AN ISO 9001 : 2015 CERTIFIED IPR LAW FIRM
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The Supreme Court held that it is insignificant whether the plaintiff and the defendant trade in the same field or in the same or similar products. The court laid down certain criteria to determine passing off of an unregistered trademark:
In this case relating to allegations of “V Guard” trademark infringement, the Defendants argued against the territorial jurisdiction of the Delhi High Court as Plaintiff and Defendants did not have their principal businesses in Delhi. The alleged infringing products were being offered for sale, advertised, and sold through online portals. After reviewing the facts, the Court came to the conclusion that it had the territorial jurisdiction because the product bearing the mark was advertised and sold in Delhi through online means and held that, if some part of cause of action has arisen at a place where the Plaintiff has its branch/subordinate office, Courts at that place will have jurisdiction to entertain a suit against infringement and passing off. In other words, the occurrence of cause of action or any part thereof, at a place, is held to be a determining factor, both under Section 20 CPC, and Section 134 of the Trade Marks Act, to attract jurisdiction of the court at such place. ”
The Plaintiff, engaged in the business since 1948, was a leading manufacturer and supplier of incense sticks and other allied products. It held several trademarks, of which the mark ‘CYCLE’ was in dispute in this case. The Defendant herein adopted the mark ‘CYCLE’ concerning edible oil. Plaintiff claimed that the mark was immensely popular and owing to its wide turnover and extensive sales and promotional activities, the trademark CYCLE was a well-known mark. The Plaintiff filed the suit under Sections 27, 28, 29, 134 and 135 of Trade Marks Act, 1999 and claimed that Defendant intended to take undue advantage of its reputation and goodwill. It was further claimed that such use caused unwarranted confusion among the public and amounted to clear infringement of Plaintiff’s registered trademark.
The Court stated that the burden was on the Plaintiff to prove (i) its reputation in India; (ii) that the Defendant was using the mark without due cause; (iii) that by using the mark without cause the Defendant took unfair advantage, or it was detrimental to the distinctive character or reputation of the Plaintiff’s registered trademark.
The Court found that the Plaintiff proved only reputation regarding goods related to incense sticks and failed to prove that the Defendant was using the mark without due cause or taking unfair advantage. Further, no evidence was led by Plaintiff to show that the use of the mark by the Defendant was detrimental to or caused dilution to the Plaintiff’s reputation. The Court noted that though the mark CYCLE was a common household item and a generic word the distinctiveness acquired by the Plaintiff was restricted to the goods for which it had registration, and it could not obtain a monopoly over the word or claim exclusive right across other classes of goods. In view of the findings the Court dismissed the suit.
The Apex Court, in the instant case, set aside an interim order passed by the Madras High Court, which held that copyrighted material cannot be broadcasted without prior notice as per Rule 29(4) of the Copyright Rules, 2013. The High Court had modified specific provisions of the Rule and applied it to the broadcasters, by opining that the Rule lacked flexibility and created difficulties for the broadcasters. The mandate to furnish the particulars in the notice was revised to fifteen days as against 24 hours. Moreover, the High Court rendered the second proviso under the Rule regarding prior notice as a mere routine procedure instead of an exception loosening the grips on broadcasters. The Petitioner pointed out that this modification would be applicable pan-India and create disparity regarding the Rule. Various landmark cases were relied on by the Petitioner in establishing the settled principle of law, which prohibited the judiciary from modifying or rewriting the words in a Statute while interpreting the law. While setting aside the interim order, the Supreme Court opined that the Courts were not empowered to revise or rewrite the provisions of a Statute by way of judicial review. Emphasis was laid on the fact that the powers to make and rewrite laws vested with the Legislature. Furthermore, the Court did not deliberate on the merits of the respondent’s submission concerning the validity of Rule 29(4).
Smt. Shumita Deb, the Plaintiff, daughter of late singer, Probodh Chandra Dey, popularly known as Manna Dey filed a suit against Saregama India Ltd. (Defendant No. 1) and Sony DADC Manufacturing Pvt. Ltd. (Defendant No. 2) seeking perpetual and mandatory injunction, and damages for infringement of copyright of 14 songs sung by her father. The Plaintiff claimed that Manna Dey held copyright over the 14 songs in the music album, which the Defendant No. 1 infringed by wrongfully reproducing, manufacturing, marketing and distributing as the CD album with the infringing songs.
The Defendant No. 1 proved before the Court that Manna Dey only sang the 14 songs, out of which he composed 2 songs. Manna Dey assigned the rights to those 2 songs to the Defendant No. 1 by an agreement to that effect and received the royalties. Out of 14, 4 songs were part of a cinematographic film, making the producer the copyright owner. The Defendant No. 2 manufactured and distributed the CD albums through an exclusive licensing agreement between the Defendants, for songs/musical works that were owned by Defendant No. 1.
The Court concluded that Manna Dey was not the author of the songs, being the singer, by virtue of S.2(d)(ii) of the Copyright Act. The rights to these songs lay with the Defendants, as they owned the original plate from which the record was made. The Court denied the claim of distortion of songs u/S. 57, as well as rejected any claims to damages and dismissed the suit.
In this case the Plaintiff, the largest footwear producer in India, filed an application seeking ex-parte injunction against the Defendant. The Plaintiff alleged that the Defendant imitated Plaintiff’s products/design/trade dress/get up. The Court analyzed the case at hand from the purview of Sections 2, 4, 5, 19, 22 of the Designs Act, 2000 and various cases. It noted that mere registration of the design would not entitle a registrant of the design to claim protection. It would always be open to the Defendant to plead and set up a defence of lack of novelty or existence of prior art. The Court stated that the test in deciding such matters was: “judged solely by the eye are the essential features present or are the two substantially different”. The Court compared their products and concluded that prima facie the Defendant had copied Plaintiff’s design. It was brought to the Court’s notice that although the Defendant alleged lack of originality in Plaintiff’s design, it had applied for registration of a similar design. The Court stated that the issue of existence of prior art would be considered after evidence had been led. The Plaintiff had made out a prima facie case and the balance of convenience was in its favour, and hence, an interim injunction was granted against the Defendant.
The Plaintiff, Crompton Greaves Consumer Electricals Ltd. (CGCEL) approached the court regarding passing off/infringement of their registered design for submersible centrifugal pumps by the Defendant, CG Power and Industrial Solutions Ltd. (CGPISL) who copied the design and structure of the pump as well as used the trade name ‘CROMPTON’ or ‘CROMPTON GREAVES’ while advertising for the infringing pumps.
The Plaintiff sent a notice, post which the Defendant agreed to inform its dealers/channel partners to cease the use of the words ‘CROMPTON’ and/or ‘CROMPTON GREAVES’ on the products, or the relevant promotional material, and destroy any such packing or promotional material which infringes the rights of the Plaintiff. However, despite such communication, the products still visible on websites such as amazon.in or on Google searches – where the Defendant’s products were being sold with the Plaintiff’s trade name. More so, the Plaintiff alleged that there were communications being circulated in the market by the Defendant, deliberately showing association with the Plaintiff’s reputation.
The Defendant asserted that it claimed no right on the concerned trade names, and reaffirmed the Court that they would notify their channel partners once again to cease activities which infringed the rights of the Plaintiff, in any manner, including advertising on e-commerce websites.
The patent holder (plaintiff) in this case held two patents covering the product and process to make Chlorantraniliprole (“CTPR”), an insecticide.
The patents were species patents that were claimed in markush claims of an expired patent that covered several species along with the patents in question. When the plaintiff filed this suit for patent infringement of its CTPR patents, the defendant countered that the patents are invalid because they were covered in a prior patent. In response, the plaintiff argued that though the species were covered, they did not form part of the patent disclosure.
In this particular order, the Court dealt with an application filed by the defendant to permit launch of its products pending the suit and applications for interim injunctions. After hearing the parties, the Court came to the conclusion that such a permission may not be granted taking into consideration the fact that damages from patent infringement are not always calculable. It also pointed out that non-disclosure in a prior patent not be fatal to subsequent patents though they are covered in the earlier patent.
The Court in the case also did not see the need to permit the sale of the products in furtherance of public interest.
The Plaintiff in the case filed an infringement suit claiming that the Defendants infringed its patent and design relating to “System Device Process for Classification of Various Materials.” In response the Defendants filed an application under Order VII Rules 10 and 11 for rejection of the plaint, wherein they argued that the plaint was not maintainable based on the post-grant opposition filed by the Defendants under Section 25 of the Patents Act and that the cause of action did not arise in Delhi. The Court dismissed the application stating that the suit is maintainable though an opposition was filed as patent rights begin from the date of grant, and because the Defendants have business operations in Delhi. The Court also pointed out in the case that the Defendants do not have the option of pursuing opposition and counterclaim for revocation simultaneously as they are alternative remedies available to the Defendants.
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