreement entered into by him with one of the performers?
  3. What is the scope of proviso (c) to Section 17  and Section 38 – A of the Copyright Act?
  4. Whether the exploitation of the cinematograph film by the respondent beyond the period stipulated by the agreement will restrict/prevent the appellant from endorsing or acting in the advertisement film of the competitors or other persons who deal with similar products?

HELD

It has been held that, the Appellant falls within the definition of a ‘Performer’ and the Respondent being the producer of the cinematograph film falls under the category of ‘author’ and the cinematograph film falls within the category of ‘work’. It is also an admitted fact that the appellant by virtue of Clause 4 of the agreement has acknowledged the specific condition that the cinematograph film and the other promotional materials in any medium developed between both the parties will be the copyright of the respondent. By virtue of this condition, the respondent who is the author of the work shall be the first owner of the copy right. As the first owner of the copy right, the respondent will have the exclusive right to communicate the cinematograph film to the public by virtue of Section 14 (i) (d) (iii). Once the respondent becomes the first owner of the copy right, the right shall subsist for a period of 60 years as provided under Section 26 of the Copyright Act[1].

It was further held that since the Appellant has agreed to give the copyright to the Respondent, as per the agreement, there was no clause/ agreement to the contrary, taking away the copyright of the Respondent, therefore proviso of Section 17 (c) will not be applicable.

It was held that since the Respondent has been proven to be the ‘first owner’ of the ‘work’, therefore, Respondent was entitled to exploit the work for the entire term, as mentioned in Section 26 of the Act i.e. 60 years and the same is not restricted to one year by the agreement.

With respect to the individual rights of the Performer under Section 38-A of the Act, it was held that “once a performer by a written agreement consents to incorporate that performance in a cinematograph film, the performer thereafter cannot object to the producer’s right in the cinematograph film, unless there is a contract to the contrary. In the present case the appellant having consented to incorporate her performance as an actor in the cinematograph film produced by the respondent who is the author of it, the appellant cannot stop the respondent from enjoying their producer’s right. There is no contract to the contrary in this case and even the agreement dated 29.12.2008 does not contain any Clause preventing the respondent from exercising his absolute right as the producer of the cinematograph film”.[2] For above reasons, the Madras HC dismissed the OSA, in favour of the Respondents.

Author: Ms. Vatsala Singh, Litigation Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at vatsala@khuranaandkhurana.com.

References:

[1] Para 17 of O.S.A. No.269 of 2017

[2] Para 33 of O.S.A. No.269 of 2017

Nandini Or Nandhini – Similar Or Not?

FACTS

Karnataka Cooperative Society, Respondent, started using the trademark ‘NANDINI’ for milk and milk products from the year 1985. The Appellants, Nandhini Deluxe adopted the mark ‘NANDHINI’ in 1989 in respect of their goods. The goods of both the parties fall under same class 29 and 30 an even though the both the parties have been using their trademark for more than 12 years, the Respondent is the prior user. Irrespective of the goods belonging to the same classes in a broad sense, the Appellant’s goods are different from those of the Respondent, the Appellant is dealing with fish, meat, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, edible oils and fats, salad dressings, preserves etc and the Respondent is dealing only with milk and milk products. The registration of Appellant’s mark on milk and milk products are refused by the Trademark registry, and the Appellant has to explicitly give an affidavit, deleting the word “milk and milk products” from its description.

 
SUPREME COURT HELD

Marks Are Not Deceptively Similar

Firstly, the word NANDINI/ NANDHINI is a generic word as it represents the name of Cow in Hindu Mythology. It is not an invented or coined word.

Secondly, it has been held that even though both the words are phonetically similar, the trademark and logo adopted are completely different when seen in totality; further the name and style of business of both parties are different from each other since one deal in milk and milk products, the other deals in various foodstuffs except milk and milk products. The Appellant used the word DELUXE along with Nandhini, followed by the tagline ‘the real spice of life’, and a device of lamp, whereas the Respondent have used simply used the word ‘NANDINI’ below the picture of a cow encompassed in a circle. This pictorial depiction of two trademarks was sufficient to show that there is hardly any similarity between the two marks.

No Absolute Monopoly

Referring to the case of Vishnudas Trading as Vishnudas Kushandas, the Court held that ‘the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trademark in respect of certain goods falling under the same class. In this behalf, we may usefully refer to Section 11 of the Act which prohibits the registration of the mark in respect of the similar goods or different goods but the provisions of this Section do not cover the same class of goods’.  The Court also held that since the facts have not satisfied the conditions of Section 11(2) of the Trademark Act, therefore, the Respondent cannot claim protection of well-known mark. Also it was held to the case of ‘concurrent user of trademark’ since no document or evidence was provided by the Respondent to show that they have acquired distinctiveness within four years between Respondent’s first adoption or Appellant’s first adoption.

The Court concluded that both the marks are not capable of causing confusion in minds of public and are not deceptively similar. The registration of Appellant’s mark was allowed subject to the condition of deleting ‘milk and milk products’ from their registration.

 
CONCLUSION

Before the Judgment, the use of deceptively similar trademarks in different classes were permissible and almost never disputed, but post- judgment, use of same or deceptively similar trademark in the same class has been permitted, if the marks are visually different from one another. Proprietor of the trademark cannot enjoy monopoly over the entire class of Goods – Supreme Court. This judgment has come as a huge relief to the traders who have been in business of long and have similar trademarks to those of the already existing trademarks, in similar class but different businesses. On the Contrary, the Judgment has also opened the doors of concern such as mere similarity of words is insufficient to reason infringement, registration of a mark in one class in no assurance that similar competing mark cannot be registered in the same class unless well-known, which in itself is hard to prove.

 

Author: Ms. Vatsala Singh, Litigation Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at vatsala@khuranaandkhurana.com.

Reference:

[1] M/s Nandhini Deluxe vs. M/s Karnataka Co-operative Milk 2018 (9) SCALE 202

Meesha Novel Case

In this day and age, a microscopic scrutiny of the Government will show us we are only a deemed democratic nation and not one in actuality. If we truly had the rights that are listed in our supreme Constitution, there wouldn’t be any journalists and writers who fear for their lives simply because they have the tendency to express their opinions freely.

It’s a slippery slope when it comes to deciding what can be published, what is ignorant, what is moral, what is vulgar and what is obscene. Something that offends one person may not offend the other and vice versa. It would be a waste of time and resources for the courts to be preoccupied with matters that may hurt someone’s sentiments. Opinions must be encouraged and sought after, they must be welcomed even if the views oppose each other, healthy discussion is essential, and a person must be free to make art or literature in any form that they choose, without worrying about what someone else may think.

Plenty of cases come up in court, books are banned and movies are censored and it usually follows a disheartening familiar course. In these instances, the judgement delivered on September 5th, by the Hon’ble Chief Justice of India, Dipak Misra hits like a breath of fresh air.

The Meesha case was widely discussed in the media before this judgement was given. This story, Meesha i.e., moustache, appeared in Mathrubhumi which is circulated throughout the country.

The dialogue in the story that raised the said controversy was, “Why do girls take a bath and put on their best clothes when they go to a temple?”, “They are unconsciously proclaiming that they are willing to enter into sex.” This triggered an extreme reaction in the media and the writer of the novel was even sent threats.

It was contended that the Mathrubhumi editor was at fault for not editing statements that showed temple going women in a bad light. It was further contended that it was a defamatory and degrading publication which caters to perverted and communal minds and that it needs to be checked. Moreover, that it defiles the place of worship and causes the public to look down upon temple going women with contempt and ridicule. It was suggested that since this publication has the potential to disturb the public order, decency, morality and defames the women community, the Court should lay down guidelines to regulate and prohibit the same. It prayed for a mandamus to Union of India, Mathrubhumi and the State of Kerala to seize all copies of the same and issue a writ of prohibition to prevent further circulation.

Banning this book was considered as it was protested that a part of the book was indecent and that it offended the sentiments of women of a particular faith. The case of Devidas Ramachandran Tuljapurkar v. State of Maharashtra & Others[1] was cited wherein it was held that there is no authority who gives licence to a poet. Similarly, in Raj Kapoor & Others v. State & Others[2], it was explained that liberty is the root principle and that fundamental freedoms would be impacted if morals were measured by statutes and courts and that it would be a risky operation.

It may seem like a usual occurrence but the issue is a deep rooted one. When will the bullying and coercion come to an end and when will our State truly step out of its totalitarian regime?

This decision being a milestone in this situation should not have been in the limelight in the place. The violence that writers and artists are threatened with is a continuum without end. There seems to be no space for people to express themselves without expecting a slew of unjustified threats.

However, the court in this matter declared that we are a nation that permits free exchange of ideas and liberty of thought and expression and the judgement was concluded with Voltaire’s words, “I may disapprove of what you say but I will defend to the death your right to say it”.

Author: Ada Fazal,Legal Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at  swapnils@khuranaandkhurana.com.

References:

[1](2015) 6 SCC 1

[2](1980) 1 SCC 43

Case Summary of “Ajanta Pharma Ltd. v Theon Pharmaceuticals Ltd.”

This article summarises the judgment of High Court of Bombay dated 5th May 2017 in the case Ajanta Pharma Ltd. v Theon Pharmaceuticals Ltd.”.

FACTS:
The case has been filed before the Bombay High Court by Ajanta Pharma Ltd. (hereinafter “Plaintiff) seeking interim relief in a pharmaceutical trade mark and passing off action against Theon Pharmaceutical and Intas Pharmaceutical (hereinafter “Defendants). Initially when the lawsuit was brought, the claim of the Plaintiff was against the use of the mark “FERINTA” by the defendant which was deceptively similar to the mark of the Plaintiff i.e. “FERANTA”. Later, the defendant agreed to discontinue using the mark and it started using “INTAS’ FERINTAS”, with the letter FER in black, and the rest in a rust red color and FERINTAS set in an oval lozenge device. Now the Plaintiff has sought an injunction order against the defendants for the use of the mark “INTAS’ FERINTAS” under the provisions of the Trade Marks Act, 1999 (hereinafter “the Act).

       feranta           ferintas

ARGUMENTS ADVANCED:

The defences taken by the Defendants –

  • The first defence is also known as the ‘copycat defence’ which means that the Plaintiff has indulged in copying of another mark and therefore, they cannot take an action against the Defendants.
  • The second defence was that the Plaintiff goods were sold as a pharmaceutical drug whereas the Defendant’s goods were sold as a food or dietary supplement. The goods are different and the slightest difference in the formulation or the prescribed use is sufficient.
  • The third defence was that the Defendants were honest in adopting their mark. The Defendants have coined their mark by combining the principal ingredient and the main purpose with their corporate name. So the mark was coined as FER-INTAS from Ferrous and INTAS.
  • It was further contended that Class 05 has a wide sweep and within that class if the Plaintiff has used their mark only for pharmaceutical and never for a food supplement then there is no likelihood of confusion. Therefore, the present case falls under the ambit of Section 29(2) of the Act.The test in 29(2) is not of deceptive similarity, but of likelihood of confusion; and, therefore, if this likelihood of confusion is not established, no injunction can be granted.

The counter arguments taken by the Plaintiff –

  • The first counter argument was that the Plaintiff is not guilty of copying its mark. The mark’s registration lapsed in 1989; and it was never in use but only ever proposed to be used.
  • The second counter argument was that the goods were registered under the same class and no such sub-classification can be made to differentiate the goods. According to the Nice Classification, pharmaceuticals include dietary and meal supplements and dietetic foods adapted for medicinal use (but, importantly, do not include meal supplements and dietetic foods not for medicinal use). Also, the ingredients of both the goods are precisely the same and they serve the same purpose. Both the goods are sold to treat Anaemia.
  • It was contended that the Defendants were aware about the Plaintiff’s prior registration. Also, in an infringement action, honesty in adoption of a mark is totally irrelevant to a question of deceptive similarity.
  • It was contended that the Defendants’ mark is similar; used in relation to similar, and possibly identical goods; and results in the Defendants’ mark, or the goods under it, being associated with the Plaintiff’s mark and therefore, the goods are deceptively similar.It was further contended that the injunction is demanded on public interest and if the Defendants are allowed to use the mark it will harm the public interest.

DECISION OF THE COURT:

The Court held that –

  • The two marks have to be seen has a whole to determine if there are any chances of confusion. The test is the impression of a consumer who is of average intelligence and imperfect recollection.
  • There is no prima facie case made out against the Defendants and no injunction order can be granted.

CONCLUSION:

The Court while adjudicating on the question of whether the marks are similar or not observed that the Plaintiff’s mark is a word mark whereas the Defendant’s mark is a composite word and label mark which uses a distinctive black-and-red colour combination. Also, it serves a dual purpose: it visually and structurally distinguishes the Defendant’s product from the Plaintiff’s product, and it proclaims proprietorship and ownership in its product. The Honorable Court placed reliance on the case of JR Kapoor v Micronix India,1994 Supp (3) SCC 215 and held that the two marks have to be compared as a whole to see if there are any remotest chance of buyers and users being misguided or confused. The Court, therefore, held that the two marks have to be compared as a whole and any dissection of the mark is unacceptable.

The Court referred to the case of Indchemie Health Specialties Pvt. Ltd. v Intas Pharmaceuticals Ltd., 2015 (63) PTC 391 (Bom) observed that “Whether or not we should make fine distinctions when looking at goods that, though in the same ‘class’, are used in distinct ways is a question that would arise if one found a similarity in the marks to begin with.” The Court further observed that if the Plaintiff’s argument regarding the Nice Classification is accepted, it is clear that Class 05 does not include meal replacements, dietetic food and beverages not for medical or veterinary use. If the Defendant’s product can be proved to be such a dietetic food then it is another point of distinction.

The Court rejected the contention of harming public interest by referring to the case of Shaw Wallace & Co. Ltd. v Mohan Rocky Spring Water Breweries Ltd.2006 (4) Mh LJ 396, stating that the public is required to be protected from being deceived but that would be a point of contention when the two marks are similar. The Court rests the other counter-arguments of the Plaintiff by stating that “If no similarity is found and a prima facie is not made out, then there is no question of even having to consider the question.

The Hon’ble Court held that the mark FERANTA is not deceptively similar to the markINTAS’ FERINTAS and no prima facie case can be made out therefore no injunction can be granted against the Defendants.

Note: Several quotations from the judgement are included in this article. The complete judgment can be found here.

Author: Ankita Aseri, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.