Download E-Book - Manupatra

August, 2013Volume 2, Part 4A Monthly JournalAnnual Subscription ̀ 5000/-

One of surest and safest test to determine whether, or not, there has been a violation of a copyright is to see if reader, spectator or viewer after having read or seen both the works, is clearly of opinion and gets an unmistakable impression that subsequent work appears to be a copy of original.[Rediff.com India Ltd. v. E-eighteen.com Ltd.]

Trade Mark law is not intended to protect a person who deliberately sets out to take benefit of somebody else’s reputation with reference to goods, especially so when reputation extends worldwide.[Eaton Corporation & Anr. v. BCH Electric Limited]

An amendment, the effect of which destroys the accrued rights and takes away the benefit of admission, ought not to be granted.[S. Narendra Kumar & Co. v. Apricot Foods Pvt. Ltd.]

Supreme Court holds reverse payment settlement agreements to be analyzed under “rule of reason” approach[Federal Trade Commission v. Actavis, Inc. et al.]

EU High Court declares Copying levies on first Sale of Blank Media, to be no breach of EU Law

India implements Madrid system of Trade Mark registration

Biotechnological Intervention for Attaining Global Food Security[An Article by Ishita Chatterjee]

Proposed hike in Patent Fee-Bane or boon for investors[An Article by Kanisshka Tyagi]

0333

SNC-19

0369

C-18

D-9

E-7

F-47

F-53

Combo of

CAPJ + ECR

`̀̀̀̀ 5500 only

Journal Subscription 2013

Please start/renew my subscription for 2013 for the following Journals:

All subscribers of Manupatra Law Reports and Journals will get Complimentary

access for viewing journals online on www.manupatralawreports.in

Journals No. of Book Post Regd. Post 2012 bound

Issues volumes

q Chartered Accountant Practice Journal (CAPJ) 24 ` 3000# — —

q Excise & Customs Reporter (ECR)

An Indirect Tax Reporter 24 ` 3250# — —

(covering VAT, Service Tax, Customs and Excise)

q Competition Law Reports (CompLR) 11 ` 5250* — —

q Manupatra Intellectual Property Reports (MIPR) 11 ` 5000* — —

q Energy Law Reports (ELR) 11 ` 5250* — —

q COMBO of CAPJ + ECR ` 5500

* Delivery by Courier

# ` 500/- Extra for delivery by courier

Contact your Bookseller or Mail your orders to:

Manupatra Publishing Pvt. Ltd.,

B-37, Sector 1, Noida 201301, U.P.

Phone: 91-120-4014523, Toll Free No. 1-800-103-3550 or

Email: [email protected]

Or contact the nearest regional offices:• Ahmedabad 91-9376466309, e-mail: [email protected] • Allahabad 91-9307536256, e-mail:[email protected] • Bangalore 91-80-41138866, 91-9880900303, e-mail: [email protected]• Chandigarh 91-9316025155, e-mail: [email protected] • Chennai 91-44-42028689, e-mail:[email protected] • Cuttack 91-9337258725, e-mail: [email protected] • Hyderabad 91-40-65459600,91-9849447296, e-mail: [email protected] • Jabalpur 91-120-4014524, e-mail: [email protected]• Jaipur 91-9352306316, e-mai l: [email protected] • Kerala 91-9880900303, e-mai l:[email protected] • Kolkata 91-33-32945322, e-mail: [email protected] • Lucknow 91-120-4014524,e-mai l: [email protected] • Mumbai 91-22-28316114/66954757, 91-9819796372, e-mai l:[email protected] • Nagpur 91-9930514242, 91-120-4014515, e-mail: [email protected]• Noida 91-120-4014515, 91-120-4014444, e-mail: [email protected] • Patna 91-9304019078, e-mail:[email protected] • Pune 91-9762537050, e-mail: [email protected]

Order Form

SUBSCRIPTION / RENEWAL SUBSCRIPTION

Please find enclosed Cheque/Demand Draft*

No.___________________ Dated ___________ drawn

on__________________ for ` _____________ towards subscription/

renewal subscription for the year 2013 of _________________, to

be dispatched by way of book post/courier.

My particulars are as under:

Name : ____________________________________________________

Address : ____________________________________________________

____________________________________________________

City : ___________________________________Pin:_____________

Phone No.: ____________________________________________________

Email : ____________________________________________________

Date : ____________________________________________________

*Cheque/DD to be in favour of Manupatra Publishing Pvt. Ltd.Subscription/Renewal payment can also be made online atwww.manupatra.com

Please issue the Cheques/Drafts in favour of Manupatra Publishing Pvt. Ltd.

Kindly write your name and complete address with Phone Nos. on the reverse of

Cheque/DD

www.manupatra.com

MIPRMANUPATRA INTELLECTUAL PROPERTY REPORTS

Consulting Editors

A.A.Mohan Prathiba M Singh (LL.M Cantab)Mohan Associates Singh and Singh Advocates(Chennai) (Delhi)

Sunil B Krishna Nikhil KrishnamurthyKrishna & Saurastri Krishnamurthy & Co.(Mumbai) (Bangalore)

Associate Editors

Bitika Sharma Kavita Mundkur Nigam &Singh and Singh Advocates Madhumita Sen(Delhi) Krishna & Saurastri

(Mumbai)

Shwetambari RaoKrishnamurthy & Co.

(Bangalore)

®

All rights, including trademark & copyright reserved. No part of this publication may be reproducedor transmitted in any material form (including photocopying or storing it in any medium by electronicmeans and whether or not transiently or incidentally to some other use of this publication) withoutthe written permission of the copyright holder, viz. Manupatra Information Solutions Pvt. Ltd.,application for which should be addressed to it or as expressly permitted by law. Such writtenpermission must also be obtained before any part of this publication is stored in a retrieval systemof any nature. The doing of any unauthorized act in relation to a copyright work may result in botha civil claim for damages and criminal prosecution.

The publisher acknowledges that judgments are in the public domain. However, the editorial notesin the judgments along with the headnotes, references to authorities, citing references, legislations,subsidiary legislations, notes and footnotes are the copyrighted material of the publisher. All editorialinputs have been prefixed with an Ed.: or have been reflected by a change of font. The paragraphingand copyediting of the judgments contained herein are unique to this publication and may not bereflected in the original transcripts of the court. These are being done in consonance with the ManupatraHouse Style. Manupatra Publishing Pvt. Ltd. has been licenced to use aforementioned EditorialNotes and inputs.

The publisher has taken all care and effort to ensure that the information reproduced here is accurateand up-to-date. However, the publisher, owner, editor, copyright holder or printer takes noresponsibility for any inaccuracy or omission that may have inadvertently crept in or any advicerendered or accepted on the basis of this work. Under no circumstance shall the publisher, owner,editor, copyright holder or printer be liable for any direct, incidental, special and consequential lossand damage that results from the user’s reliance or non-reliance of information provided in thispublication.

The views expressed in the articles published in this Journal are those of the authors alone. Publisher,owner, editors, copyright holder does not necessarily agree with these and these should not be takento reflect either the views or the policy of this Journal or those of the organisations to which they maybelong or in which they may be employed.

This journal can be exported from India only by the publisher. Violation of this condition of sale willlead to criminal and civil prosecution.

MIPR shall be published in 11 Parts (3 Volumes).

Material published in this part is the exclusive copyright property of Manupatra Information SolutionsPvt. Ltd.

Printed and published by Priyanka on behalf ofManupatra Publishing Pvt. Ltd. from

174, Nilgiri Appartments, Alakhnanda, New Delhi-110019

© Manupatra Information Solutions Pvt. Ltd.www.manupatralawreports.in

Printed at M/s R-Tech Offset Printers 1617 A/1,Uldhanpur, Naveen Shahdara, Delhi - 110032

Editor: Priyanka

MIPR shall be published by 15th of every month. Non-receipt of part must be intimated within30 days from the date of publication. No complaint regarding non-receipt shall be entertained after30 days of publication.

For any queries regarding missing parts and change of addressplease forward your queries to:

B-37, Sector 1, Noida 201301, U.P., Ph Nos. 91 120 4014444, 4014445Toll Free No. 1800 180 3550 (for BSNL & MTNL Subscribers only)

Mon–Fri (9 am – 6 pm) or email to: [email protected]

i2013]

Manupatra Intellectual Property Reports v August 2013

Index

Section AJudgments

• Eaton Corporation & Anr. v. BCH Electric Limited 01.07.2013 ............ 0369

• Gopal Kaushik v. Gastro Pub Private Ltd. & Ors. 22.04.2013 ............ 0366

• Rediff.com India Ltd. v. E-eighteen.com Ltd. 22.07.2013 ............ 0333

• Super Cassettes Industries Ltd. v. Onkar Singh & Ors. 30.05.2013 ............ 0352

Section BSummarised Notes on Cases

• M/s. Marc Enterprises Pvt. Ltd. v.Shri Gaurav Arya Proprietor and Registrar ofTrade Marks Baudhik Sampada Bhavan 18.06.2013 ....... SNC 21

• S. Narendra Kumar & Co. v. Apricot Foods Pvt. Ltd. 29.05.2013 ....... SNC 19

• T. Varadaraj Pai v.Kiran Kumar and Registrar of Trade Marks 04.07.2013 ....... SNC 20

Section CNotes on International Cases

• The Football Association Premier League Limited v.British Sky Broadcasting Limited and Ors. .......................................................... C-17

• Federal Trade Commission v. Actavis, Inc., et al. ................................................ C-18

• Boxing Brands Limited v. Sports Direct International Plc and Ors. ............... C-20

5

Manupatra Intellectual Property Reports (MIPR)ii [Vol. 2


Section DInternational News

• Russia says no to online video piracy .....................................................................D-9

• EU High Court Declares Copying Levies on First Sale of Blank Media,to be no Breach of EU Law .........................................................................................D-9

• TPP Negotiations raises IP as an issue along with public healthand bio tech ...................................................................................................................D-9

• U.S. patent system at risk due to increasing patent litigation trolls,says RPX ..................................................................................................................... D-10

• Global Innovation Index 2013 ............................................................................... D-10

• Apple all set to navigate your car through your eyes ....................................... D-10

• Third trilateral symposium held at WIPO, Geneva ........................................... D-10

• Department of national library continues with its anti -piracy campaignalong with Microsoft ................................................................................................ D-10

• Initiative by US department of commerce on copyright policy,creativity and innovation in digital economy..................................................... D-11

• Limitation on grants of computer software by the German government ...... D-11

• EPO removes language barrier for 6 languages ................................................. D-11

Section ENational News

• Initiative taken by CGPDTM to spread IPR awareness ....................................... E-7

• India implements Madrid system of Trade Mark registration ........................... E-7

• IPR needs to be domestically developed says member of scientific advisorycommittee ...................................................................................................................... E-7

• India says no to bringing changes to its IPR regime and advices us totighten its patent laws ................................................................................................ E-8

• Patent to be sought for indigenous electrical design of Delhi metro ................. E-8

• Gujarat based IQ and immunity increasing weed bags us patent .................... E-8

• Japanese patent office grants patent to Venus remedies for its antibiotic ....... E-8

• Chidambaram conveys India’s respect towards IPR ................................................................................................................. E-9

• South Africa based pro- health group objects to placing India on us‘special 301 watch list’ ............................................................................................... E-9

6

iii2013]


Section FArticles

Biotechnological Intervention for Attaining Global FoodSecurity at page F-47

The drastic increase in the global population leads to asituation where the crop productivity could not meet therequirements of all resulting in the global food insecurity.To meet the challenge efforts have been made to utilize thecurrent technologies, including modern biotechnology, toachieve high productivity in a sustainable manner coupledwith promoting complementation of traditionaltechnologies with modern day tools could be a solution tothe problem of food security facing mankind. Utilization ofthe overall crop productivity has been drastically reduceddue to the growing urbanization, industrialization anddiminishing per capita arable lands and water resources.Hunger, poverty, high energy prices, biofuels, decliningproductivity and limited natural resource base are some ofthe challenges to food security globally. The transgenictechnology and marker assisted selection are few of thepromising tools for crop improvement leading to increasedproduction to meet the global demand and ensure foodsecurity globally.

Proposed hike in Patent Fee-Bane or boon for investorsat page F-53

DIPP is proposing a sweeping fee hike for filling patentsand prosecuting same before the patents office. The relevantnotification proposing the hike in fee proposes to levy apenalty in form of additional fee of ten percent on those whoopt to file the patent application via physical mode. Thisarticle discusses if this proposed hike in the wake of theholistic patent environment in India is justifiable or not.

Section GSpecial Feature

• Samsung v. Apple – Enforment Veto by the Us Government ........................... SF-1

7

ISHITA CHATTERJEE

Lecturer, Faculty ofLaw, AllahabadUniversity

Index

KANISSHKA TYAGI

Partner, Kaden Boriss(Corporate andCommercial Firm)

Manupatra Intellectual Property Reports (MIPR)iv [Vol. 2


Subject Index

Copyright — Infringement — Injunction sought — Entitlement to relief if any —Quantum of damages payable to Plaintiff by Defendants — Whether rights purchasedby Defendants No. 4 to 6 vide agreement dated 14th January, 2004 was for a validand bona fide consideration and if so, to what effect — Held, Plaintiff had not ledevidence to prove punitive loss. Plaintiff had merely asserted punitive loss and nodamages could be granted in absence of evidence to prove it. As for other reliefsprayed for Plaintiff, a permanent injunction against Defendants was granted fromreleasing, selling, recording, distributing, publicly performing, broadcasting or inany other manner exploiting copyright in infringing album and its underlying worksor any future album/musical/literary works of Defendant No. 3, thereby infringingPlaintiff’s copyright in it as assigned under Detailed Agreement. Defendants werealso ordered to render all accounts of profits earned with respect to infringing albumand also delivery up of all infringing materials pertaining to infringing album.

Super Cassettes Industries Ltd. v. Onkar Singh & Ors.CS (OS) NO. 805/2004

Decided On: 30.05.2013 at page 0352MANU/DE/1592/2013

Copyright — Infringement — Injunction sought — Release of fourth album —Assignment of copyright in four albums either under First Agreement or DetailedAgreement — Whether by releasing fourth album of Defendant No. 3 throughDefendant Nos. 4, 5 and 6, Defendant Nos. 1 and 2 had breached First Agreementand/or Detailed Agreement and that whether Detailed Agreement was terminated orrevoked by Defendants before release of infringing album — Held, Defendant No. 1has neither terminated nor revoked Detailed Agreement. Instead, Defendant No. 1 hasrepeatedly sought to terminate First Agreement. First Agreement ceased to exist betweenparties upon execution of Detailed Agreement, which clearly superseded all otheragreements between parties. Therefore, Detailed Agreement was still subsisting attime of release of infringing album. Since Defendant Nos. 4 to 6 had released infringingalbum in voice of Defendant No. 3 during subsistence of Detailed Agreement,irrespective of whether or not said Defendants entered into Agreement dated14th January, 2004, they had infringed upon exclusive copyright held by Plaintiff byvirtue of Detailed Agreement. Moreover, in Written Statement of Defendants No. 4 to 6,it was submitted that they purchased rights to works of Defendant No. 3 from one SJ.It could also be seen that as on 16th May, 2002, Defendant No. 2 had entered into anassignment deed with said SJ for same songs/albums that it had assigned to Plaintiff.Therefore, Defendant Nos. 1 and 2 were liable for breach of Detailed Agreement.Further, Defendant Nos. 4 to 6 were liable for infringing copyright which wasexclusively assigned to Plaintiff. As far as Defendant No. 3 is concerned, DefendantNo. 2 has placed on record, an Order of Senior Judge (Civil Division), Ludhiana dated16th August, 2003 granting an interim injunction in favour of Defendant No. 2 andagainst Defendant No. 3 finding that latter had breached ERA between them dated3rd March, 2001 and restraining Defendant No. 3 from performing any stage showwithout permission of Plaintiff. Therefore, it was clear that Defendant No. 3 has alsonot honoured ERA between them, which issue is to be finally decided by appropriateCourt. However, since Defendant No. 3 was not privy to Detailed Agreement, he couldnot be held liable for its breach or inducement to breach thereof.



v2013]

Manupatra Intellectual Property Reports v August 2013 9

Subject Index

Copyright — Infringement — Passing off — Injunction sought — Deceptive andconfusing similarity — Plaintiff alleged that Defendant was using a similar imageof Dial to analyze stock market quotes and market voices which was initially usedby Plaintiff to display prospects of a stock or a mutual fund — Further alleged thatDefendant’s use of visual tool with Dial like graphics was an attempt to pass offPlaintiffs visual tool with Dial like graphics for commercial gain on their website —Whether use of Dial was enough to bring a suit of Copyright Infringementand Passing off — Held, a detailed comparison of works of Plaintiff with that ofDefendant, on whole, led to Court’s inference that two works were not similar.Apart from fact that both Plaintiff and Defendant were using a Dial which Defendantwas entitled to use, there was no other similarity. Further tag-line of Plaintiff “Howhot is this Stock?” was not used by Defendant at all. Defendant used words “MutualFund Meter” which by no stretch of imagination could be said to be similar to tag-lineof Plaintiff. Defendant’s contention was upheld by Court and it observed thatregistration of a copyright unlike that of a Trade Mark is indeed a prima facie evidence“of the particulars entered therein”. Further registration of copyright does not saveregistrant from a charge of infringement of copyright of another and does not lendany presumption of validity to copyright of registrant. Thus, Court held that use ofDial was not enough to bring a suit of copyright infringement and passing off.Court, further, said that a Dial had been used as an instrument to display variousvariable qualities and parameters like speed, electric current, voltage, weight, etc.and therefore, Plaintiff could not claim any exclusive right to use a Dial to representstrength of its assessment made by it for purchase/sale of a stock or mutual fund.Court, also, said that law of copyright was not concerned with protection of originalideas but with expression of thoughts and it protects original or derivative workscreated by author by his own skill, labor, creativity and investment of capital. Hence,it was of opinion that since Plaintiff did not develop “Dial” as a product of his skilland labor, therefore, he could not claim copyright over it. Further Court, relyingupon case of Eastern Book Company v. D.B. Modal and R.G. Anand v. Deluxe Films, saidthat where same idea has been developed in a different manner it shows that sourcebeing is common and therefore similarities are bound to occur and in such difficultcases, Courts are required to determine whether similarities are in the fundamentalor substantial aspects of mode of expression adopted in copyrighted work and ifthey found that Defendant’s work is a literal imitation of copyrighted work, then itwould be a case copyright infringement which was not situation in present case.Thus, Plaintiff’s submission that Defendants had “adapted” Plaintiff’s work wasrejected by Court as Plaintiff’s failed to establish infringement or deceptive similaritybetween two works. Suit dismissed.

Rediff.com India Ltd. v. E-eighteen.com Ltd.C.S. (OS) No.1115/2008,


Copyright — Infringement — Suit for permanent injunction — Premature filing ofsuit — Alleged by Defendant that time frame as provided under agreement notexpired at time of filing suit — Whether suit was liable to be dismissed as beingpremature? — Held, Plaintiff had not approached this Court seeking specificperformance of agreements between parties. Further cause of action in instant casewas regarding infringement of exclusive rights assigned to Plaintiff through differentagreements executed between parties. In any event, Defendants No. 1 and 2 had notled any evidence in furtherance of their contention and thus same ought to be decidedagainst them for lack of evidence.

Manupatra Intellectual Property Reports (MIPR)vi [Vol. 2




Copyright — Infringement — Suit for permanent injunction — Validity of assignmentdeed — Whether Plaintiff and Defendant Nos. 1 and 2 did not enter into a validassignment deed dated 11th December, 2001? — Held, Plaintiff had contended thatFirst Agreement was no longer subsisting and in fact stands superseded/novatedby Detailed Agreement dated 20th July, 2002. However, it must be borne in mind thatin order to be superseded/novated, First Agreement must have been duly executedbetween parties. A mere perusal of documents placed on record shows that FirstAgreement was signed by competent persons on behalf of two parties. A copy ofFirst Agreement has also been placed on record (Exhibited as P1), which has alsobeen admitted by Defendants No. 1. Furthermore, it is not disputed that DefendantNo. 2 provided first two albums to Plaintiff under aegis of First Agreement and alsoreceived consideration there for. Moreover, Defendant Nos. 1 and 2 had not led anyevidence to assail execution of First Agreement. Therefore, it was found that DefendantNos. 1 and 2 validly entered into First Agreement dated 11th December, 2001 withPlaintiff.



Trade Mark — Infringement — Injunction sought — Alleged that Defendant wasdeliberately, fraudulently and with mala fide intentions of trading upon reputationand goodwill attached to Plaintiff’s Trade Mark CUTLER-HAMMER, CH Control &CH (label) , was using it without obtaining any consent, permission or valid license— Whether balance of convenience was in favour of Plaintiff — Held, Plaintiffs’Trade Marks CUTLER-HAMMER/CH logos were well known Trade Marks havingextra territorial goodwill and reputation worldwide. Plaintiff No. 1 had trans-borderreputation extending to India. Moreover use of identical/deceptively similar TradeMarks on part of Defendant was bound to confer an undue advantage of reputationand goodwill of Plaintiffs’ well known marks to Defendant and such use would bedetrimental to well known character and reputation thereof. Plaintiffs were registeredproprietor of Trade Mark CUTLER-HAMMER under No. 164435 in Class 09. WhereasDefendant did not have any statutory right in Trade Mark CUTLER-HAMMER/BHARTIA CUTLER-HAMMER and its variants. Plaintiffs had been using TradeMarks worldwide and there was no reason to assume that same were abandoned.Mere fact that registrations of few Trade Marks inadvertently lapsed and then nosteps were taken to reinstate said registration on account of adopting new version ofit, same was no ground to claim that Plaintiffs had abandoned Trade Marks. Thus,Plaintiffs established a prima facie case for grant of an interim injunction. Balanceof convenience was also in favour of Plaintiffs and against Defendant. Further,Plaintiffs shall suffer an irreparable loss and injury to its hard earned goodwill,reputation and business unless Defendant was restrained from continuing with itsillegal trade activities during pendency of suit. Hence, prayer made in Plaintiffs’application being I.A. No. 1204/2012 was allowed. Accordingly, Defendant, itsdealers, agents and representatives on its behalf were restrained from usingimpugned arrangement and/or mark (s) CUTLER-HAMMER, BHARTIA CUTLER-HAMMER, CH (logo) or CH CONTROL or any other mark as may be identical and/or deceptively similar to Plaintiffs’ registered Trade Mark CUTLER-HAMMER under

vii2013]


No. 164435 in Class 9 amounting to infringement thereof and also frommanufacturing and selling, offering for sale, directly or indirectly dealing in goodsincluded in Class 9 and/or any other cognate or allied goods or goods of samedescription under impugned arrangement and/or mark (s) CUTLER-HAMMER,BHARTIA CUTLER-HAMMER, CH (logo) or CH CONTROL or any other mark asmay be identical and/or deceptively similar to Plaintiffs’ Trade Mark CUTLER-HAMMER and CH (label) and from doing any other act as is likely to cause confusionand deception amounting to passing off their goods and/or business as and forgoods and/or business of the Plaintiffs. However, Defendant was granted threemonths’ time to dispose of existing stock lying with it.

Eaton Corporation & Anr. v. BCH Electric LimitedI.A. Nos. 1204 and 4318/2012 in CS (OS) Nos. 156 and 575/2012


Trade Mark — Infringement — Injunction sought — Deceptive similarity — Plaintiffis continuous user of Trade Mark “THE LAZY DOG” for its pub/lounge bar atManali — It alleged that Defendant’s mark was identical to and deceptively similarto Plaintiff’s mark — Whether Defendant’s use of said mark was a flagrantinfringement of registered Trade Mark of Plaintiff and also an attempt to trade upongoodwill of Plaintiff — Held, a perusal of registered mark of Plaintiff discloses that“THE LAZY DOG” is a prominent part of registered Trade Mark of Plaintiff and ismentioned twice, once inside circle and again prominently below it. Reputation ofPlaintiff’s bar was reflected in popular reviews given by various travel guides andalso Indian newspapers including Mumbai edition thereof. Various articles andreviews disclosed that Plaintiffs bar/lounge was highly recommended by variousreputed travel magazines and was very popular. Even popular travel websites carriedappreciative reviews. Material disclosed by Plaintiff in Plaint clearly indicated thatPlaintiff had high goodwill and reputation in services under mark“THE LAZY DOG”. Plaintiff had been carrying on business continuously from 2008at Manali and had now also commenced business in Goa. Plaintiff also has a websiteby name of www.thelazydog.in. Defendants despite service had remained absent.Prima facie, case of Plaintiff was meritorious. Prima facie, mark used by Defendantswas deceptively similar to Plaintiffs mark. Defendants could not be permitted to usemark “THE LAZY DOG” in violation of Plaintiff’s rights. Prima facie, if Defendantswere permitted to continue to use mark “THE LAZY DOG”, serious prejudice wouldbe caused to Plaintiffs reputation and goodwill apart from being in violation of theirrights. Balance of convenience was also in favor of Plaintiff. In these circumstances,ad-interim relief was granted as prayed for in Notice of Motion.

Gopal Kaushik v. Gastro Pub Private Ltd. & Ors.Notice of Motion (Lodging) No. 890 of 2013

in suit (lodging) No. 339 of 2013Decided On: 22.04.2013MANU/MH/0882/2013

Trade Mark — Infringement — Passing off — Injunction sought — WhetherDefendant was infringing registered mark CUTLER-HAMMER and that whetherDefendant was passing off its goods as that of Plaintiff — Held, Defendant wasaware of reputation and proprietorship of Plaintiff No. 1 over Trade Marks “CUTLER-HAMMER”, “CH Control” and “CH” in respect of goods of its manufacture andsale prior to its incorporation and had adopted and used identical and/or deceptivelysimilar Trade Marks with dishonest and mala fide intentions to trade upon reputationand goodwill of Plaintiffs and to earn profits in an illegal manner. By committing

11

Subject Index

Manupatra Intellectual Property Reports (MIPR)viii [Vol. 2


such acts, Defendant had not only infringed Plaintiff’s proprietary rights vested intheir registered Trade Mark “CUTLER-HAMMER” and other above mentioned TradeMarks but also committed acts of passing off their inferior quality goods and businessas and for quality products and business of Plaintiff.



Trade Mark — Infringement — Prior user — Whether Defendant being earlierpermissive user of Trademarks were entitled to claim proprietorship rights afterexpiry of period of licence agreement and were entitled to use same Trademarks —Held, Defendant had intentionally and deliberately claimed false user of marksCUTLER-HAMMER/BHARTIA CUTLER-HAMMER and CH from several decades.Defendant had claimed use of Trade Mark CUTLER HAMMER from year 1968 andother marks from year 1977 and had produced on record Sales figures along withCertificate of Chartered Accountant from year 1976-2010 which were wrong andnot substantiated by any documentary evidence. It is admitted position that duringsaid period user of Defendant was permissive user. Claiming user being proprietorduring licensing period was fraudulent and dishonest as per settled law. Even falseclaims made by Defendant as to “advertisement and promotion of products undermarks CUTLER-HAMMER/BHARTIA CUTLER-HAMMER and CH from the year1976-2011”. In most of period, Defendant’s user was permissive user. When lawwith regard to rightful owner of Trade Mark and act of ex-licensee is examined, itemerges that either during licensing period of agreement or after expiry, it is implicitand clear that ex-licensee is not entitled to claim ownership of a Trade Mark nor heis permitted by law to file an application for registration of Trade Mark in his namenor is entitled to file the petition for rectification of same very Trade Marks in whichex-licensee was using Trade Marks as a permissive user, otherwise it would amountto fraud and misrepresentation. Ex-licensee under no circumstances can declarehimself as owner of Trade Mark to claim concurrent user because as per scheme ofAct, benefit of concurrent user can be derived by a party whose user is honest andbona fide.



Ratio Decidendi

Copyright — One of surest and safest test to determine whether, or not, there hasbeen a violation of a copyright is to see if reader, spectator or viewer after havingread or seen both the works, is clearly of opinion and gets an unmistakable impressionthat subsequent work appears to be a copy of original. .

Rediff.com India Ltd. v. E-eighteen.com Ltd.C.S. (OS) No.1115/2008


Trade Mark — Trade Mark law is not intended to protect a person who deliberatelysets out to take benefit of somebody else’s reputation with reference to goods,especially so when reputation extends worldwide.

12

ix2013]




Summarised Notes on Cases

Trade Mark — An amendment, the effect of which destroys the accrued rights andtakes away the benefit of admission, ought not to be granted.

S. Narendra Kumar & Co. v. Apricot Foods Pvt. Ltd.Chamber summons No. 1319 of 2012 in suit No. 604 of 2010

Decided On: 29.05.2013 at page SNC 19MANU/MH/0604/2013

Trade Mark — Discretion under Section 12(3) can only be exercised when two ormore parties unknown to each other and unaware of the mark used by each otherinnocently adopt and use the same trade mark in respect of their respective goods ofthe same nature.

M/s. Marc Enterprises Pvt. Ltd. v. Shri Gaurav Arya Proprietor andRegistrar of Trade Marks Baudhik Sampada Bhavan

ORA/90/2005/TM/DEL and M.P. 375/2012and 3/2013 in ORA 90/2005/TM/DEL at page SNC 21

Decided On: 18.06.2013MANU/IC/0044/2013

Trade Mark — In order to prove prior use, it must be substantiated with evidence forthe claim of use.

T. Varadaraj Pai v. Kiran Kumar and Registrar of Trade MarksORA/40/2010/TM/CH and M.P. Nos. 197/2011 and 25, 320 and 399/2012

Decided On: 04.07.2013 AT PAGE SNC 20MANU/IC/0047/2013

13

Subject Index

Manupatra Intellectual Property Reports (MIPR)x [Vol. 2


a

b

c

d

e

f

g

h

i

03332013]

Manupatra Intellectual Property Reports v August 2013 1 5

MIPR 2013 (2) 0333*

IN THE HIGH COURT OF DELHI AT NEW DELHI

Rediff.com India Ltd.v.

E-eighteen.com Ltd.

C.S. (OS) NO.1115/2008DECIDED ON: 22.07.2013

Judge

Vipin Sanghi J.

Counsel

For Appellant/Petitioner/Plaintiff: Sunita Sridharan, Adv.

For Respondents/Defendant: Mrinal Bharti, Adv.

Cases referred

Eastern Book Company and Others v. D.B. Modak and Another MANU/SC/4476/2007:(2008) 1 SCC 1: MIPR2008 (1) 56: AIR 2008 SC 809: 2008 (2) ALD 1 (SC): 2008 (6)ALT 5 (SC): 2008 (56) BLJR 181: (2008) 1 CALLT 69 (SC): 1 (2008) CLT 40: (2008) 1CompLJ 1 (SC): 2008 (1) JKJ41 [SC]: 2008-2-LW278: (2008) 1 MLJ 361 (SC): 2008(36) PTC1 (SC): 2007 (14) SCALE 191(Relied on) [p. 0341, para 26 h]

R.G. Anand v. Delux Films & Others, MANU/SC/0256/1978: AIR 1978 SC 1613:(1978) 4 SCC 118: [1979] 1 SCR 218: PTC (Suppl) (1) 802 (SC)(Relied on)

[p. 0346, para 34 d]

V. Govindan v. E.M. Gopalakrishna Kone, MANU/TN/0165/1955: AIR 1955 Mad 391(Discussed) [p. 0342, para 28 i]

Acts/Rules/Orders:

Copyright Act, 1957

Section 13 [p. 0347, para 36 e]


Section 14(a) (vi) or Section 14(c)(v) [p. 0352, para 55 d]

Section 16 [p. 0348, para 43 f]


Section 2(a) [p. 0341, para 24 f]

Section 2(a)(v) [p. 0352, para 55 c]

Section 2(c) [p. 0347, para 37 f]

Section 2(o) [p. 0347, para 38 h]


Section 51 [p. 0348, para 44 g]


* MANU/DE/2202/2013

a

b

c

d

e

f

g

h

i

Manupatra Intellectual Property Reports (MIPR)0334 [Vol. 2


Trademarks Act, 1999



ISSUES AND FINDINGS

Copyright — Infringement — Passing off — Injunction sought — Deceptive andconfusing similarity — Plaintiff alleged that Defendant was using a similar imageof Dial to analyze stock market quotes and market voices which was initiallyused by Plaintiff to display prospects of a stock or a mutual fund — Further allegedthat Defendant’s use of visual tool with Dial like graphics was an attempt to passoff Plaintiffs visual tool with Dial like graphics for commercial gain on their website— Whether use of Dial was enough to bring a suit of Copyright Infringementand Passing off —

Held, a detailed comparison of works of Plaintiff with that of Defendant, on whole,led to Court’s inference that two works were not similar. Apart from fact that bothPlaintiff and Defendant were using a Dial which Defendant was entitled to use,there was no other similarity. Further tag-line of Plaintiff “How hot is this Stock?”was not used by Defendant at all. Defendant used words “Mutual Fund Meter”which by no stretch of imagination could be said to be similar to tag-line of Plaintiff.Defendant’s contention was upheld by Court and it observed that registration of acopyright unlike that of a Trade Mark is indeed a prima facie evidence “of theparticulars entered therein”. Further registration of copyright does not save registrantfrom a charge of infringement of copyright of another and does not lend anypresumption of validity to copyright of registrant.

Thus, Court held that use of Dial was not enough to bring a suit of copyright infringementand passing off. Court, further, said that a Dial had been used as an instrument todisplay various variable qualities and parameters like speed, electric current, voltage,weight, etc. and therefore, Plaintiff could not claim any exclusive right to use a Dial torepresent strength of its assessment made by it for purchase/sale of a stock or mutualfund. Court, also, said that law of copyright was not concerned with protection oforiginal ideas but with expression of thoughts and it protects original or derivativeworks created by author by his own skill, labor, creativity and investment of capital.Hence, it was of opinion that since Plaintiff did not develop “Dial” as a product of hisskill and labor, therefore, he could not claim copyright over it. Further Court, relyingupon case of Eastern Book Company v. D.B. Modal and R.G. An and v. Deluxe Films, saidthat where same idea has been developed in a different manner it shows that sourcebeing is common and therefore similarities are bound to occur and in such difficultcases, Courts are required to determine whether similarities are in the fundamental orsubstantial aspects of mode of expression adopted in copyrighted work and if theyfound that Defendant’s work is a literal imitation of copyrighted work, then it would bea case copyright infringement which was not situation in present case.

Thus, Plaintiff’s submission that Defendants had “adapted” Plaintiff’s work wasrejected by Court as Plaintiff’s failed to establish infringement or deceptive similaritybetween two works. Suit dismissed.

Ratio Decidendi:

“One of surest and safest test to determine whether, or not, there has been a violationof a copyright is to see if reader, spectator or viewer after having read or seen both theworks, is clearly of opinion and gets an unmistakable impression that subsequentwork appears to be a copy of original.”

a

b

c

d

e

f

g

h

i

03352013]


Rediff.com India Ltd. v. E-eighteen.com Ltd.(Vipin Sanghi, J.)

JUDGMENT

Vipin Sanghi, J.

1. The Plaintiff has filed the present suit alleging infringement of the Plaintiff’scopyright in the following literary and artistic work, of the Plaintiff of which thePlaintiff has obtained registration from the Registrar of Copyrights:

2. Consequently, the Plaintiff has sought the following reliefs in the suit:

a) An order for permanent injunction restraining the Defendants, their directors,officers, servants and agents and all others acting for and on their behalf fromusing or otherwise copying, selling, offering for sale, distributing, issuing tothe public, counterfeit/ unlicensed versions of the Plaintiff’s “virtual analoguerepresentation” titled as “HOW HOT IS THIS STOCK” having the features ofan analogue dial, in any manner, amounting to infringement of the Plaintiff’scopyright in the said visual analogue dial;

b) An order for permanent injunction restraining the Defendants, their directors,officers servants and agents and all others acting for and on their behalf, fromunauthorisedly using or otherwise selling, offering for sale, distributing thePlaintiff’s “virtual analogue representation titled as “HOW HOT IS THISSTOCK” having the features of an analogue dial or any deceptive variantsthereof has been applied without the license of the Plaintiff, amounting topassing off of the analogue dial of the Plaintiff;

c) An order for damages of Rs. 20,00,000 to be paid by the Defendants onaccount of infringement of copyrights, passing off and also for loss of thePlaintiff’s sales and reputation.

d) An order for rendition of accounts of profits illegally earned by the Defendantsby reason of infringement of the Plaintiff’s copy rights, including conversiondamages which are presently indeterminate, as aforesaid and by passing offas “virtual analogue representation” titled as “HOW HOT IS THIS STOCK”having the features of an analogue dial and/ or business as the services andbusiness of the Plaintiff, and a decree be passed against the Defendants in thesum of the amount so ascertained.

3. The case of the Plaintiff is that it is an online media company carrying onworldwide online business of providing news, communication, entertainment, stockmarket analysis and shopping services through the internet. The Plaintiff wasfounded in the year 1996. It has its offices in India and in the U.S.A. The Plaintiff isan online internet portal offering a wide variety of services to its users and thenature of business activities carried on by the Plaintiff is akin to a newspaper or a

a

b

c

d

e

f

g

h

i



magazine, wherein the Plaintiff publishes, inter alia, current updates and critiqueson diverse topics of interest to the worldwide community of internet users.

4. The Plaintiff’s website www.rediff.com consists of information, communicationand content services, free and paid community features and products, includinge-commerce and mobile services, and offers a variety of services including coverageof happenings in corporate India, stock market trends and analysis, regular columnsand feature stories, as well as personal finance information. It also provides stockmarket quotes, analyses and market voices, a live running commentary updatedevery few minutes through its service offering titled as “Rediff Moneywiz”. It alsoprovides the facility of personal portfolio tracker to users.

5. The Plaintiff states that it has received several prestigious awards on account ofits efficient, quick and superior quality of services offered over the years, which havebeen detailed in para 5 of the plaint. The Plaintiff claims that in the year 2006, itdeveloped an analogue image of a Dial. The main purpose behind devising the Dialwas to enable the users to reach a quick and snapshot conclusion about the prospectsof a stock or a mutual fund. The quest of this “analogue image” led to the creation ofthe Dial, having the features of a Dial – like graphics, with a description titled:

How Hot is this Stock?” The Dial helps the web user to make a judgment abouta stock or a mutual fund. The critical parameters that determine the prospectsof a stock or a mutual fund were identified by the Plaintiff, and these parameterswere put into a formula that computes and displays the prospects of a stock ora mutual fund on the Dial. The Plaintiff claims that the visual image of the Dialis unique and original to the Plaintiff, and it is the first company in India tohave developed such a visual representation. The Dial communicates anddisseminates numerically complicated data with respect to the capital marketswithin milliseconds. The Plaintiff claims that the Dial is unique to the Plaintiff,and that the Plaintiff has put in efforts to create and develop the formula andthe principle underlying the Dial, so that the same can be incorporated in itsdifferent service offerings.

6. The Plaintiff further states that it applied for registration of its copyright as aliterary cum artistic work on 8th February, 2007 which has been granted to the Plaintiffby the office of the Registrar of Copyright, New Delhi vide registration No.A-82622/58dated 28th April, 2008. The Plaintiff claims that the Dial is used on its “RediffMoneywiz” service offering since December 2006 i.e. much prior to the Defendantsdeceptive Dial.

7. The Plaintiff claims that the Defendant company runs the website“www.moneycontrol.com” – a personal finance portal. In the month of May 2008,the Plaintiff noticed on the internet that the Defendant had been infringing thePlaintiff’s copyright and passing it off as its own Dial, by displaying a deceptivelysimilar Dial – similar to that of the Plaintiff’s, which was titled as “Mutual FundMeter”, to promote their business through internet on its website “moneycontrol.com”.The Plaintiff claims that by using a deceptively similar Dial to that of the Plaintiff’sDial in the same line of business, i.e. imparting information relating to the capitalmarkets, the Defendant is infringing the Plaintiff’s copyright, as aforesaid. ThePlaintiff claims that it has suffered incalculable damage due to the aforesaid allegedinfringement of its copyright detailed hereinabove.

8. The printout of the Defendant’s webpage displaying the “Mutual Fund Meter” onits website aforesaid, in respect of mutual funds has been placed on record by the

1 8

a

b

c

d

e

f

g

h

i

03372013]


Plaintiff. I may note that though the Defendant denied the said documents duringthe course of admission/denial of documents, during the course of his submissions,learned Counsel for the Defendant has made a statement that the said display of“Mutual Fund Meter” is indeed the display as found on the Defendants website.The relevant parts of two instances of the display of the “Mutual Fund Meter” -contained on the Defendants website, are as follows:

9. The Plaintiff claims to have suffered incalculable damage to its intellectualproperty rights and business on account of the aforesaid alleged copyrightinfringement employed by the Defendant in relation to the Plaintiff’s Dial. ThePlaintiff claims that the Defendant is using the pictorial representation of a Dialwith similar colour shades, layout, features, get up etc. as that of the Plaintiff’s Dialwith the title “Mutual Fund Meter”. The Plaintiff claims that it has developed thevisual Dial and, in the process, expended huge sums of money. It is claimed that thePlaintiff’s money and skill has been expended in marketing and promoting the saidDial. The Plaintiff claims that it has achieved a large and extensive web base ofusers and has built up a very large and valued reputation and goodwill for its Dial.It is claimed that the Plaintiff has spent huge amounts of money in advertisementand incurred publicity expenditure for popularising their Dial, including thecopyright therein, on the internet.


1 9

a

b

c

d

e

f

g

h

i



10. It is further claimed that the Plaintiff’s Dial has come to be associated by thetraders and members of the public exclusively with the Plaintiff. The Dial is anartistic pictorial representation consisting of the analogue graphical image formingpart of a semi circle like representation in red and light blue colours enclosing thewords “hot” and “cold” with a needle. The Plaintiff claims that the Defendant’svisual tool with Dial like graphics is deceptively and confusingly similar to thePlaintiff’s Dial and is an attempt to pass off the Plaintiffs visual tool with Dial likegraphics for commercial gain on their website. The Plaintiff claims that the said useby the Defendant of the Dial tantamounts to infringement of the Plaintiff’s copyright,since it is not licensed by the Plaintiff to the Defendant. The Plaintiff claims that byvirtue of longstanding use, publicity and popularity attained for the visual Dial, thePlaintiff alone is entitled to lawful use of the said Dial to the exclusion of others,unless expressly authorised by the Plaintiff. The Plaintiff also claims that theDefendants had knowledge of the Plaintiff’s prior use of the Dial and its functions,and the Defendant started using the “Mutual Fund Meter” much later.

11. The case of the Plaintiff is that the users and members of the trade are likely toassume that the Defendants are related to, or approved by the Plaintiff on account ofthe infringing Dial being used by the Defendant. The confusion is exacerbated bythe fact that the class of users of both the Plaintiff’s and Defendants web services arethe same. The Plaintiff further claims that the confusion can also lead to potentialdecline in the page views and unique features of the Plaintiff’s website, therebyresulting in loss to the Plaintiff’s website as a whole.

12. In its written statement, the defence taken by the Defendant is that the Plaintiffis not the first user of the copyright. The Defendant claims that it was granted alicense on 9th February, 2006 by M/s. Infosoft Global Pvt. Ltd. in respect of which alicense fee of US$ 507.99 was paid on the said date. The Defendant claims to be theprior user. It is claimed that the Plaintiff is neither the first user of the copyright,nor the Plaintiff is entitled to any exclusive right since the Plaintiff is not theowner of the copyright in terms of Section 17 of the Copyright Act, 1957 (the Act).The Defendant, inter alia, states that the Dial like graphical representation incircular/semi circular form titled “Mutual Fund Meter” is the property of InfosoftGlobal Pvt. Ltd. The Defendant claims that Infosoft Global Pvt. Ltd. is a necessaryparty to the proceedings.

13. The Defendant further states that the colour scheme, layout and appearance ofthe Plaintiff’s Dial are distinguishable from that of the Defendant and, therefore,there is no likelihood of confusion. In the alternative, the Defendant pleads thatthere is no originality in the visual image of the Dial. The visual graphicalrepresentation of a Dial like image is common property, which has been in use forcenturies in different scientific gadgets and in graphical representation of statisticalcharts in educational institutions all over the world. The alleged virtual analoguerepresentation of a Dial is a mechanically reproduced version of a statistical piechart containing generic features, having been derived from common material sourceexisting in the public domain, which has been, and is being used, for centuries indifferent industrial/mechanical/graphical appliances.

14. The Defendant, therefore, claims that the Plaintiff cannot claim to be the proprietorin respect of the same. The presentation of an idea through a Dial like pictorialrepresentation – through which certain single/multiple/common variables aredepicted, have been depicted for centuries. The Plaintiff, by claiming copyright onthe same, is trying to usurp the proprietary right in an idea which has been a common

2 0

a

b

c

d

e

f

g

h

i

03392013]


source of inspiration to people from different streams. This cannot be permitted inpublic interest.

15. The Defendant has also denied that the Plaintiff’s Dial has come to be associatedby traders and members of the public with the Plaintiff. The Defendant states thatthe Plaintiff’s Dial is so generic and common in its orientation, get up, or lay outpattern – having been derived from common material source existing in the publicdomain for centuries, that the said Dial is not copyright worthy. The Defendantstates that there cannot be any copyright insofar as the idea of dissemination ofinformation through representation of a Dial is concerned.

16. The Plaintiff has filed its replication practically denying the averments made inthe written statement and reiterating its averments contained in the plaint.

17. On the basis of the pleadings, this Court framed the following issues in the suiton 16th July, 2010:

(i) Whether the Defendants dial “Mutual Fund Meter” infringes the Plaintiff’scopyright in the dial “How Hot Is This Stock”? OPP

(ii) Whether the Plaintiff’s dial is deceptively similar to that of the Defendant?OPP

(iii) Whether the suit is bad in law on account of non-joinder of party? OPD

(iv) Whether the Plaintiff is entitled to permanent injunction? OPP

(v) Whether the Plaintiff is entitled to damages? OPP

(vi) Whether the Plaintiff is entitled to interest? If so, at what rate and for whichperiod? OPP

(vii) Relief(s), if any.

18. The parties have led their respective evidence. The Plaintiff has produced twowitnesses to prove its case, namely, Mr. Shishir Bhate, Associate Editorial Director,Rediff.com India Ltd. as PW-1 and Mr. Rajesh Karkare, Deputy Managing Director,Design, Joint Creative Head of the Plaintiff company as PW-2. The Defendant hasled the evidence of Mr.Gautam Dubey, the authorised signatory of the Defendant asDW-1. The witnesses have exhibited several documents, which would be referred tohereinafter.

19. I have heard submissions made by learned Counsels for the parties and theirsubmissions have been focused on the first two issues, for the reason that if thePlaintiff were to fail on these two issues, the other issues-namely, Issue Nos.4, 5and 6 would also, as a consequence, be decided against the Plaintiff. So far as IssueNo.3 is concerned, no submission has been advanced by the Defendant upon whomthe onus to prove the same had been placed.

20. PW-1 Mr. Shishir Bhate states that he along with his other team members, namelyZaki Ansari and Rajesh Karkera had designed and developed an artwork, for andon behalf of the Plaintiff company. The said artwork was titled as “How Hot is thisStock?” for the Plaintiff’s web portal “Rediff Moneywiz”. The said art work comprisedof a Dial with unique and unprecedented quality/feature of demystifying complexand varied information relating to stocks/ shares/ mutual funds with such simplicitythat an average investor in one glance gets an exact idea of the strength/ weaknessof that particular stock/ mutual fund. He states that he and his team members, asaforesaid, had received due remuneration for the creation of the said artwork for thePlaintiff company. He states that vide a deed of assignment dated 19th December, 2006he and his team relinquished their rights with respect to the said artwork in favour


2 1

a

b

c

d

e

f

g

h

i



of the Plaintiff company. The said assignment deed is marked as “X-1”. He statesthat the artwork was developed and designed by himself and his team membersindependently keeping in view the basic requirements of the users of “RediffMoneywiz”.

He states that it is an original work that was created by himself and his team membersby using their skill, judgment and efforts in the area of their expertise, i.e. businessand stock market journalism and graphic design. Though he states that the Plaintiffcompany applied for registration of copyright, the application for registration ofcopyright has neither been produced in original, nor summoned from the record ofthe Registrar of Copyrights. Accordingly, copy of the same has been marked as X-2.He states that the Plaintiff company has been using the original art work since19th December, 2006. The Original Copyright Certificate granted by the CopyrightRegistry on 28th April, 2010 is exhibited as PW-1/3. He states that in the month ofMay 2008, he and his other team members noticed that the Defendant had copiedthe Plaintiff’s artistic work on their website “moneycontrol.com” and had titled thiscopied and deceptively similar Dial as “Mutual Fund Meter”. He states that it isonly the Defendant companys financial website “moneycontrol.com” which is usingthe copied image of the Plaintiff’s Dial. He states that he and his team members havegone through the ComScore list of top 146 websites and has found that only“moneycontrol.com” is using the Dial like representation, despite the fact that thePlaintiff had copyright in respect of the said artwork. In his cross-examination PW-1,inter alia, clarifies that he had not designed the artwork. However, the same hadbeen developed by him, while Mr. Rajesh Karkera had prepared the final design. Hestates that he and Mr. Zaki Ansari had assisted in the development of the design. Hestates that the main parameters to assess the stock as displayed on the website of thePlaintiff company are:

(i) The current stock price of the shares of a particular company;

(ii) The annual revenue of a given company;

(iii) The annual profit of the given company;

(iv) How many mutual funds hold the given companies stocks, and;

(v) The volume of the shares of the given company which are sold andpurchased on a given day.

21. He states that from the Dial one would roughly be able to make out whether aparticular stock is a “good buy” or “strong buy” or “sell”, or not. The Dial is a visualrepresentation of how badly or how well a particular stock is doing in the market.He admits that the visual representation by way of a Dial is quite common to variousfields like scientific gadgets, charts, mechanical appliances and graphicrepresentations. He voluntarily stated that in the field of financial investments noother such like visual representation existed originally, i.e. by way of a Dial, whichwas being done only by the Plaintiff company.

22. Mr. Rajesh Karkera, PW-2 has deposed in his affidavit by way of evidence towardsexamination-in-chief on the same lines as PW-1. In his cross-examination PW-2stated that the contribution of Mr. Zaki Ansari and Mr. Shishir Bhate in designingthe Dial was only the technical inputs received by him. The entire artwork anddesign was developed by him. He also stated that he did not receive any remunerationapart from his salary-to create the design was his job. To the question “In yourknowledge has a Dial ever been used to compare properties of a product or service inrelation to any activity?” PW-2 answered, “Dials have been in existence since time

2 2

a

b

c

d

e

f

g

h

i

03412013]


immemorial. A Dial has never been used in a financial website and that is why theDial which has been created by me simplifies the purchase of a stock.”

23. Mr. Gautam Dubey, DW-1 in his affidavit by way of examination-in- chiefdisputes the Plaintiff’s claim of being the first user of the fusion charts/ analogueDial for providing stock market quotes, analyses and market voices. He states thatthe Defendant company was granted a license on 9th February, 2006 by M/s InfosoftGlobal Private Ltd. for use of the analogue Dial for providing stock market quotes,analyses and market voices, for which a license fee of US$ 507.99 was paid by theDefendant on 9th February, 2006. A copy of the receipt issued by M/s Infosoft GlobalPrivate Ltd. is exhibited as DW-1/1. He states that M/s Infosoft Global Private Ltd.has issued letters/ certificates dated 18th July, 2008 to the Defendant confirming thelicense granted for the use of fusion charts, and also confirming that M/s InfosoftGlobal Private Ltd. is the owner and developer of the fusion charts. He states that ona comparison of the “Mutual Fund Meter” used by the Defendant with the AnalogueDial used by the Plaintiff, it is seen that the colour scheme, layout and appearanceare distinguishable. He states that the subject matter of the said graphs is specialised,and caters to highly discerning and well-educated strata of the society. He statesthat there is no originality in the visual image of the Dial, claimed to be the copyrightprotected work of the Plaintiff, as it is a common statistical pie chart and resemblesa measurement meter used across various industries and contains various genericfeatures that are common to the trade. In his cross-examination, the witness deniesthat there are similarities between the Plaintiff’s Dial and the Defendants Meter.

24. The submission of learned Counsel for the Plaintiff is that the Plaintiff’s copyrightin the literary-cum-artistic artwork aforesaid, grants exclusive rights to the Plaintiffas enumerated in Section 14 of the Act. Both-in relation to literary and artistic works,Clauses (a) and (c) of Section 14, grant the exclusive right to make any adaptation ofthe work in the owner of the copyright. By reference to the definition of the expression“adaptation” contained in Section 2(a) of the Act, it is claimed that the right to makeadaptation only means “any use of such work involving its re-arrangement oralteration”.

25. Learned Counsel for the Plaintiff has vehemently argued that it was the Plaintiffwho, for the first time, used a Dial to convey to its users its recommendations inrespect of stocks and mutual funds on “Rediff Moneywiz”. The Plaintiffsrecommendations in relation to the stock and mutual funds for buying and sellingthereof comprised of several parameters, as aforesaid. Learned Counsel submitsthat the Defendant has copied the said idea as, before the use of the Dial by thePlaintiff, neither the Defendant nor any other website providing similar serviceshave used the image of a Dial to project the recommendations of the experts whether,or not, to buy/sell a particular stock or mutual fund.

26. Learned Counsel for the Plaintiff has sought to place reliance upon the decisionof the Supreme Court in Eastern Book Company and Others v. D.B. Modak and Another1,2008 (1) SCC 1 and, in particular on paragraph 14 thereof, wherein the Courtobserved:

1 Ed.: MANU/SC/4476/2007: MIPR2008 (1) 56: AIR 2008 SC 809: 2008 (2) ALD 1 (SC):2008 (6) ALT 5 (SC): 2008 (56) BLJR 181: (2008) 1 CALLT 69 (SC): 1 (2008) CLT 40: (2008)1 CompLJ 1 (SC): 2008 (1) JKJ41 [SC]: 2008-2-LW278: (2008) 1 MLJ 361 (SC): 2008 (36)PTC1 (SC): 2007 (14) SCALE 191


2 3

a

b

c

d

e

f

g

h

i



14. The copyright protection finds its justification in fair play. When a personproduces something with his skill and labour, it normally belongs to him andthe other person would not be permitted to make a profit out of the skill andlabour of the original author and it is for this reason the Copyright Act, 1957gives to the authors certain exclusive rights in relation to the certain workreferred in the Act. The object of the Act is to protect the author of the copyrightwork from an unlawful reproduction or exploitation of his work by others.

27. Learned Counsel submits that since the Plaintiff is the owner of the copyright inits Dial, to create which the Plaintiff incurred substantial expense of labour, skilland money. The Plaintiff is entitled to protection of his rights in the said work, andthe Defendant cannot exploit the same by resort to some slight modification of thebasic design of the Dial. Learned Counsel submits that the word “original” does notmean that the work must be the expression of original or innovative thought. Merelybecause a Dial may have been used in the past for scientific purposes and inmechanical devices, the literary-cum-artwork of the Plaintiff does not cease to be“original”. He submits that the Act is not concerned with the originality of ideas,but with the expression of thought. The originality which is required refers to theexpression of thought. The Act does not require that the expression must be inoriginal or novel form but that the work must not be copied from another work – thatit should originate from the author. In this regard reference is made to paragraph 32of the said decision, wherein the Court, inter alia, observed:

32. The word “original” does not mean that the work must be the expression oforiginal or inventive thought. The Copyright Acts are not concerned with theoriginality of ideas, but with the expression of thought, and in the case of literarywork, with the expression of thought in print or writing. The originality whichis required relates to the expression of the thought. But the Act does not requirethat the expression must be in an original or novel form, but that the work mustnot be copied from another work—that it should originate from the author; andas regards compilation, originality is a matter of degree depending on the amountof skill, judgment or labour that has been involved in making the compilation.The words “literary work” cover work which is expressed in print or writingirrespective of the question whether the quality or style is high. The commonplacematter put together or arranged without the exercise of more than negligiblework, labour and skill in making the selection will not be entitled to copyright.The word “original” does not demand original or inventive thought, but onlythat the work should not be copied but should originate from the author. Indeciding, therefore, whether a work in the nature of a compilation is original, itis wrong to consider individual parts of it apart from the whole. For manycompilations have nothing original in their parts, yet the sum total of thecompilation may be original. In such cases the courts have looked to see whetherthe compilation of the unoriginal material called for work or skill or expense. Ifit did, it is entitled to be considered original and to be protected against thosewho wish to steal the fruits of the work or skill or expense by copying it withouttaking the trouble to compile it themselves. In each case, it is a question of degreewhether the labour or skill or ingenuity or expense involved in the compilationis sufficient to warrant a claim to originality in a compilation.

28. Learned Counsel submits that the Supreme Court referred to the decision of theMadras High Court in V. Govindan v. E.M. Gopalakrishna Kone2, AIR 1955 Mad 391,

2 Ed.: MANU/TN/0165/1955: AIR 1955 Mad 391

2 4

a

b

c

d

e

f

g

h

i

03432013]


which in turn, referred to Copinger and James on Law of Copyright. The extract fromthe said treatise is what is relied upon by learned Counsel for the Plaintiff. Para 40of the judgment in Eastern Book Company (supra), insofar as it is relevant, reads asfollows:

40. ….. ….. ….. ….. The High Court referred (at AIR p. 393, para 10) to Copingerand James on Law of Copyright wherein the law has been neatly summarisedthat:

In the case of compilations such as dictionaries, gazetteers, grammars, maps,arithmetics, almanacs, encyclopaedias and guidebooks, new publicationsdealing with similar subject-matter must of necessity resemble existingpublications, and the defence of “common source” is frequently made wherethe new publication is alleged to constitute an infringement of an earlier one.

The Court held that in law books and in books as mentioned above there isvery little amount of originality but the same is protected by law and “no manis entitled to steal or appropriate for himself the result of another’s brain, skillor labour even in such works” (AIR p. 393, para 10).

The Court further clarified that where there is a “common source”, the personrelying on it must prove that he actually went to the common source fromwhere he borrowed, employing his own skill, labour and brains and that hedid not merely copy.

29. On the other hand, the submission of learned counsel for the defendant is thatmere grant of registration of copyright to the plaintiff vide Exh. PW-1/3 does notraise any presumption in favour of the plaintiff with regard to the validity of theclaim for copyright, or with regard to its alleged infringement. Reference is made toSection 48 of the Act, and the same is compared to Section 31 of the TrademarksAct, 1999. It is argued that the Registrar of Copyrights is only prima facie evidence“of the particulars entered therein”, and documents purporting to be copies of anyentries therein, or extract therefrom-certified by the Registrar of Copyrights, areadmissible in evidence in all Courts without further proof or production of theoriginal. Therefore, the said certificate only saves the plaintiff from taking the troubleof summoning the literary-cum-artwork tendered by the plaintiff with the Registrarof Copyrights while making its claim for copyrights protection therein. Learnedcounsel submits that the Registrar of Copyrights is not concerned with the validityof the claim for copyright and, obviously, is not concerned with the claim ofinfringement of copyright which may, allegedly, take place subsequently.

30. In contrast, Section 31 of the Trade Marks Act, 1999, inter alia, states that “in alllegal proceedings relating to a trade mark registered under this Act, includingapplications under Section 57, the original registration of the trade mark and of allsubsequent assignments and transmissions of the trade mark shall be prima facieevidence of the validity thereof”. Learned Counsel submits that the grant ofregistration of a trade mark is preceded by an extensive and exhaustive search,advertisement, invitation of objections and opposition and decision on the oppositionto the trade mark, if any. The said scheme is not adopted in the case of registration ofa copyright and, therefore, registration of a copyright does not vest any presumptionof validity of a claim for copyright in the work which has been got registered underthe Act.

31. Learned Counsel for the Defendant further submits that both the witnesses of thePlaintiff PW-1 & PW-2 admitted during their cross- examination that “visual


2 5

a

b

c

d

e

f

g

h

i



representation by way of a Dial is quite common to various fields like scientificgadgets, charts, mechanical appliances and graphic representations” and “Dialshave been in existence since time immemorial. A Dial has never been used in afinancial website and that is why the Dial which has been created by me simplifiesthe purchase of a stock”. Learned Counsel submits that a Dial has been in publicdomain from times immemorial. It has been used in electrical, electronics andmechanical gadgets to display the output of a particular parameter such as voltage,current, speed, pressure, temperature, weight and time. Learned Counsel submitsthat there can be no claim of a proprietary right in an idea, i.e. the idea to use a Dial,as Dials have been used in various fields. The Plaintiff cannot claim that its idea touse a Dial for purposes of reflecting the advice of experts – founded upon certainparameters, whether or not to buy or sell a stock or mutual fund, can be protectedunder the Act as, what is protected under the Act, is not the idea but the manifestation/projection thereof.

32. Learned Counsel for the Defendant has relied upon the following observationsof the Supreme Court in Eastern Book Company (supra):

57. The Copyright Act is not concerned with the original idea but with theexpression of thought. Copyright has nothing to do with originality or literarymerit. Copyrighted material is that what is created by the author by his ownskill, labour and investment of capital, maybe it is a derivative work whichgives a flavour of creativity. The copyright work which comes into being shouldbe original in the sense that by virtue of selection, coordination or arrangementof pre-existing data contained in the work, a work somewhat different incharacter is produced by the author. On the face of the provisions of theCopyright Act, 1957, we think that the principle laid down by the CanadianCourt would be applicable in copyright of the judgments of the Apex Court.We make it clear that the decision of ours would be confined to the judgmentsof the courts which are in the public domain as by virtue of Section 52 of theAct there is no copyright in the original text of the judgments. To claim copyrightin a compilation, the author must produce the material with exercise of hisskill and judgment which may not be creativity in the sense that it is novel ornon-obvious, but at the same time it is not a product of merely labour andcapital. The derivative work produced by the author must have somedistinguishable features and flavour to raw text of the judgments delivered bythe court. The trivial variation or inputs put in the judgment would not satisfythe test of copyright of an author.

58. On this touchstone, we shall take into consideration the inputs put by theAppellants in their journal “SCC”. The Appellants have added in the copy-edited version the cross- citations to the citation(s) already given in the originaltext; added names of cases and cross-citations where only the citation of thecase is given; added citation and cross-citations where only name of the case isgiven; inserted citation in case history where only the title and year of theimpugned/earlier order is given; presented in their own style the cases whenthey are cited/repeated in the judgment; provided precise references to thequoted matter in the judgment by giving exact page and paragraph number asin the original case source/treatise/reference material; added margin headingsto quoted extracts from statutes/rules, etc., when they are missing from theoriginal text of the judgment; added the number of the section/rule/article/paragraph to the extract quoted in the original text; added the names of Judgeson whose behalf opinion given by giving expressions such as “for himself and

2 6

a

b

c

d

e

f

g

h

i

03452013]


Pathak, C.J.”, etc.; done verification of first word of the quoted extract andsupplied emphasis on such verification; added ellipsis “…” to indicate breaksin quoted extract; provided and supplied the matter inadvertently missed inquoted extracts in the original text of the judgment; completed/corrected theincomplete/incorrect case names or citations; renumbered correctly theclauses/sub-clauses in terms of the questions framed which were numberedin terms of answers to questions framed by learned Judge; changed the text asper corrigenda issued, which has been issued upon SCC Editor’s request andsuggestions; done compressing/simplification of information relating to thecase history; followed certain norms at SCC for giving case names; omitted thewords like “Section”, “Sec.”, “Rule”, etc. and given only the number of thesection/rule at the beginning of the quoted extract; made margin heading andthe first clause/sub-section or initial matter of section/rule, etc. to run-oninstead of being let to start from a fresh line; done compressing of unquotedreferends and use of *** for parts; replaced the series of dots in the raw text withellipsis; removed abbreviations such as sec., R., cl. and substituted them withfull word i.e. section, rule, clause; added hyphenation after the section/rulenumbers which have alphabets suffixed to them; applied indentation of quotedextracts; removed full stops or word “No.”; and given full forms of abbreviationsto enhance readability and clarity. In addition to the above, capitalisation anditalicisation is also made wherever necessary in the raw text; and punctuation,articles, spellings and compound words are also checked and corrected, ifrequired, in the original text.

59. The aforesaid inputs put by the Appellants in the judgments would havehad a copyright had we accepted the principle that anyone who by his or herown skill and labour creates an original work of whatever character, shallenjoy an exclusive right to copy that work and no one else would be permittedto reap the crop what the copyright owner had sown. No doubt the Appellantshave collected the material and improved the readability of the judgment byputting inputs in the original text of the judgment by considerable labour andarranged it in their own style, but that does not give the flavour of minimumrequirement of creativity. The exercise of the skill and judgment required toproduce the work is trivial and is on account of the labour and the capitalinvested and could be characterised as purely a work which has been broughtabout by putting some amount of labour by the Appellants.

60. Although for establishing a copyright, the creativity standard applies isnot that something must be novel or non- obvious, but some amount of creativityin the work to claim a copyright is required. It does require a minimal degree ofcreativity. Arrangement of the facts or data or the case law is already includedin the judgment of the Court. Therefore, creativity of SCC would only be additionof certain facts or material already published, case law published in anotherlaw report and its own arrangement and presentation of the judgment of theCourt in its own style to make it more user- friendly. The selection andarrangement can be viewed as typical and at best result of the labour, skill andinvestment of capital lacking even minimal creativity. It does not as a wholedisplay sufficient originality so as to amount to an original work of the author.To support copyright, there must be some substantive variation and not merelya trivial variation, not the variation of the type where limited ways/unique ofexpression are available and an author selects one of them which can be saidto be a garden variety. Novelty or invention or innovative idea is not the


2 7

a

b

c

d

e

f

g

h

i



requirement for protection of copyright but it does require minimal degree ofcreativity. In our view, the aforesaid inputs put by the Appellants in thecopy-edited judgments do not touch the standard of creativity required for thecopyright.

33. Learned Counsel for the Defendant has also argued that since the Dial is acommon device, there is minimal creativity involved in the creation of the Plaintiff’sDial. He submits that lack of minimal creativity, in any event, cannot be protectedunder the Act, as it lacks originality. Learned Counsel for the Defendant submitsthat, in any event, the Defendant’s Dial in its “Mutual Fund Meter” is starkly differentfrom that of the Plaintiff. He submits that in the Defendant’s projection, the Dial isnot as simple as that of the Plaintiff. It uses many more colour shades which are alsodefined to mean “avoid”, “strong sell”, “sell”, “average buy”, “buy” and “strongbuy”. The Defendant’s Dial is used with the heading “Mutual Fund Meter” and theDefendant’s work does not contain words such as “hot” or “cold”. The shape of theneedle is also distinct, and below the meter it is indicated that the said meter containsa “ranking by Crisil”. Learned Counsel for the Defendant points out that it is noteven the Plaintiff’s case that the Defendant is using the same software as that usedby the Plaintiff for generating the results as displayed in its Mutual Fund Meter.

34. Learned Counsel also places reliance upon the judgment of the Supreme Courtin R.G. Anand v. Delux Films & Others3, PTC (Suppl) (1) 802 (SC), and in particular onparagraph 46 thereof, wherein the Supreme Court culled out several legalpropositions after examining a host of case laws. The said paragraph reads asfollows:

46. Thus, on a careful consideration and elucidation of the various authoritiesand the case law on the subject discussed above, the following propositionsemerge:

1. There can be no copyright in an idea, subject-matter, themes, plots orhistorical or legendary facts and violation of the copyright in such casesis confined to the form, manner and arrangement and expression of theidea by the author of the copyrighted work.

2. Where the same idea is being developed in a different manner, it ismanifest that the source being common, similarities are bound to occur.In such a case the courts should determine whether or not the similaritiesare on fundamental or substantial aspects of the mode of expressionadopted in the copyrighted work. If the Defendant’s work is nothing buta literal imitation of the copyrighted work with some variations here andthere it would amount to violation of the copyright. In other words, inorder to be actionable the copy must be a substantial and material onewhich at once leads to the conclusion that the Defendant is guilty of anact of piracy.

3. One of the surest and the safest test to determine whether or not therehas been a violation of copyright is to see if the reader, spectator or theviewer after having read or seen both the works is clearly of the opinionand gets an unmistakable impression that the subsequent work appearsto be a copy of the original.

3 Ed.: MANU/SC/0256/1978: AIR 1978 SC 1613: (1978) 4 SCC 118: [1979] 1 SCR 218

2 8

a

b

c

d

e

f

g

h

i

03472013]


4. Where the theme is the same but is presented and treated differently sothat the subsequent work becomes a completely new work, no questionof violation of copyright arises.

5. Where however apart from the similarities appearing in the two worksthere are also material and broad dissimilarities which negative theintention to copy the original and the coincidences appearing in the twoworks are clearly incidental no infringement of the copyright comes intoexistence.

6. As a violation of copyright amounts to an act of piracy it must beproved by clear and cogent evidence after applying the various tests laiddown by the case-law discussed above.

7. Where however the question is of the violation of the copyright of stageplay by a film producer or a director the task of the Plaintiff becomes moredifficult to prove piracy. It is manifest that unlike a stage play a film has amuch broader prospective, wider field and a bigger background where theDefendants can by introducing a variety of incidents give a colour andcomplexion different from the manner in which the copyrighted work hasexpressed the idea. Even so, if the viewer after seeing the film gets a totalityof impression that the film is by and large a copy of the original play,violation of the copyright may be said to be proved.

35. Learned Counsel for the Defendant submits that the Plaintiff has lead absolutelyno evidence to establish violation of its copyright by leading any independentevidence of any actual confusion in the mind of any user or customer. He furthersubmits that no evidence to support the plea of passing of has been led by thePlaintiff.

36. Section 13 of the Copyright Act enlists the classes of works in which copyrightsubsists. These are:

a) Original literary, dramatic, musical and artistic works;

b) Cinematograph films, and;

c) Sound recording.

37. The expression “artistic work” is defined in Section 2(c) to mean:

(i) a painting, a sculpture, a drawing (including a diagram, map, chart orplan), an engraving or a photograph, whether or not any such work possessesartistic quality;

(ii) a work of architecture; and

(iii) any other work of artistic craftsmanship;(Emphasis supplied)

38. The expression “literary work” is defined in Section 2(o) to include computerprogrammes, tables and compilations including computer data bases. Therefore, forcopyright to subsist in literary, dramatic, musical and artistic works, the same hasto be original.

39. Section 14 of the Copyright Act states that copyright is an exclusive right, subjectto the provisions of the Act, to do or authorise the doing of the acts enumerated in thesaid section, in respect of a work or any substantial part thereof.

40. In respect of a literary, dramatic or musical work, which is not a computerprogramme, the content of copyright is the exclusive right, subject to the provisionsof the Act, to do or authorise the doing of the following acts:


2 9

a

b

c

d

e

f

g

h

i



(i) to reproduce the work in any material form including the storing of it in anymedium by electronic means;

(ii) to issue copies of the work to the public not being copies already incirculation;

(iii) to perform the work in public, or communicate it to the public; (iv) to makeany cinematograph film or sound recording in respect of the work;

(v) to make any translation of the work;

(vi) to make any adaptation of the work;

(vii) to do, in relation to a translation or an adaptation of the work, any of theacts specified in relation to the work in sub-clauses (i) to (vi);”

(Emphasis supplied)

41. In respect of an artistic work, the content of copyright means the exclusive rightto do any of the following acts:

(i) to reproduce the work in any material form including depiction in threedimensions of a two dimensional work or in two dimensions of a threedimensional work;

(ii) to communicate the work to the public;

(iii) to issue copies of the work to the public not being copies already incirculation;

(iv) to include the work in any cinematograph film;

(v) to make any adaptation of the work;

(vi) to do in relation to an adaptation of the work any of the acts specified inrelation to the work in Sub-clauses (i) to (iv);”

42. Pertinently, the case of the Plaintiff-in relation to its literary cum artistic work, asaforesaid, is that the Defendant has made an adaptation of the said work. ThePlaintiff has not urged that the Defendant has done, or authorized the doing of anyof the other acts-enlisted above, in respect of the Plaintiffs work.

43. Section 16 of the Act states that no person shall be entitled to copyright or anysimilar right in any work, whether published or unpublished, otherwise than underand in accordance with the provisions of this Act or of any other for the time beingin force. Copyright is a statutory right and its claim and content must fall squarelywithin the four corners of the Act. There can be no copyright claimed beyond thepurview of the Act.

44. Section 51 of the Act states that copyright of the work shall be deemed to infringe,inter alia, when any person, without a license granted by the owner of the copyrightor the Registrar of Copyrights under the Act or in contravention of the conditions oflicense so granted or of any condition imposed by a Competent Authority under theAct –

(i) does anything, the exclusive right to do which is by this Act conferred uponthe owner of the copyright, or

(ii) permits for profit any place to be used for the communication of the work tothe public where such communication constitutes an infringement of thecopyright in the work, unless he was not aware and had no reasonable groundfor believing that such communication to the public would be an infringementof copyright; or

(b) when any person-

3 0

a

b

c

d

e

f

g

h

i

03492013]


(i) makes for sale or hire, or sells or lets for hire, or by way of tradedisplays or offers for sale or hire, or

(ii) distributes either for the purpose of trade or to such an extent as toaffect prejudicially the owner of the copyright, or

(iii) by way of trade exhibits in public, or

(iv) imports into India, any infringing copies of the work.(Emphasis supplied)

45. From the evidence led by the two witnesses of the Plaintiff, namely, PW-1Mr. Shishir Bhate and PW-2 Mr. Rajesh Karkare, it appears that the Plaintiff may bethe owner of the copyright in the literary cum artistic work set out in para-1 hereinabove, namely, the caption “How Hot is this Stock?” along with the graphicdescription of the semi circular Dial with a needle and the words “Cold” and “Hot”written on the two ends of the semi circle, and the colour combination of Red to Bluecolours moving from “Cold” to “Hot”.

46. The witnesses have admitted that the work in question was created in the courseof employment of the author. The first owner of the copyright is the author of thework. However, in the case of literary, dramatic or artistic work made by the authorin the course of his employment by the proprietor of a newspaper, magazine orsimilar periodical under a contract of service or apprenticeship, for the purpose ofpublication in a newspaper, magazine or similar periodical, the said proprietorshall, in the absence of any agreement to the contrary, be the first owner of thecopyright in the work insofar as the copyright relates to the publication of the workin any newspaper, magazine or similar periodical, or to the reproduction of thework for the purpose of its being so published. The web pages on the Plaintiffswebsite are akin to an electronic magazine. But, does that mean that the Plaintiff canclaim the exclusive right to use of a Dial, to the exclusion of any other person, for thepurpose of displaying its assessment/recommendation of a stock/mutual fundwith regard to its strength/weekness for sale/purchase?

47. The Act is not concerned with the original idea, but with the expression of thought.Copyright has nothing to do with originality of the idea, or literary merit. Copyrightsubsists in work which is created by the author by his own skill, labour and investmentof capital. It could be a derivative work, which has a flavour of creativity. The Plaintiffcannot claim, and does not claim to have developed the Dial for the first time. Asadmitted by the Plaintiffs witnesses, a Dial has been used as an instrument to displayvarious qualities and parameters. These, for example are speed, electric current, voltage,weight, heat, height, depth, pressure. Anything that is variable over a duration, or aspan, could be displayed by using a Dial. The Plaintiff cannot, therefore, claim anyexclusive right to use a Dial to represent the strength of its assessment/recommendationmade by it for purchase/sale of a stock or mutual fund.

48. Assuming that the Plaintiff may the first to use the Dial to make such arepresentation, it does not mean that no other person can use the Dial created byhim-and not the Dial created by the Plaintiff, to convey its own recommendation inrelation to a stock or mutual fund. What the Plaintiff is seeking, in fact, is copyrightover the idea of using a Dial to display the strength of its recommendation forpurchase/sale of a stock/mutual fund. As aforesaid, there is no copyright createdor protected by law in such an idea, even if it is accepted that it is the original idea ofthe Plaintiff to use the medium of a Dial to project its recommendation for purchase/saleof stock and mutual fund. As held in Eastern Book Company (supra), the copyright


3 1

a

b

c

d

e

f

g

h

i



work which comes into being should be original in the sense that by virtue of selection,coordination and arrangement of pre-existing data contained in the work, a work,somewhat different in character is reproduced by the author. It is not the originalityof the idea which is protected under the Act, but the expression of the thought.

49. Even though, Dial has been used for centuries, the copyright in the Dial drawncreated by the Plaintiff-with its peculiar use of colours and notations of “Cold” and“Hot” and with the literary work “How Hot is this Stock?” is the Plaintiffs originalwork, despite the fact that the Dial has been used for centuries to display variations ofproperties already mentioned above, and enumerable other properties. The words“Cold” and “Hot” are words of English language and commonly used, and the coloursused by the Plaintiff in its Dial are available in nature and commonly used. It is thecombination of all the aforesaid aspects which is original to the Plaintiff inasmuch,as, the Plaintiff has created the same, which enjoys protection under the Act. Similarly,the work of the Defendant is also its own original work with the words “Mutual FundMeter” and the representation of a semi circular Dial with needle; the use of differentcolours in different sectors of the semi-circle, and; the use of the words “avoid”, “strongsell”, “sell”, “average buy”, “buy” and “strong buy”, to represent the strength of itsrecommendation for sale/purchase of the mutual fund.

50. Pertinently, the Plaintiff does not claim that it has proprietary in the underlyingsoftware utilised by it-for arriving at its recommendation in respect of a stock/mutualfund, or that the said software has been used and exploited by the Defendant to arrive atits own recommendation with regard to sale/purchase of mutual fund. It is only theprojection of the recommendation by means of a Dial which is objected to by the Plaintiff.

51. The judgment relied upon by the Defendant in Eastern Book Company (supra) andR.G. Anand (supra) leave no manner of doubt that the claim of exclusive right to usethe Dial, to represent the strength of the recommendation for sale/purchase of stockand mutual fund is wholly misplaced. As observed in R.G. Anand (supra), where thesame idea has been developed in a different manner, it is manifest that the sourcebeing common, similarities are bound to occur. Therefore, if the Plaintiff andDefendant are both using the mechanism of a Dial for the same purpose i.e. toconvey their respective recommendation for sale/purchase of stock and mutualfund, they are bound to be similar, as the Dial is common to both. In such cases, theCourts are required to determine whether, or not, the similarities are in thefundamental or substantial aspects of the mode of expression adopted in thecopyrighted work. If the Defendants work is nothing but a literal imitation of thecopyrighted work with some variations here and there, it would amount to violationof the copyright. The Supreme Court held in R.G. Anand (supra) that one of the surestand the safest test to determine whether, or not, there has been a violation of acopyright is to see if the reader, spectator or the viewer after having read or seen boththe works, is clearly of the opinion and gets an unmistakable impression that thesubsequent work appears to be a copy of the original. Where the theme is the same,but is presented and treated differently, so that the subsequent work becomes acompletely new work, no question of violation of copyright arises. Where, however,apart from the similarities appearing in the two works, there are also material andbroad dissimilarities which negative the intention to copy the original and thesimilarities in the two works are clearly incidental, no infringement comes intoexistence. The Supreme Court further held that as violation of copyright amounts toan act of piracy, it must be proved with clear and cogent evidence after applying thevarious tests laid down by the Supreme Court.

3 2

a

b

c

d

e

f

g

h

i

03512013]


52. Pertinently, in the present case, the Plaintiff has led no independent evidenceof any independent reader, spectator or viewer, who-after having seen both theworks, formed an opinion or got an unmistakable impression that the work of theDefendant appears to be a copy of the Plaintiff work. The Court compared the twoworks, and finds that there are hardly any similarities in them. Apart from the factthat both the Plaintiff and Defendant are using a Dial – which the Defendant isentitled to use, there is no other similarity. The tag-line of the Plaintiff “How Hot isthis Stock?” is not used by the Defendant at all. The Defendant does not even usethe expression “Hot” and “Cold” to describe the recommendation for buy or sellrespectively. The Defendant uses the words “Mutual Fund Meter” which, by nostretch of imagination, can be said to be similar to the tag-line of the Plaintiff. Thegraphic display of the Dial of the parties is also quite dissimilar. The proportion ofthe diameter with the thickness of the semi circular Dial of the Plaintiff, with thatof the Defendant is not the same. The shape of the needle itself is very distinct.Whereas the needle in the Plaintiffs work touches the inner circle of the Dial, theneedle in the Defendants work pierces the smaller semi circle and ends at abouthalf of the width of the Dial itself. Whereas the Plaintiffs work primarily uses twocolours i.e. Blue and Red, the Dial drawn by the Defendant is multi-colouredranging from Red to Green. Pertinently, the colour Blue is not even used by theDefendant. The Dial of the Defendant is broken up into five sectors with fivedifferent colours, unlike the Dial used by the Plaintiff which is not shown to bebroken up with distinct sectors. Whereas the Plaintiff uses only two words “Hot”and “Cold”, the Defendant has detailed calibration of “avoid”, “strong sell”, “sell”,“average buy”, “buy” and “strong buy”.

53. The Plaintiff displays with the Dial, parameters such as price, volume, mutualfund holdings, sales, net profit and also states that the price and volume are computedon last fifteen days trading figures. The Defendant does not mention any of theseparameters. The parameters mentioned by the Defendant are entirely different. TheDefendant gives the CRISIL CPR rank of the mutual fund concerned, one year return,performance view, investment type and CRISIL CPR category, and states that theranking is done by CRISIL. It is, therefore, clear that there are many more dissimilaritiesbetween the works of the Plaintiff and the Defendant, than the singular similarityi.e. the use of the mechanism of a Dial to project the recommendation in respect of astock/mutual fund for purpose of recommending buy/sale of the same. A comparisonof the works of the Plaintiff with that of the Defendant, on the whole, does not leadto the inference or perception that the two works are similar.

54. As pointed out by learned Counsel for the Defendant, the emphasis laid by thePlaintiff on the fact that its copyright is registered is misplaced. The registration of acopyright, unlike that of a trade mark, is only prima facie evidence “of the particularsentered therein”. The said registration only serves the purpose of lending authenticityto the certified copies issued by the Registrar of Copyrights, of the entries made inthe register. Such certified copies are admissible in evidence in all courts, withoutfurther proof or production of the original. The registration of the copyright does notsave the registrant from a charge of infringement of copyright of another, and doesnot lend any presumption of validity to the copyright of the registrant, much less theregistration can be used to attack the work of another-as being an infringement ofthe copyright of the work which is registered.

55. The submission of the Plaintiff that the dial adopted by the Defendant is an,“adaptation” of the Plaintiff’s work, also has no merit. Adaptation is defined in


3 3

a

b

c

d

e

f

g

h

i



Section 2(a) to mean - in relation to a literary work or an artistic work, “the conversionof the work into a dramatic work by way of performance in public or otherwise”; inrelation to literary or dramatic work, the same means, “any abridgement of the workor any version of the work in which the story or action is conveyed wholly or mainlyby means of pictures in a form suitable for reproduction in a book, or in a newspaper,magazine or similar periodical report”. It also means - in relation to any work, “anyuse of such work involving its re-arrangement or alteration”.

The copyright of the Plaintiff in respect of its work aforesaid, is in its literary work,“How hot is the stock?” and the artistic work i.e. the graphic representation of theDial. The Plaintiff has not claimed, and cannot claim, that its literary work or artisticwork has been converted into a dramatic work. It cannot be claimed by the Plaintiffthat its literary work has been abridged by the Defendant. The Defendants workcannot be labeled as use of the Plaintiff’s work involving its re-arrangement oralteration. The Plaintiff’s work is not at all used by the Defendant. For it to be anadaptation, falling in Section 2(a)(v) of the Act, the work - of which it is claimed thatan adaptation has been made, should itself be used with rearrangement or alteration.That is not the case in hand. Therefore, reliance placed by the Plaintiff onSection 14(a)(vi) or Section 14(c)(v) of the Act is misplaced.

56. In view of the aforesaid discussion, I am of the view that the Plaintiff has failedto prove that the Defendants Dial “Mutual Fund Meter” infringes the Plaintiffscopyright in its Dial with the tagline “How Hot is this Stock?”.

The Plaintiff has also failed to prove that the Defendants Dial is deceptively similarto that of the Plaintiff. Issue Nos.1 and 2 are decided accordingly. Consequently, thePlaintiff is neither entitled to the injunction sought by it, nor entitled to claim damagesfrom the Defendant. The question of any interest being awarded to the Plaintiff,therefore, does not arise.

57. Accordingly, the suit of the Plaintiff is dismissed with costs quantified at Rs. 50,000.

MIPR 2013 (2) 0352*

IN THE HIGH COURT OF DELHI

Super Cassettes Industries Ltd.v.

Onkar Singh & Ors.

CS (OS) NO. 805/2004DECIDED ON: 30.05.2013

Judge

M.L. Mehta, J.

Counsel

For Appellant/Petitioner/Plaintiff: Said Khan and Achutan Sreekumar, Advs.

For Respondents/Defendant: Nemo

* MANU/DE/1592/2013

3 4

a

b

c

d

e

f

g

h

i

03532013]


Cases referred

Hero Honda Motors Ltd. v. Shree Assuramji Scooters MANU/DE/2501/2005: 2006 (32) PTC117 (Del): 2006 (86) DRJ 113: 125 (2005) DLT 504 (Mentioned) [p. 0365, para 44 f]

Himalaya Drug Co. v. Sumit MANU/DE/2794/2005: 2006 (32) PTC 112 (Del): 126(2006) DLT 23 (Mentioned) [p. 0365, para 44 f]

Indian Performing Rights Society v. Debashis Patnaik & Ors. MANU/DE/0675/2007:2007 (34) PTC 201 (Del): MIPR 2007 (1) 323 (Mentioned) [p. 0365, para 44 f]

L.T. Overseas Ltd. v. Gujarat Trading Co. & Anr. 2005 (31) PTC 254 (Del) (Mentioned)[p. 0365, para 44 f]

Relaxo Rubber Ltd. v. Selection Footwear & Anr. MANU/DE/0179/1999: 1999 PTC(19) 578: 1999 V AD (Delhi) 292: AIR 2000 Delhi 60: 1999 (50) DRJ 856: 81 (1999)DLT 202 (Mentioned) [p. 0365, para 44 f]

Acts/Rules/Orders:

Copyright Act, 1957


ISSUES AND FINDINGS

Copyright — Infringement — Suit for permanent injunction — Premature filing of suit— Alleged by Defendant that time frame as provided under agreement not expired attime of filing suit — Whether suit was liable to be dismissed as being premature?

Held, Plaintiff had not approached this Court seeking specific performance ofagreements between parties. Further cause of action in instant case was regardinginfringement of exclusive rights assigned to Plaintiff through different agreementsexecuted between parties. In any event, Defendant Nos. 1 and 2 had not led anyevidence in furtherance of their contention and thus same ought to be decided againstthem for lack of evidence.

Copyright — Infringement — Suit for permanent injunction — Validity ofassignment deed — Whether Plaintiff and Defendant Nos. 1 and 2 did not enterinto a valid assignment deed dated 11th December, 2001?

Held, Plaintiff had contended that First Agreement was no longer subsisting and infact stands superseded/novated by Detailed Agreement dated 20th July, 2002.However, it must be borne in mind that in order to be superseded/novated, FirstAgreement must have been duly executed between parties. A mere perusal ofdocuments placed on record shows that First Agreement was signed by competentpersons on behalf of two parties. A copy of First Agreement has also been placed onrecord (Exhibited as P1), which has also been admitted by Defendants No. 1.Furthermore, it is not disputed that Defendant No. 2 provided first two albums toPlaintiff under aegis of First Agreement and also received consideration there for.Moreover, Defendants No. 1 and 2 had not led any evidence to assail execution ofFirst Agreement. Therefore, it was found that Defendant Nos. 1 and 2 validly enteredinto First Agreement dated 11th December, 2001 with Plaintiff.

Copyright — Infringement — Injunction sought — Release of fourth album —Assignment of copyright in four albums either under First Agreement or DetailedAgreement — Whether by releasing fourth album of Defendant No. 3 throughDefendant Nos. 4, 5 and 6, Defendant Nos. 1 and 2 had breached First Agreementand/or Detailed Agreement and that whether Detailed Agreement was terminatedor revoked by Defendants before release of infringing album —

Super Cassettes Industries Ltd. v. Onkar Singh & Ors.(M.L. Mehta, J.)

3 5

a

b

c

d

e

f

g

h

i



Held, Defendant No. 1 has neither terminated nor revoked Detailed Agreement.Instead, Defendant No. 1 has repeatedly sought to terminate First Agreement. FirstAgreement ceased to exist between parties upon execution of Detailed Agreement,which clearly superseded all other agreements between parties. Therefore, DetailedAgreement was still subsisting at time of release of infringing album.

Since Defendants No. 4 to 6 had released infringing album in voice of DefendantNo. 3 during subsistence of Detailed Agreement, irrespective of whether or not saidDefendants entered into Agreement dated 14th January, 2004, they had infringedupon exclusive copyright held by Plaintiff by virtue of Detailed Agreement. Moreover,in Written Statement of Defendants No. 4 to 6, it was submitted that they purchasedrights to works of Defendant No. 3 from one SJ. It could also be seen that as on16th May, 2002, Defendant No. 2 had entered into an assignment deed with said SJfor same songs/albums that it had assigned to Plaintiff. Therefore, Defendant Nos.1 and 2 were liable for breach of Detailed Agreement. Further, Defendant Nos. 4 to 6were liable for infringing copyright which was exclusively assigned to Plaintiff. Asfar as Defendant No. 3 is concerned, Defendant No. 2 has placed on record, an Orderof Senior Judge (Civil Division), Ludhiana dated 16th August, 2003 granting aninterim injunction in favour of Defendant No. 2 and against Defendant No. 3 findingthat latter had breached ERA between them dated 3rd March, 2001 and restrainingDefendant No. 3 from performing any stage show without permission of Plaintiff.Therefore, it was clear that Defendant No. 3 has also not honoured ERA betweenthem, which issue is to be finally decided by appropriate Court. However, sinceDefendant No. 3 was not privy to Detailed Agreement, he could not be held liable forits breach or inducement to breach thereof.

Copyright — Infringement — Injunction sought — Entitlement to relief if any —Quantum of damages payable to Plaintiff by Defendants — Whether rightspurchased by Defendants No. 4 to 6 vide agreement dated 14th January, 2004 wasfor a valid and bona fide consideration and if so, to what effect —

Held, Plaintiff had not led evidence to prove punitive loss. Plaintiff had merelyasserted punitive loss and no damages could be granted in absence of evidence toprove it. As for other reliefs prayed for Plaintiff, a permanent injunction againstDefendants was granted from releasing, selling, recording, distributing, publiclyperforming, broadcasting or in any other manner exploiting copyright in infringingalbum and its underlying works or any future album/musical/literary works ofDefendant No. 3, thereby infringing Plaintiff’s copyright in it as assigned underDetailed Agreement. Defendants were also ordered to render all accounts of profitsearned with respect to infringing album and also delivery up of all infringingmaterials pertaining to infringing album.

JUDGMENTM.L. Mehta, J.

1. This is a suit for permanent injunction restraining infringement of copyright,breach of contract, inducement to breach, damages, rendition of accounts of profitsand delivery up of all infringing materials with respect to copyright in the album“Sun Nakhre Waliye”. It is pertinent to note at the very outset that the issues in theinstant suit would be governed by the Copyright Act, 1957 (Act). This is in light ofthe fact that under the erstwhile Act, the author of a literary or musical workincluded in a sound recording could sell all copyrights including the right toreceive royalties for a one-time or a lump sum consideration. The facts of the caseare as follows:

3 6

a

b

c

d

e

f

g

h

i

03552013]


The Plaintiff submits that it is a Public Limited Company incorporated under theCompanies Act, 1956 and is engaged in the business of manufacturing, production andmarketing of video cassettes (blank and recorded), CDs, televisions, 2-in-1s, tape-recordersetc. including its exclusive propriety, “T-Series” brand of Music Cassettes. And thatDefendant No. 1, Mr. Onkar Singh, is the Managing Director of the Defendant No. 2Company, M/s. Kismet Entertainment Pvt. Ltd. Defendant No. 3 is a singer/artist by thename of Swaran Singh alias Romey Gill. Defendant No. 4, Balbir Singh and DefendantNo. 5, Amarjot S. Bhasin, are the partners of Defendant No. 6, M/s. Ting Ling India.

2. The Plaintiff submits that initially the Defendants No. 2 and 3 entered into anExclusive Recording Agreement (ERA) dated 5th January, 2001 by virtue of which itwas decided that Defendant No. 2 will record the songs of Defendant No. 3 and thatall the rights to the said songs will vest with Defendant No. 2. And additionalagreement dated 28th March, 2001 was entered into between the parties, in whichDefendant No. 3 confirmed that the ERA with Defendant No. 2 was the only exclusiverecording agreement executed by him as a singer.

3. The Plaintiff further submits that it entered into an agreement dated11th December, 2001 (First Agreement) with the Defendant No. 2 stating that it willrecord four music albums with Defendant No. 3 and that all the rights in the saidalbums would be assigned to the Plaintiff. The First Agreement also provided that inthe event of any breach by Defendant No. 2, the Plaintiff would be entitled to legalremedies such as injunction, damages etc. Further, the Plaintiff submits that as perthe First Agreement, Defendant No. 2 was supposed to complete the delivery of allfour music albums within a period of three years from the date of the agreement i.e.11th December, 2004; and in no case later than 11th December, 2005.

4. As per the First Agreement, the first album, titled “Nakhre Chadi Jawani Da” washanded over to the Plaintiff by Defendant No. 2. Thereafter, the Defendant No. 2entered into an Assignment Deed dated 20th December, 2001 (First Assignment Deed),wherein the Defendant No. 2 assigned all copyrights, including the sound recordingand underlying musical and literary works in the first album of Defendant No. 3recorded for the Plaintiff. And that a lump sum consideration amount of Rs. 4,00,000(Rupees Four lacs only) was paid to Defendant No. 2 by the Plaintiff in twoinstallments and thereafter the first album was released by the Plaintiff in the market.Thereafter, the Plaintiff submits that Defendant No. 2 handed over the second albumtitled “Rang Badle Talwaran De” vide Assignment Deed dated 8th April, 2002 (SecondAssignment Deed). And that vide the Second Assignment Deed, Defendant No. 2assigned all copyrights in the second album and its underlying work to the Plaintiff,for a total and final lump sum consideration of Rs. 1,00,000 (Rupees One lac only)which was paid to Defendant No. 2 on 8th April, 2002.

5. It further submits that shortly thereafter, Defendant No. 2 delivered a third albumof Defendant No. 3 titled “Jogan Ho Gaya Ve”. Subsequently, the Plaintiff submitsthat on 20th July, 2002 it entered into a Memorandum of Understanding (MoU) withDefendant No. 2, by virtue of which it was decided that Defendant No. 2 wouldassign world rights for any future music albums produced by it for a considerationamount of Rupees One lac each. Pursuant to the said MoU, the Defendant No. 2 andthe Plaintiff entered into a Detailed Agreement dated 20th July, 2002 by which theformer agreed that:

a. The Detailed Agreement shall supersede all previous agreements betweenthe parties;

b. The Defendant will deliver six albums to the Plaintiff;


3 7

a

b

c

d

e

f

g

h

i



c. The third album i.e. “Jogan Ho Gaya Ve” which was delivered to the Plaintiffbefore entering into the MoU would be considered as the first album in theseries of six albums mentioned in the Detailed Agreement;

d. All rights whatsoever to all such albums would vest solely with the Plaintifffor the territory of the entire world;

e. As per the Detailed Agreement, the Defendant No. 2 was supposed to completethe delivery of the six albums by 20th July, 2012;

f. Defendant No. 2 would not deal with or deliver the agreed sound recordingsto any person or party and that the Plaintiff shall have the right of first refusal;

g. The Defendant No. 2 shall not claim any amounts or royalty on any otheraccount except as agreed and mentioned in Clause 6 of the Detailed Agreement;

h. In the event of any breach, the Plaintiff would be entitled to legal remediessuch as injunction, damages, etc.

6. The Plaintiff submits that in furtherance of the Detailed Agreement, it prepared aThird Assignment Deed with respect the third album which the Defendant No. 2refused to sign on 2nd November, 2002. A letter dated 8th November, 2002 regardingthe refusal to sign the Clarificatory Assignment Deed was sent to Defendant Nos.1 and 2 by the Plaintiff. In response, the Defendants No. 1 and 2 sent a letter12th November, 2002 through their advocate, claiming that the Plaintiff had not paidthe royalty for the first and second albums namely, “Nakhre Chadi Jawani Da” and“Rang Badle Talwaran De”. The notice also sought a re-negotiation of the paymentof royalty for the release of the third album that was handed over by DefendantNo. 2. The Plaintiff responded vide letter dated 19th November, 2002 stating that asand when the release of the third album was planned, the consideration amount forit would be sent to Defendant Nos. 1 and 2.

7. Subsequently, vide letter dated 11 th January, 2003 the advocate for theDefendant Nos. 1 and 2, addressed another Legal Notice intimating the Plaintiffthat they were terminating the First Agreement, dated 11th December, 2001 and falselyalleging that the Plaintiff had not made payment for release of the album ofDefendant No. 3. The Plaintiff further submits that the First Agreement dated11th December, 2001, already stood superseded in view of the Detailed Agreementdated 20th July, 2002 entered into with the Defendant No. 2.

8. It submits that under the cover of a letter dated 3rd February, 2003 the Plaintiffenclosed a demand draft for Rupees One lac towards full and final payment toDefendant No. 2, for the latest album titled “Jogan Ho Gaya Ve” (Third Album). ThePlaintiff claims that on account of clerical errors, the date on the above stated letterwas wrongly typed as 3rd January, 2003 and also wrongly mentions that the paymentwas made in respect of the First Album “Nakhre Chadi Jawani Da” instead of theThird Album, “Jogan Ho Gaya Ve”. It further clarifies that the consideration for thefirst album of Rupees Four Lakhs, was already received by Defendant No. 2 on20th December, 2001.

9. Further, the Plaintiff submits that vide letter dated 29th March, 2003, the advocate forDefendant Nos. 1 and 2 sent a reminder seeking payment for the third album. Inresponse, the Plaintiff vide letter dated 7th April, 2003 stated that the payment for thesaid album was sent under the cover of its letter dated 3rd February, 2003 clarifyingthat the payment pertained to the third album and not the first. The Plaintiff alsointimated the Defendant Nos. 1 and 2 that the payment for the third album had beenmade in full and that the said album would be released. Further, the Plaintiff submits

3 8

a

b

c

d

e

f

g

h

i

03572013]


that vide a letter dated 8th April, 2003 its advocate wrote to the advocate of DefendantNos. 1 and 2 in response to the Defendant’s legal notice dated 29th March, 2003. In thesaid letter it was clarified that the Defendants had by way of the Detailed Agreement,negotiated fresh terms under which Defendant No. 2. had agreed to assign copyrightsin the music album for Rupees One lac each. And that this fact had not beencommunicated to the advocate for the Defendant and hence the Defendants ought towithdraw their legal notice of 29th March, 2003. And that vide a letter dated 7th May,2003, in response to a fax letter dated 3rd May, 2003 sent by the Defendant No, 2, thePlaintiff had clarified that payment in full had been made for the third album and thatvide another letter dated 15th May, 2003 it requested a confirmation from DefendantNo. 2 that it received the full and final payment for the third album.

10. The Plaintiff further submits that in June 2004, it was shocked to discover thatDefendant No. 3 had released another album titled “Sun Nakhre Waliye” throughDefendant Nos. 4 to 6. Upon discovering the same, the Plaintiff’s advocate sent anotice dated 26th June, 2004 to Defendant No. 6 informing it that it has illegally andunauthorisedly recorded, released and marketed the album of Defendant No. 3, theright of which belonged exclusively to the Plaintiff. The said notice also called uponDefendant No. 6 to immediately stop manufacturing and marketing the infringingsound recordings and provide an undertaking to that effect.

11. The Plaintiff further submits that the Detailed Agreement specifies that the DefendantNo. 2 would not deliver sound recordings to another party and that the Plaintiff had theright of first refusal. It submits that the album released by Defendant No. 6 was initiallynot sent to the Plaintiff as required under Clause 7 of the Detailed Agreement, amountingto a breach thereof. The Plaintiff contends that upon a close inspection of the inlay cardof the infringing album, “Sun Nakhre Waliye”, reveals that it was released in concertwith all the Defendants including Defendant Nos. 1 and 2. The Plaintiff further submitsthat by virtue of the copyright assignment under the Detailed Agreement and Section 18of the Copyright Act, 1957 the recording, release and marketing of the infringing albumby the Defendants amounts to infringement of copyright. And on account of the saidinfringement, the Plaintiff contends to have suffered damages which are not capable ofbeing assessed in monetary terms.

12. The Plaintiff submits that the cause of action arose in June 2004 when the Plaintifffirst discovered that Defendant No. 3 had released the infringing album to DefendantNos. 4 to 6, with the active participation of Defendant Nos. 1 and 2. And that thecause action further arose on June 26, 2004 when the Plaintiff sent a legal notice toDefendant No. 6 and that it continues to arise as the infringing cassettes are stillbeing sold in the market.

13. Defendant Nos. 1 and 2, and Defendant Nos. 4 to 6 have filed separate writtenstatements. Defendants No. 1 and 2 submit that the suit is premature and that thePlaintiff has gone beyond the parameters of the Agreements entered between them.And that as per Clause 10 of the First Agreement, the answering Defendants weresupposed to deliver four master recordings of Defendant No. 3 within a period ofthree years commencing from the date of execution of the First Agreement. It wasfurther agreed that this period shall automatically be extended for another year if forany reason, the answering Defendants failed to deliver the agreed master recordingswithin the fixed period. In furtherance of the same, the answering Defendants contendthat the Plaintiff has jumped to wrong conclusions despite knowing that they werenot bound to deliver each and every master recording of the Defendant No. 3 as theFirst Agreement stipulated delivery of only four such recordings.


3 9

a

b

c

d

e

f

g

h

i



14. The Defendant Nos. 1 and 2 further submit that the Plaintiff and DefendantNo. 3 have connived against the answering Defendants and that Defendant No. 3was not allowed to override the ERA reached by him with the answering Defendants,and that he was not supposed to violate or flout the interim injunction order dated16th August, 2003 passed by the Court of the Ld. CJ JD, Ludhiana in the Civil Suitfiled by the answering Defendant, whereby the following orders was passed in theapplication for interim injunction:

...Since, the Defendant (Romey Gill) has not bothered to file its written statement,his defense stands struck off on 9th August, 2003. Application of the Plaintiff Iallowed for restraining the Defendant from performing any stage show withoutpermission of the Plaintiff firm (answering Defendant).

15. Further Defendant Nos. 1 and 2 state that paragraph 9 of the plaint is admittedas correct. However, the answering Defendants submit that the Plaintiff has neverearlier denied that right of the answering Defendants to claim and receive royaltyfrom the Plaintiff. The reply dated 19th November, 2002 to the written legal noticedated 12th November, 2002 sent by the advocate of the answering Defendants clearlyproves that the Plaintiff never denied the right of the answering Defendants to theroyalty. Furthermore, the answering Defendants submit that the Plaintiff in its replyto the abovementioned letter did not deny the rightful claim of the Defendant to theroyalty due to them. And that they showed gross inability to make the payment ofRupees Six lacs so agreed earlier vide payment format as narrated in the FirstAgreement and insisted upon reducing the amount to Rupees One lac plus royaltyalleging that being a religious album, the Plaintiff will be unable to reap usualprofits.

16. Defendant Nos. 1 and 2 admit that they delivered the third album of DefendantNo. 3 to the Plaintiff, but deny that they entered into the Detailed Agreement withthe Plaintiff, and that the said Detailed Agreement was forged and fabricated. Theanswering Defendants state that the Detailed Agreement was in fact meant for newartistes, and that the Defendant No. 3 was not a new artist who was already boundwith the answering Defendants for a period of 5 years by the agreement dated5th January, 2001. And thus, there was no question of the answering Defendants toprovide the music of Defendant No. 3 to the Plaintiff for a period of ten years as perthe Detailed Agreement. This fact is further corroborated by the MoU dated20th July, 2002.

17. The answering Defendants further contend that the contents of the DetailedAgreement are not enforceable as one of its pages (Pg No. 4) is not signed and thatfurther illegality has been played by the Plaintiff which is apparent from the factthat in paragraph 5 of the Detailed Agreement, the Plaintiff has made materialadditions on its own in the shape of ‘Note’ above the signatures of Defendant Nos. 1and 2. The answering Defendants also claim that the alleged agreement is alsowithout consideration because it is not supported by a duly acknowledged receipt.The answering Defendants further add that they informed the Plaintiff vide letterdated 8th April, 2002 about the completion of a third album which was dulyacknowledged by a reply dated 18th April, 2002. Thereafter, the third master albumwas sent to the Plaintiff under the title “Jogan Ho Gaye Ve” on 30th May, 2002 by theanswering Defendants, but the Plaintiff had failed to make any album despite anumber of requests and reminders made by the answering Defendants.

18. The answering Defendants admit that they sent a letter dated 11th January, 2003through its advocates intimating the Plaintiff that they were terminating the First

4 0

a

b

c

d

e

f

g

h

i

03592013]


Agreement. The answering Defendants submit that this letter was sent due to thelong and unexplained delay on the part of Plaintiff in releasing the third album andsubsequent payment of royalty. They further submit that the Plaintiff hadtelephonically informed them that the DD sent on 3rd February, 2003 of Rupees Onelac relates to the royalty for the first album. However, they submit that the Plaintifflater on mala fidely termed the said payment as consideration against the thirdalbum.

19. Defendant Nos. 1 and 2 further submit that they are not bound to deliver thealbums of Defendant No. 3 to the Plaintiff exclusively. They further submit thatinformation qua the fourth album titled “Sun Nakhre Waliye” (infringing album) ofDefendant No. 3 was conveyed by fax on 28th August, 2003 to the Plaintiff andthereafter on 20th October, 2003 three CDs thereof were sent by Courier to the Plaintiff.However, no reply was received by the answering Defendants.

20. A written statement was also filed by Defendant Nos. 4 to 6. They submit that therights of the infringing album were purchased by them from one Sh. Sukveer Jawandavide agreement dated 14th January, 2004 for a certain consideration. By virtue ofwhich, the Defendant Nos. 4 to 6 claim that they are the rightful owners of thecopyrights and that the Plaintiff has got nothing to do with it. And that on receivinga notice from this Court, the answering Defendants enquired about the allegationsfrom Sh. Sukveer Jawanda who stated that he also had purchased the rights in thealbum from Defendant No. 2 firm vide a Voice Recording Agreement dated16th May, 2002. They further submit that on reading the clauses under the FirstAgreement, it is nowhere found that Defendant No. 3 could not sing for any othercompany or firm while the said agreement was still in subsistence. And that theonly condition in the First Agreement was that four cassettes were to be supplied tothe Plaintiff for marketing. They further submit that no notice was sent to them bythe Plaintiff regarding the release of the infringing album.

21. The following issues were framed for trial vide order dated 9th May, 2006:

(1) Whether the suit is liable to be dismissed as being premature? OPD 1 &2

(2) Whether the Plaintiff and Defendants No. 1 and 2 did not enter into a validassignment deed dated 11th December, 2001? OPD 1&2

(3) Whether the Plaintiff is the owner of the copyrights of the songs in the fouralbums entitled “Nakhra Chadi Jawani Da”, “Rang Badle Talwaran De”,“Jogan Ho Gaya Ve” and “Sun Nakhre Waliya” produced by Defendant No. 2and performed by Defendant No. 3 under the assignment Agreement dated11th December, 2001? OPP

(4) Whether the Plaintiff is the owner of the entire copyright of the songs in sixalbums to be produced by Defendant No. 2 and performed by Defendant No. 3under the assignment Agreement dated 20th July, 2002? OPP

(5) Whether the third music album entitled “Jogan Ho Gaya Ve” delivered byDefendant No. 2 was to be considered as the first album under the assignmentAgreement dated 20th July, 2002? OPP

(6) Whether by releasing the fourth album entitled “Sun Nakhre Waliye” theDefendants have infringed the copyright vesting with the Plaintiff? OPP

(7) Whether by releasing the fourth album of Defendant No. 3 entitled “SunNakhre Waliye” through Defendant Nos 4, 5 and 6, Defendant Nos. 1 and 2have breached the assignment Agreement dated 11th December, 2001 and/or20th July, 2002? OPP


4 1

a

b

c

d

e

f

g

h

i



(8) Whether by releasing the fourth album of Defendant No. 3, entitled“Sun Nakhre Waliye” Defendant Nos. 4, 5 and 6 have induced DefendantNos. 1 and 2 to breach the assignment Agreement dated 20th July, 2002?OPP

(9) Whether the assignment of copyright under the assignment agreement dated11th December, 2001 has been revoked by Defendant No. 2’s letter dated11th January, 2003. OPD2

(10) If issues 4 to 6 are answered in the affirmative, what relief is the Plaintiff,entitled to? OPP

(11) The quantum of damages payable to the Plaintiff by the Defendants? OPP

(12) Whether the rights purchased by Defendants No. 4 to 6 vide agreementdated 14th January, 2004 is for a valid and bona fide consideration and if so, towhat effect? OPD 4 to 6.

(13) Whether the agreements dated 5th January, 2001; 3rd March, 2001; and28th March, 2001 entered into between Defendants No. 1 and 3 are validagreements and if so, their effect? OPD 1

(14) Whether the agreement dated 20th July, 2002 has been forged by the Plaintiffor anyone acting on the behest of the Plaintiff? OPD 1 and 2.

(15) Relief.

22. Vide an Order dated 18th January, 2005 the Defendant No. 3 has been proceededex-parte. Right of the Defendants to lead evidence was closed vide Order dated5th November, 2012. Mr. Devender Kumar Kakkar, Deputy General Manager andConstituted Attorney of the Plaintiff company was examined as PW1. Further, videOrder dated 2nd August, 2004 this Court appointed a Local Commissioner to visit thepremises of Defendant No. 6 and to make an inventory of inlay cards, number ofcassettes, CDs of the infringing album by Defendant No. 3.

23. I have heard the Ld. Counsel for the Plaintiff and have perused through therecords as well as the Report of the Local Commissioner dated 4th August, 2004.Issue-wise findings are as recorded below.

Issue No. 1:

24. The first issue addresses the preliminary objection taken by the DefendantNos. 1 and 2 contending that the instant suit was filed by the Plaintiff prematurely.In their written statement, Defendants Nos. 1 and 2 referred to Clause (3) of theAgreement dated 11th December, 2001 (First Agreement). The First Agreement isplaced on record at Exh. P1 and Clause (3) reads thus:

(3) The assignor (Defendant No. 2) shall deliver the said four master recordings ofthe artist within a period of three years commencing from the date of execution ofthis agreement. It is agreed that in case for any reasons whatsoever the assignor failsto deliver the agreed master sound recordings in the agreed period then the periodof agreement shall automatically be extended for a further period of one year, withinwhich time the assignor shall positively hand over the master recordings to theassignees (Plaintiff)

25. The date of execution of the First Agreement was 11th December, 2001. Thus asper Clause (3) of the said agreement, the recording was to be completed by11th December, 2004 and this time could be extended by another one year i.e. till11th December, 2005. The instant suit was filed on 29th July, 2004. Thus the DefendantNos. 1 and 2 contend that since the time frame as provided under the agreement had

4 2

a

b

c

d

e

f

g

h

i

03612013]


not expired at the time of filing the suit, it is premature and ought to be dismissed onthose grounds.

26. I find no merit in this contention of the Defendants because the Plaintiff has notapproached this Court seeking specific performance of the agreements between theparties. The cause of action in the instant case is regarding infringement of exclusiverights assigned to the Plaintiff through the different agreements executed betweenthe parties. In any event, the Defendant Nos. 1 and 2 have not led any evidence infurtherance of their contention and thus the same ought to be decided against themfor lack of evidence.

Issue No. 2:

27. The second issue places the burden on Defendant Nos. 1 and 2 to prove that theydid not enter into the First Agreement dated 11th December, 2001. At this juncture, itis pertinent to note that the Plaintiff has contended that the First Agreement is nolonger subsisting and in fact stands superseded/novated by the Detailed Agreementdated 20th July, 2002. However, it must be borne in mind that in order to besuperseded/novated, the First Agreement must have been duly executed betweenthe parties. A mere perusal of the documents placed on record shows that the FirstAgreement was signed by the competent persons on behalf of the two parties. Acopy of the First Agreement has also been placed on record (Exhibited as P1), whichhas also been admitted by the Defendant Nos. 1. Furthermore, it is not disputed thatthe Defendant No. 2 provided the first two albums to the Plaintiff under the aegis ofthe First Agreement and also received consideration there for. Moreover, theDefendant Nos. 1 and 2 have not led any evidence to assail the execution of the FirstAgreement. Therefore, I find that Defendant Nos. 1 and 2 validly entered into theFirst Agreement dated 11th December, 2001 with the Plaintiff.

Issues No. 3 to 9 and 14:

28. I find that Issues No. 3 to 9 and Issue No. 14 are interrelated, since they concernthe assignment of copyright in the four albums either under the First Agreement orthe Detailed Agreement, and the infringement thereof.

29. Regarding the assignment of copyright to the Plaintiff with respect to the fouralbums i.e. “Nakhre Chadi Jawani Da”, “Rang Badle Talwaran De”, “Jogan HoGaya Ve”, and “Sun Nakhre Waliya” the relevant terms are found in Clause 8 of theFirst Agreement which reads as under:

8) The assignor (Defendant No. 2) hereby assigns all the rights including thecopyright of Literary work, Dramatic work, Musical work, CinematographFilm and that of sound recordings (hereinafter referred to as the said works) infavour of the assignee for the territories of World and Universe for the entireperiod of copyright and the assignee shall be deemed to be the owner of theaforesaid copyrights in respect of the said works, sung/performed by the artistduring the period of this agreement.

30. Further, Clause 6 of the agreement provides that at the time of executing the FirstAgreement, a consideration of Rs. 11,000 (Rupees Eleven thousand only) would bepaid to Defendant No. 2 for the assignment of copyrights as specified under Clause 8.Though the names of the albums were not mentioned in the First Agreement, itspecifies the number of albums to be produced by the Defendant No. 2.

31. On the release of the first album, i.e. “Nakhra Chadi Jawani Da”, the Plaintiffentered into the First Assignment Deed dated 20th December, 2001. A copy of the


4 3

a

b

c

d

e

f

g

h

i



said Assignment Deed is exhibited as Exh. P2 and is admitted by the DefendantNo. 1. It is seen that the said Assignment Deed does not make a mention of the FirstAgreement dated 11th December, 2001. However, in the affidavit by way of evidenceof PW1, he stated that the Assignment Deed of 20th December, 2001 was a Clarificatorydocument that corroborated the First Agreement, specifying the name of the albumintended to be assigned and also giving in detail various terms and conditions. Asper the terms of the First Assignment Deed, the consideration for the first album wasRs. 4,00,000 (Rupees Four lacs Only). The same consideration was specified underClause 9 of the First Agreement. This to my mind conclusively proves that the FirstAssignment Deed substantiates the First Agreement. Further, two Receipts/Acknowledgment Slips have been placed on record exhibited as Exh. P3 and Exh. P4.The said receipts are acknowledgment by Defendant No. 1 of payment of theconsideration of Rs. 4,00,000 (Rupees Four lacs Only) by the Plaintiff for the firstalbum, “Nakhra Chadi Jawani Da”. These two documents have also been signedand admitted by Defendant No. 1.

32. Similarly, with respect to the second album titled “Rang Badle Talwaran De”,the Plaintiffs have entered into a Second Assignment Deed dated 8th April, 2002with Defendant Nos. 1 and 2. A copy of the said Assignment Deed is exhibited asExh. P5 and the receipt/acknowledgment slip of consideration of Rs. 1,00,000(Rupees One lac only) signed by Defendant No. 1 is exhibited at Exh. P6. Both thesedocuments have also been admitted by Defendant No. 1. Therefore, it is apparent tome that the copyright with respect to the first two albums was assigned to thePlaintiff under the First Agreement.

33. Regarding the assignment of the third and fourth albums, it must be noted thatthere are two distinct contentions put forth by the parties. The Plaintiff contendsthat the First Agreement stood superseded/novated by the Detailed Agreement ason 20th July, 2002. And that the third album was to be considered as the first albumunder the Detailed Agreement, the fourth album as the second, so on and so forth.Meanwhile, Defendants Nos. 1 and 2 assail the Detailed Agreement alleging that itis forged and fabricated. And they also contend that the copyrights for the third andfourth album are not assigned to the Plaintiff under the First Agreement either, byvirtue of its termination vide Letter dated 11th January, 2003. I shall now proceed toexamine the validity of the Detailed Agreement.

34. In assailing the Detailed Agreement, Defendant Nos. 1 and 2 contend that theyexecuted it as a blank agreement assuming that it would only be used for new artistsin the future, and did not anticipate that the Plaintiff would make the works ofRomey Gill, Defendant No. 3 the subject matter of the said Agreement. The Defendanthas also stated that its initial ERA with Defendant No. 3 was only for a period of5 years, and whereas the Detailed Agreement with the Plaintiff stipulated that theDefendant No. 2 would exclusively provide all the albums of Defendant No. 3 for aperiod of 10 years. Further, the Defendants also contend that the Detailed Agreementcannot be enforced against them because page 4 of the said agreement is not signedby Defendant No. 1, and that the Plaintiff has illegally made additions in the lastpage in the form of a “Note” right above the signatures of the executing parties aswell as witnesses.

35. I have perused through the Detailed Agreement dated 20th July, 2002 which isplaced on Record as Exh. PW1/3. It is also seen that on the same date as the executionof the Detailed Agreement, Defendant No. 2 entered in to an MoU with the Plaintiff,through its Managing Director, Mr. Onkar Singh (Defendant No. 1). The said MoU is

4 4

a

b

c

d

e

f

g

h

i

03632013]


placed on record as P7, and has also been admitted by Defendant No. 1. As per thesaid MoU, the parties decided that the Defendant No. 2 will first offer their artists tothe Plaintiff for recording their albums. And only upon the Plaintiff’s written rejectionwould the Defendant be entitled to assign the copyrights to any other third party.The consideration for this assignment was agreed at Rs. 1,00,000 (Rupees One laconly) for the agreed period per master album.

36. Upon a careful examination of the Detailed Agreement, it is seen that the DefendantNo. 1 has affixed his signature at the bottom of all the pages of the agreement barringpage No. 4. It is also seen that the Defendant No. 1 has affixed his signature on theright hand margin of the pages of the agreement right next to clauses which eithercontain blanks that are handwritten or contain operative clauses such asconsideration. In the first page, it is seen that the agreement mentions DefendantNo. 3 as the “Artiste” in handwritten font along with the signature of DefendantNo. 1 in the margin. The third page stipulates that consideration of the six albums tobe at Rs. 1,00,000 (Rupees One lac Each) and also states:

The Assignors shall not claim any amount or royalty on any other account from theAssignees except as agreed and mentioned in this Agreement.

Defendant No. 1 has affixed his signature against the paragraph containing theconsideration clause as well.

37. As contended by the Defendants, there is no signature on the fourth page of theagreement. However, the fifth and last page of the agreement is duly signed by theexecuting parties as well as the witnesses. The fifth page also contains a note rightabove the signatures of the parties, stating:

Note: It is clarified that after the release of album “Nakhra Chadhi Jawani Da”a meeting was held and the Assignor, in view of previous market conditions,has renegotiated the consideration amount and has now agreed to charge theconsideration amount of each album as detailed in Clause 6 of this agreement.The parties have agreed that this agreement shall supersede all otheragreements including agreement dated 11th December, 2001 and the Masterhanded over by the Assignor shall be deemed to be under Clause 6(a) of thisAgreement.

38. In the absence of the evidence from the witnesses as well as the signatories of theDetailed Agreement, I am left with no other option but to rely upon the conduct ofthe parties as well as other correspondences between them, to determine the veracityof the Detailed Agreement. At the outset, it must be noted that the First Agreementstipulated that Defendant Nos. 1 and 2 shall deliver four albums in the voice ofDefendant No. 3 for the following consideration:

a. First Album-Rupees Four Lakhs

b. Second Album-Rupees Six Lakhs

c. Third Album-Rupees Eight Lakhs

d. Fourth Album-Rupees Ten Lakhs

However, it is pertinent to note that though the Plaintiff paid a consideration of fourlacs for the first album, as agreed; there was a renegotiation of the consideration forthe subsequent album. This is further evidenced by the fact that the partiesrenegotiated the consideration for the second album vide the Second AssignmentDeed dated 8th April, 2002. The “Note” mentioned in the final page of the DetailedAgreement is also in consonance with the renegotiation. I am also inclined to reject


4 5

a

b

c

d

e

f

g

h

i



the argument of the Defendant that the MoU was only executed with respect to newartists. The MoU does not stipulate anywhere that it was would govern only newartists. In any event, the First Agreement is superseded/novated by the DetailedAgreement, which albeit was entered in pursuance of the MoU, but is a separatecontract by itself. Moreover, the Detailed Agreement was executed on the same dateas the MoU. From the aforesaid observations, it is apparent to me that the DetailedAgreement was validly executed, thereby superseding/novating the First Agreement.And therefore, I find that the copyrights for six albums in the voice of DefendantNo. 3, starting with the album “Jogan Hogaya Ve”, were assigned by Defendant No.2 to the Plaintiff.

39. In such a circumstance, it becomes apparent that the release of the album “SunNakhre Waliye” by Defendant Nos. 4 to 6 would amount to infringement of thecopyright in the said album, as assigned to the Plaintiff under the DetailedAgreement, unless it is shown that the Detailed Agreement was terminated or revokedby the Defendants before the release of the infringing album.

40. It is seen from the communications between the parties that a dispute aroseregarding the payment of consideration for the album “Jogan Hogaya Ve”. A letterwas sent by the Plaintiff to Defendant No. 1 on 8th November, 2002, informing it thata representative of the Plaintiff was sent to their office with a Clarificatory AssignmentDeed dated 2nd November, 2002 and a Demand Draft No. 263590 for payment for thethird album titled “Jogan Ho Gaya Ve”. The letter also stated that the DefendantNo. 1 did not sign the said Clarificatory Assignment Deed. This letter furtherinformed Defendant No. 1 that the Plaintiff would be releasing the third albumwithin the last week of November 2002. This letter is exhibited as Exh. P8 and it hasalso been admitted by the Defendant No. 1. It is seen that in response to this letter,the Counsel for Defendant No. 2 has served a legal notice dated November 12, 2002upon the Plaintiff stating that the Plaintiff was in violation of the First Agreement,and also called upon the Plaintiff to negotiate the payment of royalty before releasingthe third album. Thereafter, the Plaintiff has replied to this Legal Notice vide Letterdated 19th November, 2002 stating that the consideration amount shall be paid atthe time of release of the album. In response to this letter, the Counsel for DefendantNo. 1 wrote a letter dated 11th January, 2003 terminating the First Agreement dated11th December, 2001 on the grounds that the Plaintiff did not pay royalties for thealbums of Defendant No. 3 as well as one Mr. Jinder Jinda. Although, the Plaintiffhas claimed that it duly paid the royalty vide a Pay Order dated 3rd February, 2002, acopy of which is placed on record as Exh. P10.

41. From the aforesaid series of events, it is apparent to me that the Defendant No. 1has neither terminated nor revoked the Detailed Agreement. Instead, the DefendantNo. 1 has repeatedly sought to terminate the First Agreement. As noted above, I amof the opinion that the First Agreement ceased to exist between the parties upon theexecution of the Detailed Agreement, which clearly superseded all other agreementsbetween the parties. Therefore, I am inclined to find that the Detailed Agreementwas still subsisting at the time of the release of the infringing album.

42. Since Defendant Nos. 4 to 6 have released the infringing album in the voice ofDefendant No. 3 during the subsistence of the Detailed Agreement, irrespective ofwhether or not the said Defendants entered into the Agreement dated14th January, 2004, they have infringed upon the exclusive copyright held by thePlaintiff by virtue of the Detailed Agreement. Moreover, in the Written Statement ofDefendants Nos. 4 to 6, it is submitted that they purchased the rights to the works of

4 6

a

b

c

d

e

f

g

h

i

03652013]


Defendant No. 3 from one Mr. Sukhveer Jawanda. It can be seen that as on 16th May,2002, the Defendant No. 2 had entered into an assignment deed with the said Mr.Sukhveer Jawanda for the same songs/albums that it had assigned to the Plaintiff.Therefore, I find that the Defendants Nos. 1 and 2 are liable for breach of the DetailedAgreement. I also find that Defendants Nos. 4 to 6 are liable for infringing thecopyright which was exclusively assigned to the Plaintiff. As far as Defendant No.3 is concerned, Defendant No. 2 has placed on record, an Order of the Senior Judge(Civil Division), Ludhiana dated 16th August, 2003 granting an interim injunctionin favour of Defendant No. 2 and against Defendant No. 3 finding that the latter hadbreached the ERA between them dated 3rd March, 2001 and restraining DefendantNo. 3 from performing any stage show without permission of the Plaintiff. Therefore,it is clear to me that the Defendant No. 3 has also not honoured the ERA betweenthem, which issue is to be finally decided by the appropriate Court. However, sincethe Defendant No. 3 is not privy to the Detailed Agreement, he cannot be held liablefor its breach or inducement to breach thereof.

43. In the backdrop of the afore-noted findings, I find that Issues 3 to 8 along withIssue 14 are found to be in favour of the Plaintiff. I also find that it is irrelevant todetermine the outcome of Issue 9 regarding proper termination of the First Agreement,because as noted earlier, it is apparent to me that the First Agreement wassuperseded/novated by the Detailed Agreement. Similarly, I also find thatdetermination of Issues 12 and 13 are immaterial to the outcome of the instant suit.

44. Deciding Issues 10 and 15, which are regarding the relief claimed, it is seen thatthe Plaintiff has prayed for damages to the tune of Rs. 5,05,000 (Rupees Five lac FiveThousand only), contending that the Defendants cannot evade liability by way ofnot providing the accounts or leading any evidence. And specially in cases wherethe Defendants have been proceeded Ex parte and evaded submitting the accounts,the Court should impose punitive damages. The Plaintiff has relied upon the decisionof this Court in Indian Performing Rights Society v. Debashis Patnaik & Ors.1, 2007 (34)PTC 201 (Del); Himalaya Drug Co. v. Sumit2, 2006 (32) PTC 112 (Del); Relaxo RubberLtd. v. Selection Footwear & Anr.3 1999 PTC (19) 578; L.T. Overseas Ltd. v. Gujarat TradingCo. & Anr., 2005 (31) PTC 254 (Del); Hero Honda Motors Ltd. v. Shree Assuramji Scooters4,2006 (32) PTC 117 (Del).

45. Clause 16 of the Detailed Agreement entitles the Plaintiff to the following reliefsin the event of a breach:

In case of breach of any term and condition of this Agreement by the Assignors,the Assignees shall have the right to recover such damages, as may be assessedby the Assignees, from the Assignors and/or from any other party in favour ofwhom the Assignors may have assigned the rights or may have delivered theMaster-Sound Recordings In the voice of the said Artiste or have released thesaid Sound Recording(s) on their own. Claim of such damages shall be withoutprejudice to all or any other legal remedy including injunctions etc. that maybe available to the Assignees.

(Emphasis supplied)

1 Ed.: MANU/DE/0675/2007: MIPR 2007 (1) 323

2 Ed.: MANU/DE/2794/2005: 126 (2006) DLT 23

3 Ed.: MANU/DE/0179/1999: 1999 V AD (Delhi) 292: AIR 2000 Delhi 60: 1999 (50) DRJ856: 81 (1999) DLT 202

4 Ed.: MANU/DE/2501/2005: 2006 (86) DRJ 113: 125 (2005) DLT 504


4 7

a

b

c

d

e

f

g

h

i



I find that the precedents mentioned above are not applicable to the instant case,because in the instant case, the Plaintiff has not led evidence to prove punitive loss.The Plaintiff has merely asserted punitive loss and I am not inclined to grant damagesin the absence of evidence to prove it. As for the other reliefs prayed for the Plaintiff,I hereby grant a permanent injunction against the Defendants from releasing, selling,recording, distributing, publicly performing, broadcasting or in any other mannerexploiting the copyright in the album “Sun Nakhre Waliye” and its underlyingworks or any future album/musical/literary works of Defendant No. 3, therebyinfringing the Plaintiff’s copyright in it as assigned under the Detailed Agreement.I also order the Defendants to render the all accounts of profits earned with respectto the infringing album and also delivery up of all infringing materials pertaining tothe infringing album. Decree be drawn accordingly.

MIPR 2013 (2) 0366*

IN THE HIGH COURT OF BOMBAY

Gopal Kaushikv.

Gastro Pub Private Ltd. & Ors.

NOTICE OF MOTION (LODGING) NO. 890 OF 2013 IN SUIT (LODGING) NO. 339OF 2013DECIDED ON: 22.04.2013

Judge

S.J. Kathawalla, J.

Counsel

For Appellant/Petitioner/Plaintiff: Dr. Birendra Saraf i/b Rani Boazz and MeghaDhuri

For Respondents/Defendant: None

ISSUES AND FINDINGS

Trade Mark — Infringement — Injunction sought — Deceptive similarity —Plaintiff is continuous user of Trade Mark “THE LAZY DOG” for its pub/loungebar at Manali — It alleged that Defendant’s mark was identical to and deceptivelysimilar to Plaintiff’s mark — Whether Defendant’s use of said mark was a flagrantinfringement of registered Trade Mark of Plaintiff and also an attempt to tradeupon goodwill of Plaintiff —

Held, a perusal of registered mark of Plaintiff discloses that “THE LAZY DOG” is aprominent part of registered Trade Mark of Plaintiff and is mentioned twice, onceinside circle and again prominently below it. Reputation of Plaintiff’s bar wasreflected in popular reviews given by various travel guides and also Indiannewspapers including Mumbai edition thereof. Various articles and reviewsdisclosed that Plaintiffs bar/lounge was highly recommended by various reputed

* MANU/MH/0882/2013

4 8

a

b

c

d

e

f

g

h

i

03672013]


travel magazines and was very popular. Even popular travel websites carriedappreciative reviews. Material disclosed by Plaintiff in Plaint clearly indicated thatPlaintiff had high goodwill and reputation in services under mark “THE LAZYDOG”. Plaintiff had been carrying on business continuously from 2008 at Manaliand had now also commenced business in Goa. Plaintiff also has a website by nameof www.thelazydog.in. Defendants despite service had remained absent. Prima facie,case of Plaintiff was meritorious. Prima facie, mark used by Defendants wasdeceptively similar to Plaintiffs mark. Defendants could not be permitted to usemark “THE LAZY DOG” in violation of Plaintiff’s rights. Prima facie, if Defendantswere permitted to continue to use mark “THE LAZY DOG”, serious prejudice wouldbe caused to Plaintiffs reputation and goodwill apart from being in violation of theirrights. Balance of convenience was also in favor of Plaintiff. In these circumstances,ad-interim relief was granted as prayed for in Notice of Motion.

JUDGMENT

S.J. Kathawalla, J.

1. The Plaintiff has filed the above suit seeking an injunction against the Defendantsfrom infringing the Plaintiffs Trade Mark/service mark and also from passing offtheir services as those of the Plaintiffs by using the Trade Mark “THE LAZY DOG”or any other mark deceptively similar thereto. In the Notice of Motion, the Plaintiffhas sought interim orders against the Defendants. The Plaintiff, since 2008, ownsand manages a pub/lounge bar at Manali known as “THE LAZY DOG” whichaccording to the Plaintiff was a nick name used by the Plaintiffs friend to describehim. The Plaintiff has explained as to how the name “THE LAZY DOG” wasconceived. Since 2008, the Plaintiff has been continuously using the Trade Mark“THE LAZY DOG”. The Plaintiff applied for and obtained registration of the TradeMark which has been registered in India under No. 2090479 in Class 43 in relationto “restaurant, bar and hotel (services for providing drinks & temporaryaccommodation)”. A perusal of the registration certificate discloses that“THE LAZY DOG” is a prominent and essential part thereof. The Plaintiff hasasserted that the Plaintiff has acquired reputation amongst the members of the publicand trade and the mark “THE LAZY DOG” is associated with the Plaintiff and noneother. In or about March 2012, Plaintiff and two other persons also entered into apartnership and the Plaintiff has licensed the use of the mark “THE LAZY DOG” tothe said partnership at a nominal fee. A lounge/bar/pub has also been set up inGoa by the partnership firm in or about January, 2013. The Plaintiff thereafter startedreceiving enquiries from patrons as to whether an outfit known as “THE LAZY DOG”in Mumbai is associated with the Plaintiff. The Plaintiff conducted enquires andcame to know that the Defendants are also operating a pub by the name of“THE LAZY DOG” in Mumbai. The Plaintiff contends that the Defendant’s mark isidentical to and in any case deceptively similar to the Plaintiff’s mark. TheDefendants are trading upon the Plaintiff’s goodwill and passing off their serviceas those of the Plaintiff.

2. The Plaintiff attempted to serve the Defendant at the address of the registeredoffice as available in the records of the Registrar of Companies and also at theaddress of Defendant Nos. 2 and 3, who are the Directors of Defendant No. 1, at theiraddresses available with the Registrar of Companies. Upon such attempts, thePlaintiff came to know that there was never any office of the Defendant at the addressof the registered office and the addresses of the Defendant Nos. 2 and 3 were also not

Gopal Kaushik v. Gastro Pub Private Ltd. & Ors.(S.J. Kathawalla, J.)

4 9

a

b

c

d

e

f

g

h

i



correct. The Plaintiff therefore, served the Defendants at the place from where theDefendants are running the bar/ restaurant by the name “THE LAZY DOG”. TheManager of the restaurant duly accepted the service and acknowledged the same.The Plaintiffs have filed an affidavit of service.

3. The learned Counsel for the Plaintiff drew my attention to the registration certificateat Exh. C to the plaint and submitted that the mark “THE LAZY DOG” is an essentialand prominent part of the said registered mark. He also drew my attention to thedistinct and prominent reviews received by the Plaintiff in various well-knownmagazines and newspapers including the well-known international travel guideLonely Planet, Travel Guide Frommers, Outlook Traveller, The Economic Times,various international travel guide books and also the website www.tripadvisor.com.The Plaintiff have also been operating a website by the name of www.thelazydog.insince 2008. The Plaintiff has a Face Book page with almost 2,65,204 personsassociated with the said page. The learned Counsel pointed out that the Defendant’suse of the said mark is a flagrant infringement of the registered Trade Mark of thePlaintiff and also an attempt to trade upon the goodwill of the Plaintiff. I haveconsidered the documents on record and the submissions of the Counsel. A perusalof the registered mark of the Plaintiff discloses that “THE LAZY DOG” is a prominentpart of the registered Trade Mark of the Plaintiff and is mentioned twice, once insidethe circle and again prominently below it. The reputation of the Plaintiff’s bar isreflected in the popular reviews given by the various travel guides and also Indiannewspapers including the Mumbai edition thereof. The various articles and reviewsdisclose that the Plaintiffs bar/lounge is highly recommended by various reputedtravel magazines and is very popular. Even popular travel websites carry appreciativereviews. The material disclosed by the Plaintiff in the Plaint clearly indicates thatthe Plaintiff has high goodwill and reputation in the services under the mark“THE LAZY DOG”. The Plaintiff has been carrying on business continuously from2008 at Manali and have now also commenced business in Goa. The Plaintiff alsohas a website by the name of www.thelazydog.in. The Defendants despite servicehave remained absent. Prima facie, the case of the Plaintiff is meritorious. Prima facie,the mark used by the Defendants is deceptively similar to the Plaintiffs mark. TheDefendants cannot be permitted to use the mark “THE LAZY DOG” in violation ofthe Plaintiff’s rights. Prima facie, if the Defendants are permitted to continue to usethe mark “THE LAZY DOG”, serious prejudice would be caused to the Plaintiffsreputation and goodwill apart from being in violation of their rights. The balance ofconvenience is in favour of the Plaintiff. In these circumstances, ad-interim reliefs isgranted in terms of prayer Clauses (a) and (b) of the Notice of Motion.

5 0

a

b

c

d

e

f

g

h

i

03692013]


MIPR 2013 (2) 0369*

IN THE HIGH COURT OF DELHI

Eaton Corporation & Anr.v.

BCH Electric Limitedand

BCH Electric Limitedv.

Eaton Corporation & Anr.

I.A. NOS. 1204 AND 4318/2012 IN CS (OS) NOS. 156 AND 575/2012DECIDED ON: 01.07.2013

Judge

Manmohan Singh, J.

Authority referred

The Law of Unfair Competition and Trade Marks”, Fourth Edition, Volume Two atpage 1282 [p. 0409, para 80 g]

Foreign Cases referred

Apple Computer Inc. v. Apple Leasing and Industries, (I.A. No. 7678 of 1989 in Suit No.2751 of 1989, decided on 10th May, 1991 [p. 0403, para 70 b]

Barcamerica International USA Trust v. Tyfield Importers, Inc., United States Court ofAppeals for the Ninth Circuit D.C. No. CV-98-00206-FCD Pages 4, 6 & 7

[p. 0383, para 41 a]

Freecycle Sunnyvale v. The freecycle Network, United States Court of Appeals for the NinthCircuit D.C. No. 4:06-cv-00324-CW Opinion Paragraph III [2] - Page 18818

[p. 0383, para 41 b]

ITC Limited and ITC Hotels Limited v. Punchgini Inc., United States Court of Appeals,Second Circuit. Docket NO. 05-0933-cv. (Page 3-6) [p. 0382, para 41 f]

Cases referred

Amar Singh Chawla v. Rajdhani Roller Flour Mills Pvt Ltd. 1990 PTC 220 (Mentioned) [p. 0404, para 71.2 d]

Atlas Cycles (Haryana) Ltd. v. Atlas Products Pvt. Ltd. & Anr., MANU/DE/1366/2002:101 (2002) DLT 324: [2003] 47 SCL 304 (Delhi) (Mentioned) [p. 0382, para 41 c]

Baker Hughes Ltd. & Anr. v. Hiroo Khushlani & Anr. MANU/SC/0719/2004: 2004 (29)PTC 153 (SC) : (2004) 12 SCC 628: 2004 (6) SCALE 251 (Discussed)

[p. 0401, para 70 e]

Cluett Peaboy & Co. Inc. v. Arrow Apparals MANU/MH/0083/1997: 1998 PTC(Paragraphs 30 & 31) (Mentioned) [p. 0383, para 41 a]

Daimler Benz Aktiegesellschaft and Another v. Hybo Hindustan, MANU/DE/0035/1994:AIR 1994 Delhi 239: 1994 RLR 79 (Discussed) [p. 0403, para 70 a]

* MANU/DE/1836/2013

a

b

c

d

e

f

g

h

i



Fedders North American v. Show Line and Ors. MANU/DE/1938/2006: 2006 (32) PTC573 (Del) (Discussed) [p. 0410, para 82b]

Habib Bank Ltd. v. Habib Bank AG Zurich All ELR 1981 (Distinguished)[p. 0405, para 75 e]

Haw Par Bros. International Ltd. v. Tiger Balm Co. (P) Ltd. and Others, MANU/TN/0526/1995: 1996 () PTC 311 (Mad) (Discussed) [p. 0403, para 70 e]

Hindustan Pencils Pvt. Ltd. v. M/s. India Stationery Products Co., reported in MANU/DE/0383/1989: AIR 1990 Delhi 19: 1989 (2) ARBLR 72 (Delhi) : 38 (1989) DLT 54(Discussed) [p. 0409, para 80 a]

J.K. Jain v. Ziff Davies, MANU/DE/1334/2000: 2000 (56) DRJ 806 (Discussed)[p. 0408, para 79 i]

J.N. Nicols (Vimto) Limited v. Rose & Thistle & Anr. MANU/WB/0005/1994: AIR 1994Cal 43: (1993) 2 CALLT 411 (HC) : 98 CWN 216: 98 CWN 216 (Discussed)

[p. 0407, para 76 b]

K.R. Jadyappa Mudaliar & Ors. v. KB. Venkatachalam and Anr., MANU/TN/0405/1988: (1990) 1 MLJ 119 (Mentioned) [p. 0383, para 41 c]

Kamal Trading Co. v. Gillette UK Ltd., Middle Sex, England, (1988) 1 PLR 135 (Discussed)[p. 0403, para 70 f]

Kirloskar Proprietary Limited & Ors. v. Kirloskar Dimensions Pvt. LTD. & Ors., MANU/KA/0001/1997: AIR 1997 Kant 1: [1999] 96 CompCas 726 (Kar): ILR 1996KARNATAKA 2957: 1996 (5) KarLJ 446 (Mentioned) [p. 0382, para 41 d]

Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia and Others, reported in MANU/SC/0186/2004: 2004 (28) PTC 121 (SC) : 2004 (2) PLJR 141: 2004 (73) DRJ 647:(2004) 3 SCC 90: 2004 (2) SCALE 231 (Discussed) [p. 0409, para 81 h]

Milment of the Industries & Ors. v. Allergan Inc, MANU/SC/0512/2004: 2004 (28) PTC585 (SC) : (2005) 1 CALLT 1 (SC) : [2004] 121 CompCas 486 (SC) : 2004 (170) ELT260 (S.C.) : [2004 (3) JCR 175 (SC) ]: 2005 - 2 - LW 29: [2004] Supp (2) SCR 586: 2004(75) DRJ 109: (2004) 12 SCC 624: 2004 (5) SCALE 772: 2004 (5) ALLMR (SC) 722(Discussed) [p. 0400, para 70 f]

Morgardshammar India Limited & Ors. v. Morgardshammar AB, MANU/DE/4585/2012:2013 (53) PTC 186 (Del) : 193 (2012) DLT 238 (Discussed) [p. 0407, para 77 h]

N.R. Dongre v. Whirlpool Corporation, MANU/SC/1223/1996: 1996 (16) PTC 583 (SC): 1996 VI AD (SC) 710: 1996 (2) ARBLR 488 (SC) : JT 1996 (7) SC 555: [1996] Supp 5SCR 369: (1996) 5 SCC 714: 1996 (6) SCALE 276 (Discussed) [p. 0400, para 70 c]

Power Control Appliances & Ors. v. Sumeet Machines Pvt. Ltd., MANU/SC/0646/1994:(1994) 2 SCC 448: JT 1994 (2) SC 70: 1994 (1) SCALE 446: [1994] 1 SCR 708(Mentioned) [p. 0382, para 41 c]

Prem Singh v. Ceeam Auto Industries, MANU/DE/0455/1990: AIR 1990 Delhi 233:1990 (2) ARBLR 357 (Delhi) : (1990) ILR 2 Delhi 166: 42 (1990) DLT 548 (Mentioned)

[p. 0382, para 41 e]

Qrg Enterprises and Anr. v. Surendra Electricals and Ors., MANU/DE/0576/2005:2005 (30) PTC 471 (Del) : 120 (2005) DLT 456 (Mentioned) [p. 0382, para 41 e]

R.N. Gosain v. Yashpal Dhir, MANU/SC/0078/1993: AIR 1993 SC 352: AIR 80 1992SC 352: 1993 (1) ALT 19 (SC) : [1992] Supp 2 SCR 257: (1992) 4 SCC 683: 1992 (2)SCALE 913: (1993) 103 PLR 184 (Discussed) [p. 0390, para 58 e]

5 2

a

b

c

d

e

f

g

h

i

03712013]


Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel & Ors., MANU/SC/3725/2006: AIR 2006 SC 3304: 2006 (6) ALD 36 (SC) : 2007 (3) ALT 19 (SC) : (2007) 1 GLR594: JT 2006 (8) SC 393: 2006 (33) PTC 281 (SC) : (2006) 8 SCC 726: 2006 (8) SCALE631: 2007 (1) ALLMR (SC) 402: 2006 GLH (26) 369 (Mentioned)[p. 0382, para 41 c]

Rob Mathys India Pvt. Ltd. v. Synthes Ag Chur, MANU/DE/0308/1997: 1997 (17) PTC(DB) (Discussed) [p. 0405, para 75 d]

S.P. Chengalvaraya Naidu v. Jagannath & Others, MANU/SC/0192/1994: AIR 1994SC 853: II (1993) BC 546 (SC) : 1994 CivilCC 131: JT 1993 (6) SC 331: 1994 - 1 - LW21: 1994 (I) OLR (SC) 201: 1994 (1) UJ 1: 1994 (1) PLJR 39: 1994 (1) BLJR 216: [1993]Supp 3 SCR 422: (1994) 1 SCC 1: 1993 (4) SCALE 277: (1995) 109 PLR 293(Mentioned) [p. 0382, para 41 e]

UTO Nederland B.V. & Anr. v. Tilaknagar Industries Ltd. MANU/MH/1827/2011:2012 (49) PTC 249 (Bom) (Mentioned) [p. 0383, para 41 a]

Vee Excel Drugs and Pharmaceuticals Ltd. v. Hab Pharmaceuticals and Research Lim.,MANU/DE/0830/2009: 2009 (39) PTC 676 (Del) (Mentioned)[p. 0382, para 41 f]

Velcro Industries v. Velcro India Ltd. 1993 (1) Arb. LR 465 (Discussed) [p. 0400, para 69 a]

Wander Ltd. & Another v. Antox India Pvt. Ltd. MANU/SC/0595/1990: 1990 Supp (1)SCC 727: 1990 (2) ARBLR 399 (SC) : 1990 - 1 - LW 495: 1990 - 1 - LW 498: 1991 (11)PTC 1 (SC) (Mentioned) [p. 0383, para 41 b]

Warner Bros. Entertainment Inc. & Anr. v. Harinder Kohli & Ors., MANU/DE/1333/2008: 2008 (38) PTC 185 (Del) : (2009) ILR 1 Delhi 722: 155 (2008) DLT 56: MIPR2009 (1) 274 (Mentioned) [p. 0382, para 41 d]

Whirlpool Company & Anr. v. N.R. Dongre & Ors., MANU/DE/0650/1994: 1995 (32) DRJ318: 1994 IV AD (Delhi) 667: 56 (1994) DLT 304 (Discussed) [p. 0407, para 76 b]

Acts/Rules/Orders:

Code of Civil Procedure, 1908

Section 151 [p. 0373, para 1 h]

Trade and Merchandise Marks Act, 1958 [p. 0375, para 9 b]

Section 48 [p. 0380, para 35 b]

Trade Marks Act, 1999 [p. 0375, para 11 f]

Section 7.1 [p. 0395, para 63 g]

Section 7.3 [p. 0393, para 61 h]

Section 7.7 [p. 0395, para 63 i]




Section 46 (3) [p. 0407, para 76 c]


Section 142 [p. 0411, para 88 h]

Counsel

For Appellant/Petitioner/Plaintiff: Sudhir Chandra, Sr. Adv., Navneet Momi, AmitKumar & Neha Gupta, Advs. in I.A. No. 1204/2012 in CS (OS) No. 156/2012,Sandeep Sethi, Sr. Adv., C.A. Brijesh, Maidini Phul, v. Mohini and P. Kalra, Advs.in I.A. No. 4318/2012 in CS (OS) No. 575/2012

Eaton Corporation & Anr. v. BCH Electric Limited(Manmohan Singh, J.)

5 3

a

b

c

d

e

f

g

h

i



For Respondents/Defendant: Sandeep Sethi, Sr. Adv., C.A. Brijesh, Maidini Phul, v.Mohini and P. Kalra, Advs. in I.A. No. 1204/2012 in CS (OS) No. 156/2012,Sudhir Chandra, Sr. Adv., Navneet Momi, Amit Kumar & Neha Gupta, Advs. inI.A. No. 4318/2012 in CS (OS) No. 575/2012

ISSUES AND FINDINGS

Trade Mark — Infringement — Passing off — Injunction sought — WhetherDefendant was infringing registered mark CUTLER-HAMMER and that whetherDefendant was passing off its goods as that of Plaintiff —

Held, Defendant was aware of reputation and proprietorship of Plaintiff No. 1 overTrade Marks “CUTLER-HAMMER”, “CH Control” and “CH” in respect of goods ofits manufacture and sale prior to its incorporation and had adopted and usedidentical and/or deceptively similar Trade Marks with dishonest and mala fideintentions to trade upon reputation and goodwill of Plaintiffs and to earn profits inan illegal manner. By committing such acts, Defendant had not only infringed Plaintiff’sproprietary rights vested in their registered Trade Mark “CUTLER-HAMMER” andother above mentioned Trade Marks but also committed acts of passing off theirinferior quality goods and business as and for quality products and business ofPlaintiff.

Trade Mark — Infringement — Prior user — Whether Defendant being earlierpermissive user of Trademarks were entitled to claim proprietorship rights afterexpiry of period of licence agreement and were entitled to use same Trademarks —

Held, Defendant had intentionally and deliberately claimed false user of marksCUTLER-HAMMER/BHARTIA CUTLER-HAMMER and CH from several decades.Defendant had claimed use of Trade Mark CUTLER HAMMER from year 1968 andother marks from year 1977 and had produced on record Sales figures along withCertificate of Chartered Accountant from year 1976-2010 which were wrong andnot substantiated by any documentary evidence. It is admitted position that duringsaid period user of Defendant was permissive user. Claiming user being proprietorduring licensing period was fraudulent and dishonest as per settled law.

Even false claims made by Defendant as to “advertisement and promotion of productsunder marks CUTLER-HAMMER/BHARTIA CUTLER-HAMMER and CH fromthe year 1976-2011”. In most of period, Defendant’s user was permissive user.

When law with regard to rightful owner of Trade Mark and act of ex-licensee isexamined, it emerges that either during licensing period of agreement or after expiry,it is implicit and clear that ex-licensee is not entitled to claim ownership of a TradeMark nor he is permitted by law to file an application for registration of Trade Markin his name nor is entitled to file the petition for rectification of same very TradeMarks in which ex-licensee was using Trade Marks as a permissive user, otherwiseit would amount to fraud and misrepresentation. Ex-licensee under no circumstancescan declare himself as owner of Trade Mark to claim concurrent user because as perscheme of Act, benefit of concurrent user can be derived by a party whose user ishonest and bona fide.

Trade Mark — Infringement — Injunction sought — Alleged that Defendant wasdeliberately, fraudulently and with mala fide intentions of trading upon reputationand goodwill attached to Plaintiff’s Trade Mark CUTLER-HAMMER, CH Control& CH (label) , was using it without obtaining any consent, permission or validlicense — Whether balance of convenience was in favour of Plaintiff —

5 4

a

b

c

d

e

f

g

h

i

03732013]


Held, Plaintiffs’ Trade Marks CUTLER-HAMMER/CH logos were well known TradeMarks having extra territorial goodwill and reputation worldwide. Plaintiff No. 1had trans-border reputation extending to India. Moreover use of identical/deceptively similar Trade Marks on part of Defendant was bound to confer an undueadvantage of reputation and goodwill of Plaintiffs’ well known marks to Defendantand such use would be detrimental to well known character and reputation thereof.Plaintiffs were registered proprietor of Trade Mark CUTLER-HAMMER under No.164435 in Class 09. Whereas Defendant did not have any statutory right in TradeMark CUTLER-HAMMER/BHARTIA CUTLER-HAMMER and its variants.

Plaintiffs had been using Trade Marks worldwide and there was no reason to assumethat same were abandoned. Mere fact that registrations of few Trade Marksinadvertently lapsed and then no steps were taken to reinstate said registration onaccount of adopting new version of it, same was no ground to claim that Plaintiffshad abandoned Trade Marks.

Thus, Plaintiffs established a prima facie case for grant of an interim injunction.Balance of convenience was also in favour of Plaintiffs and against Defendant.Further, Plaintiffs shall suffer an irreparable loss and injury to its hard earnedgoodwill, reputation and business unless Defendant was restrained from continuingwith its illegal trade activities during pendency of suit.

Hence, prayer made in Plaintiffs’ application being I.A. No. 1204/2012 was allowed.Accordingly, Defendant, its dealers, agents and representatives on its behalf wererestrained from using impugned arrangement and/or mark (s) CUTLER-HAMMER,BHARTIA CUTLER-HAMMER, CH (logo) or CH CONTROL or any other mark asmay be identical and/or deceptively similar to Plaintiffs’ registered Trade MarkCUTLER-HAMMER under No. 164435 in Class 9 amounting to infringement thereofand also from manufacturing and selling, offering for sale, directly or indirectlydealing in goods included in Class 9 and/or any other cognate or allied goodsor goods of same description under impugned arrangement and/or mark (s)CUTLER-HAMMER, BHARTIA CUTLER-HAMMER, CH (logo) or CH CONTROLor any other mark as may be identical and/or deceptively similar to Plaintiffs’Trade Mark CUTLER-HAMMER and CH (label) and from doing any other act as islikely to cause confusion and deception amounting to passing off their goods and/or business as and for goods and/or business of the Plaintiffs. However, Defendantwas granted three months’ time to dispose of existing stock lying with it.

Ratio Decidendi:

“Trade Mark law is not intended to protect a person who deliberately sets out to takebenefit of somebody else’s reputation with reference to goods, especially so whenreputation extends worldwide.”

JUDGMENT

Manmohan Singh, J.

1. By this order, I shall dispose of two applications under Order XXXIX, Rules 1 & 2,read with Section 151 CPC; first being I.A. No. 1204/2012 filed by the Plaintiffs,Eaton Corporation & Another in CS (OS) No. 156/2012, and second being I.A.No. 4318/2012 filed by the Defendant BCH Electric Ltd. in its suit being CS (OS)No. 575/2012. Both the applications are being decided by common order. In theorder, Eaton Corporation & Another would be referred as “Plaintiffs” and BCHElectric Limited would be referred as “Defendant”. The case of the Plaintiffs is that


5 5

a

b

c

d

e

f

g

h

i



Plaintiff No. 1, M/s. Eaton Corporation is a company organized and existing underthe laws of United States of America. The Plaintiff No. 2, Eaton Power Quality Pvt.Ltd., New Delhi is the subsidiary of Plaintiff No. 1.

2. The Plaintiff No. 1 (the expression whereof shall include its predecessors-in-interest and title) are engaged in the business of the manufacture and sale of “electricapparatus for use in operating machines, engines and motor by current control andelectrical supplies, consisting of; controllers for dynamoelectric machines to wit;starting, stopping, reversing, and speed regulating apparatus for motors, and voltageand current regulating apparatus for generators and like control apparatus for rotaryconvertors; current breakers; magnetic brakes for various types of machines; liftingand separating magnets and controls therefore; solenoids; electric panel boards andother goods included in Class 9.

3. It is alleged in the plaint that the Plaintiff No. 1 founded in 1911 and incorporatedin Ohio in 1916 is a well known premier diversified fortune 200 industrial companyhaving a manufacturing presence in Australia, Brazil, Canada, China, Costa Rica,Czech Republic, Dominican Republic, France, Germany, India, Indonesia, Ireland,Italy, Japan, Malaysia, Mexico, Monaco, Netherlands, Poland, Puerto Rica, Singapore,South Africa, South Korea, Spain, Switzerland, Taiwan, Thailand, United Kingdomand United States of America and has been selling their products under variouswell known Trade Marks. It is a global corporate being into business for more than100 years, employing approximately 73,000 employees worldwide and selling itsproducts to customers in more than 150 countries. During the year 2010, their marketvalue is estimated to be $19.92 billion USD approx.

4. It is also alleged that the Plaintiff No. 1 mainly deals in four distinct industrialsegments namely Electrical, Fluid Power, Truck and Automotive wherein they areconsidered to be the global leaders. Plaintiffs deals in the designs, manufacture,marketing and serving of electrical systems and components for power quality,distribution and control; fluid power systems and services for industrial, mobileand aircraft equipment; intelligent truck drive train systems for safety and fueleconomy; and automotive engine air management systems, power train solutionsand specialty controls for performance, fuel economy and safety.

5. The Trade Mark “CUTLER-HAMMER” was first adopted by Cutler-Hammer Inc.,predecessor-in-interest and title of Plaintiff No. 1 in the year 1893 in respect ofelectric apparatus for use in operating machines and goods mentioned above.

6. The Plaintiffs’ contention is that the predecessor-in-title of Cutler-Hammer Inc.first shipped the goods included in Class 9 under Trade Mark “CUTLER-HAMMER”to India in the year 1919. Since that time, the Plaintiff’s predecessor-in-interest andtitle and then Plaintiffs have continued to use the said Trade Mark in respect ofgoods of its manufacture and sale so much so that the Plaintiffs’ Trade Mark“CUTLER-HAMMER” have come about to be exclusively identified and recognizedby the purchasing public and the members of the trade with the goods of the Plaintiffsand none else.

The Trade Mark “CH” was first adopted by Cutler-Hammer Inc., predecessor-in-interest and title of Plaintiff No. 1 in the year 1954 in India in respect of goods fallingin Class 9 and has been used in India initially by the Plaintiffs’ predecessor-in-interest and title and then by Plaintiffs from several years.

7. Plaintiffs’ Trade Marks “CUTLER-HAMMER”, “CH Control” and “CH (label) ”are being used in several countries in the world. The list of countries in which

5 6

a

b

c

d

e

f

g

h

i

03752013]


products bearing the Trade Mark “CUTLER-HAMMER”, “CH Control and “CH(label) ” has been filed.

8. Plaintiffs’ Trade Marks “CUTLER-HAMMER”, “CH Control” and “CH (label) ”are also the subject matter of numerous registrations in number of countries of theworld covering variety of goods falling in international Class 9. Copies of a sampleof some of the registration certificates have been filed on record.

9. The registration of the Trade Mark “CUTLER-HAMMER” under No. 164435 wasapplied by Cutler-Hammer Inc. on 8th June, 1954 as per the provisions of the Tradeand Merchandise Marks Act, 1958 in India. Plaintiff No. 1 acquired the companyCutler-Hammer Inc. in the year 1978 whereby request on Form-24 dated 28th

November, 1979 was filed. Pursuant to request on Form-24 and order dated 23rd

January, 1980, Plaintiff No. 1 was registered as subsequent proprietor by virtue ofCertificate of Merger.

10. The Plaintiff No. 1 also registered the Trade Mark (s) “CH (label) ”, “CH Control”and “CH” in respect of electric goods included in Class 9 under the provisions ofTrade and Merchandise Marks Act, 1958 in India. The details of these Trade Marksare as follows:

Sr. No. Trademark Registration No. Class Date of application

1. 205632 9 03.11.1975

2. 164434 9 08.06.1954

3. 642706 9 11.10.1994

11. The registration of the abovementioned Trade Mark “CUTTER-HAMMER” underNo. 164435 confers an exclusive right on the Plaintiffs to the use of the said TradeMarks under Section 28 of the Trade Marks Act, 1999. The use of any mark whichmay be identical and/or deceptively similar thereto in respect of the same or similardescription of goods or service constitute an act of infringement under Section 29 ofthe Trade Marks Act, 1999 as well as passing off.

12. The contention of the Plaintiffs is that Trade Marks “CUTLER-HAMMER”, “CHControl” and “CH (label) ” enjoys wide reputation, recognition and popularity inthe Indian and world market for high quality of products sold under it. These TradeMarks have created its own identity in the market and have immensely contributedin generation of goodwill so much so that it has acquired the trans-border reputationwhich has spilled over to India.

13. The Defendant, BCH Electric Limited having its office at 1101, New Delhi House,27-Barakhamba Road, New Delhi-110 001 also at, Block 1E216, AJC Bose Road,Kolkata-700017 and 20/4, Mathura Road Faridabad-121 006, Haryana is alsoengaged in the business of manufacture and sale of electric goods falling in Class 9.

14. The Defendant (the expression whereof shall include its predecessor-in-interestand title) was set up in the year 1965 as a result of the joint venture between the


5 7

a

b

c

d

e

f

g

h

i



Plaintiffs’ predecessor-in-interest and title, Cutler-Hammer Inc. and some Indianpartners in the name of CUTLER-HAMMER INDIA LIMITED. The name of DefendantCompany was later changed to Bhartia Cutler-Hammer Ltd. In the year 1995, it wasrenamed as Bhartia Industries Limited. With effect from 25th October, 2007, the namewas again changed to BCH Electric Limited, the present Defendant herein.

15. From the year of its incorporation, Defendant entered into various agreementswith Plaintiffs’ predecessor-in-interest and title, Cutler-Hammer Inc. to flourishCutler-Hammer Inc.’s business in India. These agreement included “SalesAgreement” and “License and Technical Service Agreement” dated 3rd June, 1974whereby Defendant has accepted the ownership of the Cutler-Hammer Inc. over theTrade Marks/trade names and further agreed to not to do anything which willimpair Cutler-Hammer Inc.’s ownership over these Trade Marks/trade names.

16. In the year 1979, Cutler-Hammer Inc. entered into trading name agreement withBhartia Cutler-Hammer Limited (now Defendant) whereby Defendant was grantedthe right to use the words CUTLER-HAMMER as part of the corporate title by Cutler-Hammer Inc. The said agreement allowed Defendant to use the words “Cutler-Hammer” as part of their corporate title in a limited way/manner and in connectionwith goods manufactured under the license from Cutler-Hammer Inc. Theagreement specifically mentions that Cutler-Hammer Inc. is the owner of the words“CUTLER-HAMMER” when used as a registered or unregistered Trade Mark,corporate title or trading style in the field of activity in which parties are engaged.

17. On 19th February, 1979, a registered user agreement was executed between BhartiaCutler-Hammer Limited (now Defendant) and Cutler-Hammer Inc. wherebyDefendant was granted non-exclusive right to use the following registered TradeMarks:

• Trade Mark “C-H Monogram Border” under No. 164434.

• Trade Mark “CUTLER-HAMMER” under No. 164435.

• Trade Mark “CH Control” under No. 205632.

18. Defendant was allowed to use the Trade Mark “CUTLER-HAMMER” under No.164435 in conjunction with the word Bhartia. Whereas the other two Trade Marks wereallowed to be used along with the legend “Made in India by Bhartia Cutler-HammerLimited, a wholly Indian owned Licensee of Cutler-Hammer, Inc. U.S.A.”

19. In the User Agreement, Defendant acknowledged and admitted the Cutler-Hammer Inc.’s title and proprietorship in the Trade Marks “CUTLER-HAMMER,CH & CH Control”. The agreement clearly mentions in Clause 7 that:

User recognizes the Trade Mark Owner’s title to the said Trade Marks andshall not at any time do or suffer to be done any act or thing which will in anyway impair the rights of the Trade Mark Owner in or to said Trade Marks. It isunderstood that User shall not acquire and shall not claim any title to the saidTrade Marks by virtue of the license granted to user or through user’s use of thesaid Trade Marks, it being the intention of the parties that all use of said TradeMarks by user shall at all times inure to the benefit of the Trade Mark Owner.

The duration of the abovementioned agreement was for seven years which hadexpired in the year 1986.

20. The Plaintiffs have set up their case against the Defendant by making variousallegations that the Defendant is deliberately, fraudulently and with mala fideintentions of trading upon the reputation and goodwill attached to Plaintiff’s Trade

5 8

a

b

c

d

e

f

g

h

i

03772013]


Mark CUTLER-HAMMER, CH Control & CH (label) , is using it without obtainingany consent, permission or valid license.

The dishonest and mala fide intentions of Defendant are apparent from the fact thatdespite being aware of the reputation of Plaintiff’s Trade Mark “CH (label) ”worldwide including India and proprietorship of Plaintiff No. 1 over the TradeMark “CH Control” under No. 205632 in Class 9 since 3rd November, 1975 inaccordance with the provisions of Trade and Merchandise Marks Act, 1958 andhaving admitted rights of Plaintiff No. 1 in the Registered User Agreement, Defendantapplied for registration of the identical/deceptively similar Trade Mark under No.582999 in Class 9 in the year 1992 and obtained registration thereof by playingfraud on the registry and making false claim of proprietorship and user thereof.

21. It is alleged in the plaint that the Defendant taking advantage of this situationfiled an application under No. 582999 for registration of the Trade Mark “CH Control”through the same service provider. The Defendant has obtained the registration ofthe said mark wrongfully and in bad faith by committing fraud over the Registry.

22. It is also alleged against the Defendant that by committing fraud, Defendantapplied for registration of the identical/deceptively similar Trade Mark“CUTLER-HAMMER (Device) ” under No. 1189782 in Class 9 in the year 2003. ThePlaintiff No. 1 filed notice of opposition opposing registration of the impugnedmark subject matter of Application No. 1189782 on/or around 23rd June, 2004 withthe Registrar of Trade Marks at New Delhi. The said opposition proceedings initiatedby the Plaintiffs are pending.

23. In the year 2007, Defendant made another attempt to register identical and/ordeceptively similar Trade Mark “BHARTIA CUTLER-HAMMER (Label) ” underApplication No. 1562940 in Class 9 and the same is pending as objected by thePlaintiffs.

24. It is submitted that Defendant was aware of the reputation and proprietorship ofPlaintiff No. 1 over Trade Marks “CUTLER-HAMMER”, “CH Control” and “CH”in respect of the goods of its manufacture and sale prior to its incorporation and hasadopted and used the identical and/or deceptively similar Trade Marks withdishonest and mala fide intentions to trade upon the reputation and goodwill ofPlaintiffs and to earn profits in an illegal manner. By committing such acts, Defendanthas not only infringed Plaintiff’s proprietary rights vested in their registered TradeMark “CUTLER-HAMMER” and other abovementioned Trade Marks but alsocommitted acts of passing off their inferior quality goods and business as and forthe quality products and business of Plaintiff. The Defendant has no plausiblereason to choose identical/deceptively similar marks CUTLER-HAMMER,BHARTIA CUTLER-HAMMER, CH (logo) and/or CH Control as a Trade Mark fortheir products.

25. The Defendant’s products are bound to be falsely associated being part of rangeof products of the Plaintiff. The use of identical and/or deceptively similar TradeMarks CUTLER-HAMMER, BHARTIA CUTLER-HAMMER, CH (logo) and/or CH Controlon the part of the Defendant is unlawful and constitutes violation of the Plaintiff’srights as are protected under the provision of Section 29 of the Trade Marks Act,1999 and under the common law.

26. On 19th December, 2011, Plaintiffs published a caution notice announcing theirstatutory rights over the Trade Mark “CUTLER-HAMMER” in Class 9 since the year1954. In response to the caution notice, the Defendant through their Counsel sent a


5 9

a

b

c

d

e

f

g

h

i



reply to the caution notice via email and registered post on 22nd December, 2011. Byway of the said reply, Defendant claimed proprietary rights in the Trade MarkBHARTIA CUTLER-HAMMER and CH Control. By way of the said reply; Plaintiffcame to know that Defendant has also applied for registration of Trade Mark“BHARTIA CUTLER-HAMMER” under No. 1562940 in Class 9. It was revealed bythe Plaintiffs from the website of Registrar of Trade Marks about the filing ofapplication for registrations of the same very Trade Marks which were earlier usedby the Defendant under permissive use of the Trade Marks belonging to the Plaintiffs.

27. The Plaintiffs, thereafter, have filed the suit for permanent injunction restraininginfringement of Trade Marks, passing of, unfair competition and renditions ofaccounts and damages against the Defendant. Along with suit, the Plaintiffs alsofiled an application being I.A. No. 1204/2012 under Order XXXIX, Rules 1 & 2 CPCfor grant of interim injunction against the Defendant from using the Trade MarksCUTLER-HAMMER and CH in any manner by the Defendant by passing off theirgoods as that of the Plaintiffs. The abovementioned suit was filed in the month ofJanuary, 2012. The Defendant filed its written statement and reply in the month ofFebruary, 2012.

28. The Defendant also filed suit against the Plaintiffs being CS (OS) No. 575/2012 inthe month of March, 2012 along with interim application being I.A. No. 4318/2012seeking injunction against the Plaintiffs for issuance of groundless threats to thedealers of the Defendants.

29. Both sides have made their submissions in their respective interim applications.As the facts in both matters are common, therefore, by this common order, the pendingtwo interim applications are being decided by the single order.

30. Various defences have been raised by the Defendant in its written statement andreply to the interim application filed by the Plaintiffs. Mr. Sandeep Sethi, learnedSenior Counsel appearing on behalf of Defendant has made his submission that nocase of infringement of Trade Marks has been made out by the Plaintiffs against hisclient as Plaintiff No. 1 has not acquired any rights in the mark CUTLER-HAMMERunder No. 164435 which was in the name of Cutler-Hammer, Inc. The saidregistration is not valid. The Defendant’s application for rectification/removal/cancellation of the mark is pending with the Trade Marks Registry. The Trade MarkCUTLER-HAMMER is not being used by Plaintiffs in India; abandoned by Plaintiffsand, therefore, no goodwill/reputation vests in the said marks in favour of Plaintiffs.The Trade Mark CUTLER-HAMMER is associated in India with Defendant and itsproducts/business.

The Trade Mark (CH being the abbreviation of CUTLER-HAMMER) is

registered under No. 582999 in Class 9 in the name of Defendant since the year 1992.Therefore, the Plaintiffs have failed to establish even prima facie case of infringementof Trade Marks.

31. The second submission of Mr. Sethi is that the Plaintiffs have also failed to makeout any case of passing off as the Plaintiffs are not using the marks CUTLER-

HAMMER and/or variants thereof in relation to their

business/products in India. No products of Plaintiffs bearing any of the aforesaidTrade Marks are available for sale in India. The aforesaid marks have been abandoned

6 0

a

b

c

d

e

f

g

h

i

03792013]


by Plaintiffs. In fact, no products bearing the said marks have been produced/filedin the Court. There is no goodwill/reputation vested in favour of Plaintiffs in thesaid marks.

The marks, BHARTIA CUTLER-HAMMER, CUTLER-HAMMER,

are exclusively associated with Defendant. The said products and are distinctive ofits products/business by virtue of continuous and extensive use for several decades.There is no evidence of confusion and deception placed by the Plaintiffs on record.There is no likelihood of confusion/deception as Plaintiffs’ products bearing thesaid marks are not available in India. Therefore, no damage would be caused toPlaintiffs on account of use of the said marks by Defendant. On the contrary,Defendant will suffer irreparable loss, damage and injury, if Plaintiffs commenceuse of the said marks in India. Rather the Plaintiffs have abandoned their TradeMarks in India who themselves have allowed removal of their following TradeMarks in India and other countries as admitted by the Plaintiffs in their rejoinderdue to non-payment of their renewal fee and have not taken any steps for restoration.The details are as under:

Trade mark Registration No. Status

'CH’ LOGO 164434 Removed by the Trade Marks Registry

'CH’ LOGO 205632 Removed by the Trade Marks Registry

642706 Removed by the Trade Marks Registry

(Hereinafter the abovementioned logos or variant thereof would be referred as“CH” logo, and logo of CUTLER-HAMMER as “CUTLER-HAMMER”)

32. Despite having incorporated a subsidiary in India i.e. Plaintiff No. 2 as far backas in the year 1996, Plaintiff No. 1 has not used the said marks in respect of itsproducts/business and neither raised any objection against Defendant’s activitiesin India. Plaintiffs’ products available in India do not depict/bear the Trade Marks“CUTLER-HAMMER” or “CH” or variants thereof. Products purchased byDefendant on 22nd December, 2011 which does not show use of the said marks. Theinvoice raised in respect of the said products also does not show use of the marks.Plaintiffs have filed few purchase orders of 2009, 2010 and 2011 however, the same donot show any actual sale of the products in India under the mark CUTLER-HAMMER.Further, Plaintiffs have relied on a catalogue of 2001 pertaining to Canada to correlatethe product codes. No document has been placed on record by the Plaintiffsestablishing use of the marks in question post 1986, thereby confirming that PlaintiffNo. 1 lost interest/rights in the marks CUTLER-HAMMER, CH post 1986 and havecommenced use only recently so as to ride on the goodwill and reputation vesting inthe Defendant’s marks.

33. The sales figures provided by Plaintiffs for the years 2008-2011 in respect of theirproducts are vague, misleading, unsubstantiated and scanty inasmuch as the same areneither indicative of sales in India nor discloses use of these Trade Marks. The salesfigures of Rs. 35 lac, which at any rate are vague, unsubstantiated and denied, providedby Plaintiffs towards sale of products in the year 2008 bearing the marks in question areno match to the sales generated by Defendant in the year 2008 i.e. ` 1,94,82,68,813/-.


6 1

a

b

c

d

e

f

g

h

i



34. No document including promotional materials/advertisements has been placedon record by the Plaintiffs establishing use of the marks in question post 1986. TheCaution Notice published by the Plaintiffs on 19th December, 2011 in the daily, “TheTimes of India” was confined to the Trade Mark CUTLER-HAMMER and there wasno whisper of the marks CH and/or variants thereof.

35. Nothing on record to show that the Registered User Agreement dated19th February, 1979 was recorded with the Trade Marks Registry as per Section 48 ofthe Trade and Merchandise Marks Act, 1958, thus, it does not lie in the mouth of thePlaintiffs to say that “use” would accrue to the Plaintiffs for the period 1979-1986.

36. It is also argued by Mr. Sethi that the present action of the Plaintiffs suffers fromlong delay, laches, acquiesces and waiver on the part of Plaintiffs. Therefore, thePlaintiffs are entitled for the discretionary relief of injunction.

It is admitted by the Defendants that after the expiry of the Registered User Agreementin 1986, Defendant continued to use, inter alia, the Trade Marks BHARTIA CUTLER-HAMMER, CUTLER-HAMMER, CH with the full knowledge, consent andencouragement of Plaintiff No. 1 by way of addressing letters by the Plaintiffsthemselves and various meetings and discussions between the parties at least forthe last 25 years.

37. Certain following illustrative instances have been given by the Defendant inorder to show the knowledge of the Plaintiffs about the continuous user of TradeMarks in question:

i) Plaintiffs have admitted to the fact that the letters exchanged between PlaintiffNo. 1 and Defendant reflected Defendant’s use of the Trade Marks BHARTIACUTLER-HAMMER, CUTLER-HAMMER, CH on the letter head.

ii) Plaintiff No. 1 had entered into Sales Agreements on 13th July, 1988 and4th September, 1990 with Defendant’s affiliate viz. Bhartia International PrivateLimited (which later merged into Defendant) ; License and Technical ServiceAgreements dated 10th April, 1990 and 11th December, 1992 with Defendantand Export Agreement dated 16th March, 1994 between Plaintiff No. 1 andDefendant.

iii) Plaintiff No. 1 and Defendant exchanged various correspondences andvisited each other’s offices/factories in India and the USA in connection withbusiness as well as to explore new business opportunities. The letters addressedby Defendant clearly reflected use of the Trade Marks BHARTIA CUTLER-HAMMER, CUTLER-HAMMER, CH on the letterhead. The product brochureforwarded to Plaintiff No. 1 also bore the Trade Marks/names BHARTIACUTLER-HAMMER and CH of the Defendant. The representatives of Plaintiffswho visited the office/factory of Defendant could not have missed Defendant’suse of the said marks.

38. Plaintiffs’ Indirect Knowledge

i) When the Plaintiff No. 1 had filed fresh application seeking registration ofthe mark “CUTLER-HAMMER” under No. 642706 on 11th October, 1994, theExamination Report issued by the Trade Marks Registry on 22nd October, 1999cited Defendant’s prior mark “CUTLER-HAMMER” under No. 582999 againstPlaintiffs’ application. There was opposition from the Plaintiffs’ side.

ii) Mr. Jamshed Khurram, Director - Sales & Marketing PD, South Asia ofPlaintiff No. 2 and Mr. Ajay Jain, President of Plaintiff No. 1’s affiliate company

6 2

a

b

c

d

e

f

g

h

i

03812013]


Moeller HPL India Private Limited were employees of the Defendant during2004-2005 and 2001-2005 as Business Manager (OEM) and General Manager(Sales and Marketing) respectively.

iii) Plaintiff No. 2 was incorporated on 1st March, 1996 and has an office atDelhi. Defendant also has an office at Delhi. The Directors and other senioremployees of Plaintiff No. 2 have been in constant touch with Defendant andhave visited its offices.

iv) Being in the same line of business, Plaintiff No. 2 is deemed to have beenaware of Defendant’s business/products bearing the marks, BHARTIACUTLER-HAMMER, CUTLER-HAMMER and CH. Defendant has beencontinuously and extensively using the marks, BHARTIA CUTLER-HAMMER,CUTLER-HAMMER and CH in respect of its products/business for nearlyhalf a century and products bearing the said marks are available in every nookand corner of the country. Therefore, the Plaintiffs/their predecessor had waivedtheir rights, if at all, in the Trade Marks CUTLER-HAMMER, CH and variantsthereof.

It is not open now for the Plaintiffs to exit from India and then return after lapse of afew decades and seek to restrain the Defendant, an Indian company, which has, inthe meantime, established a goodwill/reputation in its favour. Upon realizing themagnitude of Defendant’s business and its reputation in the market vis-à-vis Plaintiffs’failure to gain market share in India, they are now attempting to usurp Defendant’sbusiness/Trade Marks in India.

39. Mr. Sethi argued that law assists those who are vigilant about their rights andnot those who sleep over their rights – “Vigilantibus Non Dormientibus AcquitasSubveniunt”. Plaintiffs are, therefore, estopped, both in law and equity from assertingrights over the statutory and proprietary rights of Defendant in the marks, BHARTIACUTLER-HAMMER, CUTLER-HAMMER and CH.

40. It is also challenged by the Defendant that the Plaintiff No. 1 has acquired thecompany Cutler-Hammer, Inc. in the year 1978, as it is the admitted position that thePlaintiffs have made the application on 28th November, 1979 on Form TM-24 forrecordal of change in ownership in the Trade Marks Registry, Kolkata. Pursuant tothe said request and order thereon dated January 23, 1980, Plaintiff No. 1 wasregistered as subsequent proprietor of the mark CUTLER-HAMMER by virtue ofCertificate of merger. Plaintiffs have not filed any documents to show that the saidregistration and/or any other marks were part of the merger.

On 31st May, 2010, Plaintiff No. 1 also filed a request on Form TM- 33 (for recordal ofchange of name) with the Registry indicating that Cutler-Hammer, Inc. is thesubsequent proprietor of the said mark and that “Cutler-Hammer, Inc.” has, by virtueof Certificate of Amendment of Certificate of Incorporation dated 20th August, 2003,changed its name to “Eaton Electrical, Inc.” After raising objection by the Defendanton 28th April, 2012, Plaintiffs vide letter dated 2nd May, 2012 filed a request with theTrade Marks Registry, Mumbai withdrawing the said request. In the said letter,Plaintiffs for the first time disclosed that there are two, Cutler-Hammer Inc.

In view of above, the Plaintiffs herein have no locus to seek an injunction against theDefendant.

41. It is also alleged by the Defendant that the balance of convenience exists infavour of Defendant, as the Defendant is a leading manufacturer and distributor ofpremium low voltage electrical and electronics products in India. The Defendant


6 3

a

b

c

d

e

f

g

h

i



presently employs approximately 1800 personnel and 150 engineers including astrong R&D department. It has over 30 sales offices with numerous “ResidentEngineer” locations strategically spread all over India and over 500 dealers andthousands of sub-dealer network to better serve its customers. The Defendant’sproducts are exported to over 25 countries, either directly, or through authorizeddistributors in jurisdictions such as Europe, Far East, Middle East, Africa and South-East Asia. In fact, on account of extensive and continuous use of the Trade Marks bythe Defendant in respect of its products/business for over 25 years, a prima facie caseexists in favour of the Defendant and against the Plaintiffs.

The following judgments are referred by the Defendant in support of its submissions:

(i) Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel & Ors.1, AIR 2006SC 3304 (para 105-110)

(ii) Power Control Appliances & Ors. v. Sumeet Machines Pvt. Ltd.2, (1994) 2 SCC448 (Paragraphs 26-34)

(iii) Atlas Cycles (Haryana) Ltd. v. Atlas Products Pvt. Ltd. & Anr.3, 101 (2002) DLT324 (High Court of Delhi-Single Judge) (Paragraphs 23, 24 & 26)

(iv) Kirloskar Proprietary Limited & Ors. v. Kirloskar Dimensions Pvt. LTD. &Ors.4, AIR 1997 KANT 1 (High Court of Karnataka-Single Judge) (Paragraphs32 & 34)

(v) Warner Bros. Entertainment Inc. & Anr. v. Harinder Kohli & Ors.5, 2008 (38)PTC 185 (High Court of Delhi-Single Judge) (Paragraph 30)

(vi) Qrg Enterprises and Anr. v. Surendra Electricals And Ors.6, 2005 (30) PTC 471(Paragraph 36)

(vii) S.P. Chengalvaraya Naidu v. Jagannath & Others7, AIR 1994 SC 853(Paragraph 7)

(viii) Prem Singh v. Ceeam Auto Industries8, AIR 1990 Delhi 233 (High Court ofDelhi-Single Judge) (Paragraphs 22 and 23)

(ix) ITC Limited and ITC Hotels Limited v. Punchgini Inc., United States Court ofAppeals, Second Circuit. Docket No. 05-0933-cv. (Page 3-6)

(x) Vee Excel Drugs and Pharmaceuticals Ltd. v. Hab Pharmaceuticals and ResearchLim.9, 2009 (39) PTC 676 (Del) (Paragraphs 10, 11, 12, 13 & 16)

1 Ed.: MANU/SC/3725/2006: 2006 (6) ALD 36 (SC) : 2007 (3) ALT 19 (SC) : (2007) 1 GLR594: JT 2006 (8) SC 393: 2006 (33) PTC 281 (SC) : (2006) 8 SCC 726: 2006 (8) SCALE 631:2007 (1) ALLMR (SC) 402: 2006 GLH (26) 369

2 Ed.: MANU/SC/0646/1994: JT 1994 (2) SC 70: 1994 (1) SCALE 446: [1994] 1 SCR 708

3 Ed.: MANU/DE/1366/2002: [2003] 47 SCL 304 (Delhi)

4 Ed.: MANU/KA/0001/1997: [1999] 96 CompCas 726 (Kar) : ILR 1996 KARNATAKA2957: 1996 (5) KarLJ 446

5 Ed.: MANU/DE/1333/2008: (2009) ILR 1 Delhi 722: 155 (2008) DLT 56: MIPR 2009 (1)274

6 Ed.: MANU/DE/0576/2005: 120 (2005) DLT 456

7 Ed.: MANU/SC/0192/1994: II (1993) BC 546 (SC) : 1994 CivilCC 131: JT 1993 (6) SC 331:1994 - 1 - LW 21: 1994 (I) OLR (SC) 201: 1994 (1) UJ 1: 1994 (1) PLJR 39: 1994 (1) BLJR216: [1993] Supp 3 SCR 422: (1994) 1 SCC 1: 1993 (4) SCALE 277: (1995) 109 PLR 293

8 Ed.: MANU/DE/0455/1990: 1990 (2) ARBLR 357 (Delhi) : (1990) ILR 2 Delhi 166: 42(1990) DLT 548

9 Ed.: MANU/DE/0830/2009

6 4

a

b

c

d

e

f

g

h

i

03832013]


(xi) Cluett Peaboy & Co. Inc. v. Arrow Apparals10, 1998 PTC (Paragraphs 30 & 31)

(xii) UTO Nederland B.V. & Anr. v. Tilaknagar Industries Ltd.11 (Paragraphs 66,67, 70, 71, 82, 90, 92, 94 and 101)

(xiii) Barcamerica International USA Trust v. Tyfield Importers, Inc., United StatesCourt of Appeals for the Ninth Circuit D.C. No. CV-98-00206-FCD Pages 4, 6 &7

(xiv) Freecycle Sunnyvale v. The freecycle Network, United States Court of Appealsfor the Ninth Circuit D.C. No. 4:06-cv-00324-CW Opinion Paragraph III [2] -Page 18818

(xv) Wander Ltd. & Another v. Antox India Pvt. Ltd.12, 1990 Suppl (1) SCC 727(Supreme Court of India - 3 Judges’ bench) Paragraph 5

(xvi) K.R. Jadyappa Mudaliar & Ors. v. KB. Venkatachalam and Anr.13, (1990) 1MLJ 119 Paragraph 19

42. The Defendant in its case is seeking, inter alia, an injunction against Plaintiffsfrom extending threats to its affiliates, customers, distributors, dealers, agents etc.,as Plaintiffs are wrongly claiming rights in the marks “CUTLER-HAMMER” andCH and issuing threats to Defendant’s dealers, distributors and agents therebyhampering its business and creating confusion in the minds of the discerningmembers and also by issuing publication of the Caution Notice for the mark“CUTLER-HAMMER”. On 6th January, 2012, Plaintiff No. 1, through its lawyers,addressed a “cease and desist” letter to Defendant calling upon it to refrain fromusing the marks CUTLER-HAMMER and “CH” (label) and/or any deceptivevariation/s thereof and termed its products as “counterfeit”.

43. The Defendant is the proprietor of the Trade Mark “CUTLER-HAMMER”registered in Class 9, registration of which dates back to 14th October, 1992. Plaintiffs’use of the mark “CUTLER-HAMMER” which is identical/deceptively similar toDefendant’s registered Trade Mark “CUTLER-HAMMER” in relation to identicalgoods/products is tantamount to infringement of Defendant’s statutory rights vestingin its registered and reputed Trade Mark “CUTLER-HAMMER”. Goodwill andreputation subsisting in Defendant’s Trade Marks/logos, CUTLER-HAMMER,BHARTIA CUTLER-HAMMER and CH any use of the said marks and/or deceptivevariations thereof would mislead and deceive the public/consumers into believingthat Plaintiffs’ business/products originate from Defendant. Thus, Plaintiffs areguilty of passing off as Plaintiffs are intentionally and blatantly violating Defendant’srights in the aforesaid Trade Marks and a case of misappropriation leading todeception amongst the members of trade and public is clearly made out againstPlaintiffs.

The balance of convenience exists in favour of Defendant, as due to long, continuousand extensive use of the marks/logos, BHARTIA CUTLER-HAMMER, CUTLER-HAMMER and CH in India for the last several decades, the same are well-knownand deserve protection. On the other hand, the Plaintiffs have recently commenceduse of “CUTLER-HAMMER” who had earlier abandoned the marks “CUTLER-HAMMER” and CH and variants thereof in India as well as internationally, thus

1 0 Ed.: MANU/MH/0083/1997: 1998 PTC (Paragraphs 30 & 31)

1 1 Ed.: MANU/MH/1827/2011

1 2 Ed.: MANU/SC/0595/1990: 1990 (2) ARBLR 399 (SC) : 1990 - 1 - LW 495: 1990 - 1 - LW498: 1991 (11) PTC 1 (SC)

1 3 Ed.: MANU/TN/0405/1988: (1990) 1 MLJ 119


6 5

a

b

c

d

e

f

g

h

i



they have no authority/justification to assert rights over the same. Use of the aforesaidmark by Plaintiffs is with the sole intention of riding upon Defendant’s fame andgoodwill garnered over the years.

44. An irreparable harm and injury is being suffered by Defendant by virtue of (i)publication of Caution Notice by Plaintiff No. 1 claiming exclusivity over the markCUTLER-HAMMER; (ii) issuance of threats to Plaintiff/its dealers/distributors;and (iii) Plaintiffs’ recent commencement of use of the mark “CUTLER-HAMMER”which is identical/deceptively similar to Defendant’s registered and well-knownTrade Marks, BHARTIA CUTLER-HAMMER, CUTLER-HAMMER and CH.Plaintiffs being in the same trade and business as Defendant, it will cause irreversibledamage to the goodwill, fair name, reputation and integrity of Defendant, itsbusinesses and the much renowned and well-known Trade Marks/logos BHARTIACUTLER-HAMMER, CUTLER-HAMMER and CH.

45. In case, pleadings of both the parties are read, it is not disputed by the Defendantthat Trade Marks CUTLER-HAMMER and the device CH are well known TradeMarks, there would be confusion and deception if both the parties are allowed to usethe same Trade Marks. The Defendant has also not disputed the facts that two setsof Trade Marks are same and are being used by both parties in relation to sameproduct. The Defendant has also not denied that the Defendant entered into anagreement “Registered User Agreement” bearing the said Trade Marks and theDefendant has filed the applications for registrations of the same very Trade Markswhich were earlier being used as a permissive-use under the licence agreements.The Plaintiffs’ oppositions to the various applications for registration filed by theDefendant are pending. The main case of the Defendant is that after breaking relationbetween the parties, the Defendant has been using the same very Trade Marks forthe last 25 years within the knowledge of the Plaintiffs. The Defendant has acquiredunique and independent goodwill and reputation of Trade Marks in India andabroad. The Plaintiffs on the other hand abandoned their Trade Marks as some ofTrade Marks are not renewed. The Plaintiffs have not been using the Trade Marks inIndia and other parts of the world. The Defendant is the registered proprietor ofTrade Mark logo of CH in Class 9 as on 14th October, 1992. The Plaintiffs areunnecessary harassing the Defendant by extending their threats by various ways.Therefore, the Plaintiffs are not only entitled for injunction prayed for rather theyshould be restrained from extending their threat as prayed in the application forinjunction filed by the Defendant.

46. In order to decide these two applications, the following issues are to be consideredby the Court:

i) Whether the Defendant is infringing the registered mark CUTLER-HAMMER.

ii) Whether the Defendant is passing off its goods as that of the Plaintiffs’.

iii) Whether the Defendant being earlier permissive user of Trade Marks areentitled to claim the proprietorship rights after the expiry of period of licenceagreement and are entitled to use the same Trade Marks.

iv) Whether the Plaintiffs are entitled for interim injunction at this stage despiteof delay, latches, acquiesces and waiver as per plea raised by the Defendant.

v) Whether the Defendant who is also holding the registration of logo markCH in Class 9 as of 14th October, 1992 can be retrained by this Court.

vi) Whether the Defendant is entitled for injunction against the Plaintiffs in itsapplication being I.A. No. 4318/2012 restraining the Plaintiffs for extending

6 6

a

b

c

d

e

f

g

h

i

03852013]


the groundless threats to the dealers and other representatives of the Defendant.

vii) In whose favour balance of conveniences lies in view of the facts andcircumstances of the present two actions filed by the parties.

47. Some relevant dates and events are necessary to mention here in order to dealwith the submissions of the parties. As per the case of the Plaintiff Cutler-HammerMfg. Co. incorporated in the year 1893. On 28th August, 1916 Eaton Corporation(Plaintiff No. 1) incorporated in Ohio. Cutler-Hammer, Inc. incorporated on6th December, 1928. Trade Mark “CUTLER-HAMMER” under No. 164435 as of8th June, 1954 in Class 9 applied by Cutler-Hammer, Inc. duly registered andrenewed up to 8th June, 2020. Eaton Corporation (Plaintiff No. 1) is recorded assubsequent registered proprietor vide order dated 23rd January, 1980. Trade MarkCH under No. 164434 as of 8th June, 1954 in Class 9 applied by Cutler-Hammer,Inc. The mark was duly registered and Eaton Corporation (Plaintiff No. 1) wasrecorded as subsequent registered proprietor by order dated 23rd January, 1980.The registration lapsed due to non-payment of renewal fee due for period 8th June,1989 to 8th June, 1996.

47.1 Trade Mark CH under No. 205632 as of 3rd November, 1961 in Class 9 appliedby Cutler-Hammer, Inc. The mark was duly registered and Eaton Corporation(Plaintiff No. 1) was recorded as subsequent registered proprietor vide order dated23rd January, 1980. The registration lapsed due to non-payment of renewal fee duefor period 3rd November, 1989 to 3rd November, 1996.

47.2 Joint venture set up between Cutler Hammer, Inc. and Indian promoters to form“Cutler-Hammer India Limited” in the year 1965. In February, 1974 Cutler-Hammer,Inc. agreed to terminate its equity interest in India and removed its foreign ownership.It is mentioned in Sales agreement dated 3rd June, 1977. Sales agreement executedbetween Bhartia Cutler-Hammer Limited and Cutler-Hammer World Trade, Inc.,Cutler-Hammer International, Cutler Hammer Export Sales Corporation. Theduration of Agreement was 10 years with restricted Trade Marks rights. On the daythe License and Technical Service Agreement was executed between Cutler-HammerWorld Trade Inc. and Bhartia Cutler-Hammer Limited. Cutler-Hammer World TradeInc. is the subsidiary of Cutler Hammer, Inc. The duration of Agreement was 10 yearswith grant of restricted Trade Marks rights. On 19th August, 1978 Cutler-HammerIndia Limited (Defendant) changed its name to Bhartia Cutler-Hammer Limited. InFebruary, 1978 Trading Name Agreement executed between Cutler-Hammer, Inc.and Bhartia Cutler-Hammer Limited where Bhartia Cutler-Hammer Limited waspermitted to use the words CUTLER-HAMMER as part of the corporate title byCutler-Hammer, Inc. in a limited way/manner and upon or in connection withgoods manufactured under the license from Cutler-Hammer, Inc.

47.3 The Registered User Agreement was between Cutler-Hammer, Inc. and BhartiaCutler-Hammer Limited. Duration of Agreement was 07 years. On 13th March, 1979Certificate of ownership and merger merging Cutler-Hammer, Inc. into EatonCorporation (Plaintiff No. 1) .

Sales agreement was executed between Bhartia International Private Limited andEaton Corporation on 13th July, 1988. Duration of Agreement was 2 years withrestricted Trade Mark rights to the Defendant.

47.4 On 10th April, 1990 License and Technical Service Agreement was executedbetween Eaton Limited and Bhartia-Cutler Hammer Limited. Foreign CollaborationApproval of 1988 was taken. Duration of Agreement was 10 years. On


6 7

a

b

c

d

e

f

g

h

i



4th September, 1990 another Sales agreement was executed between BhartiaInternational Private Limited and Eaton Corporation. Duration of Agreement was5 years with restricted Trade Mark rights to Bhartia.

47.5 On 14th October, 1992 Trade Mark “CH Control” under No. 582999 in Class 9 byapplied by Bhartia Industries Limited and is registered.

47.6 In December, License and Technical Service Agreement was executed betweenEaton Limited and Bhartia-Cutler Hammer Limited. Duration of Agreement was8 years. Foreign Collaboration Approval of 1992 is filed on record. Another ExportAgreement was executed between Bhartia Cutler-Hammer Limited & EatonCorporation on 16th March, 1994. Duration of Agreement was equal to the term ofLicense and Technical Service Agreement, 1992. On 11th October, 1994 fresh TradeMark CH (Label) under No. 642706 in Class 9 applied by Eaton Corporation.Registration lapsed due to non-payment of renewal fee for the period11th October, 2004 to 11th October, 2014. Interlocutory petition for restoration ofregistration is pending before the Registrar.

47.7 Bhartia Cutler-Hammer Limited changed its name to Bhartia Industries Ltd.w.e.f. 24th August, 1995.

47.8 On 1st March, 1996 Powerware International Private Limited was incorporated.Name was changed to Eaton Power Quality Private Limited on 10.11.2004.

47.9 On 4th April, 2003 Trade Mark “CUTLER-HAMMER” under No. 1189782 inClass 9 applied by Bhartia Cutler-Hammer Limited. It is pending as opposed. EatonCorporation filed Notice of Opposition under No. DEL- 179395 to oppose registrationof Trade Mark CUTLER-HAMMER filed by Defendant under application No.1189782. TM-6 was filed on 9th March, 2005.

47.10 On 29th May, 2007 one fresh application of registration of Trade Mark“BHARTIA CUTLER-HAMMER” under No. 1562940 in Class 9 applied by BhartiaIndustries Limited (now Defendant) . It is pending as objected by Registry itself.Bhartia Industries Limited also on 29th May, 2007 (now Defendant) filed 21 otherapplications in the Trade Marks Registry to register Trade Mark (s) BHARTIACUTLER-HAMMER, CUTLER-HAMMER and CH and variants thereof in variousClasses and the same are pending for registration.

47.11 Bhartia Industries Limited changed its name to BCH Electric Limited w.e.f.25th October, 2007. Eaton Corporation obtained ex-parte injunction against BCHElectric Limited (Defendant) restraining them to use Eaton Corporation’s TradeMarks CUTLER-HAMMER and CH in Germany on 7th April, 2011. Caution Noticepublished in the newspaper by Plaintiffs in respect of Trade Mark “CUTLER-HAMMER” under No. 164435 on 19th December, 2011 who has also issued “Ceaseand Desist” notice by Plaintiffs on 6th January, 2012.

47.12 Caution Notice published by Defendant in respect of mark CH CONTROLunder No. 582999 in Class 9 on 4th January, 2012. On 9th January, 2012, the Defendantfiled the application for cancellation in respect of Trade Mark CUTLER-HAMMERunder No. 164435 before the Registrar of Trade Marks for removal of Trade Mark onvarious grounds.

48. In view of the abovementioned facts stated in their pleadings, the Plaintiffs filedthe suit on 8th January, 2012 along with interim application against the BCH ElectricLimited being CS (OS) No. 156/2012. The Defendant filed its written Statement andreply to interim application in suit CS (OS) No. 156/2012 on 18th February, 2012. On

6 8

a

b

c

d

e

f

g

h

i

03872013]


3rd March, 2012 the Defendant also filed suit against Eaton Corporation and EatonPower Quality Pvt. Ltd. being CS (OS) No. 575/2012 in the High Court of Delhialong with I.A. No. 4318/2012 (under Order XXXIX, Rules 1 & 2 CPC) . It is alsoinformed that the Plaintiff No. 1 also filed Rectification Petition for removal ofDefendant’s Trade Mark CH Control bearing No. 582999 in Class 09 with theIntellectual Property Appellate Board, Chennai on 20th July, 2012 against theDefendant.

49. The details and status of registrations of the parties which are gathered fromtheir pleadings as well as from written submissions are mentioned below:-

PLAINTIFFS’ TRADEMARKS

i) TM :

Regd. No. : 164435

Class : 0 9

Date : 08.06.1954

Adopted : 1893 [Pg. 215/222, LOD: 19.3.12 (PublishedBook)]

User : 1919 [Pg. 22, LOD: 19.3.12 (TMJ)] & [Pg. 24/ 28, LOD:19.03.12(Affidavit]]

Appr. Off : Kolkata

STATUS : Registered (Legal Proceeding Certificate)

ii) TM :

Regd. No. : 164434

Class : 9

Date : 08.06.1954

Adopt : 1914

User : 1919 (Pg. 35, LOD: 14.05.12)

Appr. Off : Kolkata

iii) TM :

Regd. No. : 205632

Class : 9

Date : 03.11.1961

Adopted : 1960

User : Aug, 1960 (Pg. 36, LOD: 14.05.12)

Appr. Off : Kolkata

CURRENT STATUS: Removed (TMJ 1498 dated 23.08.2011)

iv) TM :

Regd. No. : 642706

Class : 9

Date : 11.10.1994

Adopted : 1994

User : Proposed to be used

Appr. Off : Kolkata

CURRENT STATUS: Removed. Notified in TMJ 1442 (26.01.2010)


6 9

a

b

c

d

e

f

g

h

i



DEFENDANT’S TRADEMARKS

i) TM :

Appln. No. : 582999

Class : 9

Date : 14.10.1992

User : 04.03.1968

Appr. Off : New Delhi

Status : Registered (Pg. 750, Def’s LOD: 17.02.12)

ii) TM : CUTLER-HAMMER

Appln. No. : 1189782

Class : 9

Date : 04.04.2003

User : 31.12.1963 (Claimed false user as Defendant incorporated in1965)


Status : Opposed

TM-5 : 22.06.2004 (Pg. 822, LOD: 18.01.2012)

TM-6 : 09.03.2005 (Pg. 827, LOD: 18.01.2012)

iii) TM : BHARTIA CUTLER-HAMMER

Appln. No. : 1562940

Class : 9

Date : 29.05.2007

User : 13.09.1977


Status : Objected

iv) TM :

Appln. No. : 1562938

Class : 9

Date : 29.05.2007

User : 13.09.1977


Status : Objected

v) TM : BHARTIA (Device)

Appln. No. : 1564729

Class : 9

Date : 04.06.2007

User : 13.09.1977


Status : Objected

vi) Other 21 Trade Marks applied by Defendant on 29th May, 2007 are pending forregistration; List of marks is filed on record.

7 0

a

b

c

d

e

f

g

h

i

03892013]


50. The Plaintiffs’ case now rest on:

i. Action of infringement filed on the basis of Plaintiffs’ statutory rights vestedin the Trade Mark CUTLER-HAMMER bearing No. 164435 in Class 09;

ii. Action of passing off filed on the basis of Common law rights which Plaintiffshave acquired in the Trade Mark CUTLER-HAMMER and variants thereofbearing No. 642706 in Class 09.

51. From the pending applications filed by the Defendant as well as registrations, itappears that the Defendant has claimed its own user of the Trade Marks also for theperiod when the Defendant was using the Trade Marks as permissive user as alicensee of the Plaintiffs.

52. Although the Defendant’s case in the written statement is also that after expiryof user agreement, the Defendant continued to use the marks with the knowledge ofthe Plaintiffs at least for the last 25 years.

53. These two versions of the Defendant are clearly contrary to each other.

54. From the material placed on record, it reveals that the Plaintiffs are prior adopterand user of Trade Marks than the alleged user claimed by the Defendant in theworld market including India as the Plaintiff No. 1 (including its predecessor) is theprior adopter and user of the Trade Mark (s) CUTLER-HAMMER and CH worldwideincluding India. The details are given as below:-

(i) The Trade Mark “CUTLER-HAMMER” was first adopted by Cutler-Hammer, Inc. in the year 1893. Cutler-Hammer, Inc. (Predecessor of PlaintiffNo. 1) first shipped its goods under Trade Mark “CUTLER-HAMMER” toIndia in the year 1919.

(ii) The Trade Mark CH was first adopted by predecessor-in-interest and titleof Plaintiff No. 1 in the year 1914 in USA and thereafter in India in respect ofgoods falling in Class 9. The Trade Mark CH was first adopted by Cutler-Hammer, Inc. (predecessor-in-interest and title of Plaintiff No. 1) in the year1960 in USA and thereafter in India in respect of goods falling in Class 9. Themark CH was superseded by new version of CH (Logo) that is CUTLER-HAMMER in the year 1994.

55. Plaintiffs’ Trade Marks were registered prior in point of time to the user claim bythe Defendant in its Trade Marks application as the Plaintiffs Trade Mark CUTLER-HAMMER bearing No. 164435 in Class 09 is registered since 8th June, 1954 when theDefendant company was not even in existence.

56. The Plaintiffs’ Trade Mark CH bearing application No. 164434 in Class 09 wasregistered since 8th June, 1954. Further, the Plaintiffs Trade Mark CH bearing applicationNo. 205632 in Class 09 was registered since 3rd November, 1961. However, the saidregistrations were removed for non-payment of renewal fee due for period 1989-1996.

57. Legal Proceeding Certificates, i.e. certified copies of registrations reveal that thePlaintiff No. 1 is the subsequent registered proprietor of the Trade Mark Cutler-Hammer bearing No. 164435 in Class 09. The said Trade Mark was initially registeredin the name of CUTLER-HAMMER, INC. In the year 1979, CUTLER-HAMMER,INC. merged with and into Plaintiff No. 1. Therefore, pursuant to request on formTM-24 dated 28th November, 1979 by erstwhile agents Remfry & Son (now Remfry &Sagar) and order thereon dated 23rd January, 1980, Eaton Corporation (PlaintiffNo. 1) became the subsequent registered proprietor as from 30th March, 1979 byvirtue of Certificate of Merger.


7 1

a

b

c

d

e

f

g

h

i



58. Defendant’s objections that the Plaintiff No. 1 has not acquired any rights in theTrade Mark CUTLER-HAMMER under No. 164435 is without any substance onaccount of following reasons:

i. Defendant has not only admitted the fact that Trade Mark CUTLER-HAMMER belongs to Plaintiff No. 1 that is Eaton Corporation but has alsopublished the fact that their products are manufactured in technicalcollaboration with CUTLER-HAMMER (which is a division of EatonCorporation) in its catalogs that were distributed to customers in India. Thesame is available on record at page 448 filed along with Defendant’s list ofdocuments on 17th February, 2012.

It is informed by Mr. Sudhir Chandra, learned Senior Counsel that the said requestfor recordal of Plaintiff No. 1 as subsequent registered proprietor of the Trade MarkCUTLER-HAMMER in application No. 164435 was filed by Remfry & Sagar whoare now Counsel for Defendant. It is not open for Counsel for Defendant to nowchallenge the said order of the Registrar which was passed on the basis of requestmade through them and on their declaration made in form TM-24 dated 28th November,1979, as law does not permit a person to both approbate and reprobate. This principleis based on the doctrine of election which postulates that no party can accept andreject the same instrument and that “a person cannot say at one time that a transactionis valid and thereby obtain some advantage, to which he could only be entitled onthe footing that it is valid, and then turn round and say it is void for the purpose ofsecuring some other advantage”. Case Law: R.N. Gosain v. Yashpal Dhir14, AIR 1993SC 352.

59. The following documents are relied upon by the Plaintiffs in order to show thatthe Plaintiffs’ Trade Marks are well-known marks and has transborder reputationwhich has spilled over to India:

a) History of Plaintiff No. 1

• Founded in 1911

• World Headquaters in Cleveland, Ohio, U.S.A.

• Regional Headquaters in Shanghai, China

• Innovation Centers in U.S.A., China and India.

• Customers in more than 150 Countries

• 73,000 employees worldwide

• 55 per cent of sales outside U.S.

b) Revenue in the year 2010

Market Value: $19.92 billion USD

Sales of all industrial segments: $13.7 billion USD

Revenue from Electrical segment alone: Market Value: $6.4 billion USD

c) Awards and Honours

• Ranked as the #1 greenest company among general industrials and#16 among the 500 largest publicly traded companies in Newsweek’s2010 U.S. Green Rankings.

1 4 Ed.: MANU/SC/0078/1993: AIR 80 1992 Supreme Court 352: 1993 (1) ALT 19 (SC) :[1992] Supp 2 SCR 257: (1992) 4 SCC 683: 1992 (2) SCALE 913: (1993) 103 PLR 184

7 2

a

b

c

d

e

f

g

h

i

03912013]


• One of five companies selected by Barron’s for its “Green Dream Team”.

• Honored among Ethisphere Institute’s “World’s Most EthicalCompanies” for fifth consecutive year

• Ranked among Corporate Responsibility Officer magazine’s “100 BestCorporate Citizens”.

• Cited in China’s Business Watch magazine’s Green Company Top 50and Fast Company Top 100.

d) Financial highlights of Electric Sector in year 2010, materials are availableon record.

• Electrical Sector $6.4 Billion USD

• Eaton Corporation Sale: $13.7 Billion USD

• Net Income: $929 Million

• Operating Earnings per share (EPS) : $ 5.61

• 58 per cent Americas $3.7 B Canada, United States, Latin America

• 42 per cent Rest of the world $2.7B Europe, Middle East, Africa, Asia Pacific

e) Registration of Trade Marks in Foreign Countries

(LOD means List of Documents)

List of Countries:

Registration Certificates for CUTLER-HAMMER: Pg 159; LOD: 18.01.2012

Registration Certificates for CH EMBLEM: Pg 374; LOD: 18.01.2012

Registration Certificates for CH CONTROL: Pg 476; LOD: 18.01.2012

II. Evidence of use of Trade Marks by Plaintiffs in foreign countries

PURCHASE ORDERS/INVOICES/BILL OF LADING

• 1989: Pg No. 189, 205, 209; LOD: 19.03.2012

• 1996: Pg No. 210; LOD: 19.03.2012

• 1999: Pg No. 191; LOD: 19.03.2012

• 2002 (CUTLER-HAMMER & CH EMBLEM) : Pg 211;

• LOD: 19.03.2012

• 2003: Pg No. 192, 193, 194; LOD: 19.03.2012

III. BROCHURES/CATALOGUES

• 1970 (CUTLER-HAMMER & CH Control) : Pg No. 39-47; LOD: 14.05.12



• 1979 (CUTLER-HAMMER & CH) : Pg No. 243-244; LOD: 19.03.2012




• 1988 (CUTLER-HAMMER) : Pg No. 694; LOD: 18.01.2012

• 1993 (CUTLER-HAMMER & CH) : Pg No. 295, 347; LOD: 19.03.2012


• 1995 (CUTLER-HAMMER & CH) : Pg 246, 248, 252, 299, 303; LOD:19.03.12

• 1996 (CUTLER-HAMMER, C-H & CH) : Pg No. 309, 321; LOD: 19.03.12


7 3

a

b

c

d

e

f

g

h

i



• 1997 (CUTLER-HAMMER & CH) : Pg No. 764, 767; LOD: 18.01.2012Pg No. 321, 329, 331, 333, 346 LOD: 19.03.12

• 1998 (CUTLER-HAMMER & CH) : Pg No. 765, 766, 768; LOD 18.01.12Pg No. 349, 359, 363, 365, 377; LOD: 18.01.2012

• 1999 (CUTLER-HAMMER & CH) : Pg No. 770; LOD: 18.01.2012 PgNo. 425, 433; LOD: 19.03.2012

• 2000 (CUTLER-HAMMER & CH) : Pg No. 772, 773, 779; LOD: 18.01.12

• 2001 (CUTLER-HAMMER & CH) : Pg No. 771, 774; LOD: 18.01.2012Pg No. 274; LOD: 19.03.2012

• 2002 (CUTLER-HAMMER & CH: Pg No. 777; LOD: 18.01.2012

• 2003 (CUTLER-HAMMER) : Pg No. 254, 257; LOD: 19.03.2012


• 2006 (CUTLER-HAMMER & CH) : Pg No. 775; LOD: 18.01.2012

• 2007 (CUTLER-HAMMER) : Pg No. 647, 655, 659; LOD: 18.01.2012 PgNo. 261; LOD: 19.03.2012

• (CUTLER-HAMMER & CH) : Pg No. 662, 758; LOD: 18.01.2012

IV. PUBLICATIONS & ADVERTISEMENTS

• 1909: Pg No. 92, LOD: 14.05.12

• 1915: Pg No. 93, LOD: 14.05.12

• 1919: Pg No. 94, LOD: 14.05.12

• 1925: Pg No. 95, LOD: 14.05.12

• 1926: Pg No. 96, LOD: 14.05.12

• 1928: Pg No. 97, LOD: 14.05.12

• 1929: Pg No. 98, LOD: 14.05.12

• 1934: Pg No. 99, 100 LOD: 14.05.12

• 1935: Pg No. 101, LOD: 14.05.12

• 1936: Pg No. 102, LOD: 14.05.12

• 1941: Pg No. 104, LOD 14.05.12

• 1957: Pg No. 106, LOD: 14.05.12

• 1960: Pg No. 107, 108 LOD: 14.05.12

• 1970: Pg No. 109, 110 LOD: 14.05.12

• 1980: Pg No. 111, 112 LOD: 14.05.12

• 1990: Pg No. 113, 114, 115 LOD: 14.05.12

• 2000, Pg No. 614 LOD: 18.01.2012, Pg No. 442, 445 LOD: 19.03.2012

• 2004, Pg No. 614, 616 LOD: 18.01.2012

• 2007, Pg No. 611 LOD: 18.01.2012

V. NEWSLETTERS/NEWSRELEASE

• 1998, Pg No. 319-320, 449 LOD: 19.03.2012

• 1999, Pg No. 451, 451A, 452, 457 LOD: 19.03.2012

• 2007, Pg No. 159 LOD: 18.01.2012

VI. PAMPHLETS/LABELS/CARTONS

Pg No. 458-465, LOD: 19.03.2012

7 4

a

b

c

d

e

f

g

h

i

03932013]


60. The following documents are referred by the Plaintiffs to show prima facie evidenceof use of Trade Marks by the Plaintiffs in India:

A. 1919-1965

Evidence:

User claimed in Trade Mark Journal No. 217 dated 16.06.1958; Page No.22, LOD: 19.03.2012

Affidavit of Mr. Paul S. Jones filed in Trade Mark CUTLER-HAMMERbearing application No. 164435: Pg. 24 LOD: 19.03.2012

B. 1965-1986 (From period of incorporation of Defendant to the expiry ofRegistered User Agreement)

The Trade Marks were used by the Plaintiffs through their licensee,Defendant.

Evidence:

Catalog of 1973-1974: Pg. 48-59; LOD: 14.05.2012

Catalog of 1979-1980: Pg. 243-244; LOD: 19.03.2012

C. Plaintiffs have been using the Trade Mark CUTLER-HAMMER in Indiasince the year 1919. The use of Trade Marks by Plaintiffs prior to the year1978 is not disputed by the Defendant. Defendant in their pleadings aswell as arguments alleged non-use on part of Plaintiffs since the year1978.

61. It is not denied by the Defendant about the execution of Registered UserAgreement dated 19th February, 1979 and its pleadings. The record also reveals thatan application in the prescribed manner was filed in the Trade Mark Registry.However, there is no evidence on record to show whether the said application forregistration of Registered User Agreement was accepted or not.

It is argued by Mr. Sudhir Chandra that since the Plaintiff No. 1 company had a basein USA, therefore, Defendant (which is an Indian Company) was to complete all thelegal formalities of registration of Registered User Agreement at the Trade MarksOffice through the Trade Mark agent Remfry & Sons (now Remfry & Sagar) . Entiredocumentation (Form TM-28, TM-48 and Affidavit to that effect) required to registerthe Registered User Agreement dated 19th February, 1979 was duly completed byPlaintiff No. 1 as well as Defendant.

Both, Cutler-Hammer, Inc. and Defendant authorized Remfry & Sons (now Remfry &Sagar) to act as an agent for entering Bhartia Cutler-Hammer Limited as a RegisteredUser. Further, the filing and registration of the Registered User Agreement was left toDefendant. As M/s. Ramfry and Sagar is now appearing as attorney on behalf of theDefendant they may be in better position to inform the Court about its outcome. However,at present, it is immaterial if the application for user agreement is not accepted or not asthe Defendant has admitted the factum of user agreement between the parties. He reliedupon License and Technical Service Agreement of 1977 which provides that;

Section 7.3 The parties acknowledges that as at the inception of this Agreement,Licensee (under its prior name, Cutler-Hammer India Limited) is an authorizedand recorded “Registered User” of the following proprietary Trade Marks ofCutler-Hammer, Inc.....

It is also contended by the Plaintiffs that advertisement material, Brochures, Catalogsand Price lists were supplied by Plaintiff No. 1 to Defendant and its attorney for theperiod 1986-1995.


7 5

a

b

c

d

e

f

g

h

i



62. The following is evidence relied upon by the Plaintiff from the year 1995 onwards:

1. INVOICES

• 1995 Proforma Invoice: Pg No. 803, Def’s LOD

• Price query by Indian Customer: Pg No. 790, 792 LOD: 18.01.2012

• Shipping Invoice (CUTLER-HAMMER) : Pg. 785, 786 LOD: 18.01.12

2. PRODUCT CATALOGS from the year 1997 onwards are also uploaded onweb site www. cutler-hammer.eaton.com

• 1997 (CUTLER-HAMMER & CH) : Pg No. 764,; LOD: 18.01.2012 PgNo. 329, 331, 333, 346 LOD: 19.03.12

• 2001 (CUTLER-HAMMER & CH) :Pg No. 274; LOD: 19.03.2012


3. PURCHASE ORDERS

• 2009: Pg No. 176; LOD: 19.03.2012

• 2010: Pg No. 169, 170, 171, 175, 186; LOD: 19.03.2012

• 2011: Pg No. 139, 141, 150, 151, 152, 153, 166, 167, 195; LOD: 19.03.2012Pg No. 133 (Indirect) LOD: 19.03.2012

4. CORRESPONDENCE OF EATON WITH INDIAN CLIENTS IN RESPECTOF GOODS

• 1997: Pg No. 810, Def’s LOD

• 1999: Pg No. 813, 814, 815, Def’s LOD

5. CALENDARS

• 2011, Pg No. 617 LOD: 18.01.2012

• 2012, Pg. No. 842, Def’s LOD

6. INTENTION TO INCREASE BUSINESS IN INDIA BY PLAINTIFF NO. 1TO THE KNOWLEDGE OF DEFENDANT

• 1995: Pg No. 808 Def’s LOD

7. USE OF TRADE MARKS BY PLAINTIFFS TO THE KNOWLEDGE OFDEFENDANT

• 1993: Pg No. 788, Def’s LOD

• 1994: Pg No. 789, 801, 802 Def’s LOD

• 1995: Proforma Invoice: Pg No. 803, 809 Def’s LOD

• 1996: Pg No. 812 Def’s LOD

• 1997: Pg No. 810, 811 Def’s LOD

8. ACKNOWLEDGEMENT/ADMISSION ON PART OF DEFENDANT THATTRADE MARK CUTLER-HAMMER BELONGS TO PLAINTIFF NO. 1

• 1994: Pg No. 791, 792 Def’s LOD

• 1997: Pg. 69 onwards; LOD: 19.03.2012

63. It is not denied by the Plaintiffs that the Defendant was set up in the year 1965as a result of the joint venture between the Plaintiffs predecessor-in-interest andtitle, Cutler-Hammer, Inc. and some Indian partners in the name of CUTLER-HAMMER INDIA LIMITED Name of Defendant Company was later changed toBhartia Cutler-Hammer Ltd. in the year 1977. Further, it was changed to BhartiaIndustries Limited in the year 1995. With effect from 25th October, 2007, the namewas again changed to BCH Electric Limited

7 6

a

b

c

d

e

f

g

h

i

03952013]


Mr. Chandra submits that from the year of its incorporation, Defendant entered intovarious agreements with Plaintiffs’ predecessor-in-interest and title, Cutler-Hammer,Inc. to flourish its business in India and thereafter with Plaintiff No. 1.

The Agreements executed between the parties are as follow:

I. Sales Agreement 1977-1988

• Executed between BHARTIA CUTLER-HAMMER LIMITED (referred asIndia in the agreement) and CUTLER-HAMMER WORLD TRADE, INC.,CUTLER-HAMMER INTERNATIONAL AND CUTLER-HAMMEREXPORT SALES CORPORATION (referred as “International” in theagreement) .

• Term of the agreement is 10 yrs that is from the year 1977 to 1988.

• As per the agreement, Defendant was appointed as an agent in India tosolicit the sale of products manufactured by CUTLER-HAMMER group ofcompanies outside India.

• Clause III of the Agreement deals with rights of CUTLER-HAMMER groupof companies vested in their Trade Marks/trade names in general. Itprovides that:

i. The Defendant agreed that nothing herein shall be construed to vestany rights of ownership in any trade names or Trade Marks which arethe registered property of the Plaintiffs or any of its affiliated companies;

ii. The Defendant further agreed not to do anything which will impairPlaintiffs’ ownership of such trade names or Trade Marks;

iii. The Defendant further agreed that it will not use such trade names orTrade Marks to indicate or imply in any way that the Defendant ispart of Plaintiffs.

• Relevant Clauses of the Agreement are Clause I (1) , I (6) , II (3) and Clause III.

II. License and Technical Service Agreement 1977-1988

• Executed between Cutler-Hammer World Trade Inc. (wholly ownedsubsidiary of Cutler-Hammer, Inc.) and Bhartia Cutler-Hammer Limited.

• Term of the agreement is 10 years that is from the year 1977 to 1988.

• Article VII of Agreement specifically deals with Plaintiffs’ Trade Marks

CUTLER-HAMMER bearing No. 164435, bearing No. 1664434 &

bearing No. 205632.

• Section 7.1 of the agreement provides that 'It is expressly understood thateven when use is authorized, Licensee shall not thereby secure any rightsin the said trade names and Trade Marks’.

• In Section 7.3 of the agreement, parties acknowledged that at the inceptionof this agreement, Licensee (under its prior name, CUTLER-HAMMERINDIA LIMITED) was an authorized and recorded Registered User of theregistered Trade Marks of Cutler-Hammer, Inc. bearing No. 164435, 164434& 205632.

• Licensee was granted non-exclusive right to use the abovementionedregistered Trade Marks for all of the goods of said registration in Indiaonly in manner as set forth in the Section 7.3 of the agreement.

• As per Section 7.7 of the agreement, it was agreed between the parties that;


7 7

a

b

c

d

e

f

g

h

i



i. Licensee shall not apply or obtain registration of any Trade Marks or tradenames mentioned above;

ii. Licensee shall not challenge the validity or contest the right of the proprietorthereof to obtain registration of the abovementioned or trade namesmentioned above.

• Relevant articles of the agreement are Article VII, Article VIII (Section 8.5).

III. Trading Name Agreement 1979

• Executed between Cutler-Hammer, Inc. and Bhartia Cutler-Hammer Ltd.

• It is not a term agreement.

• It was agreed between the parties that Cutler-Hammer, Inc. is the owner ofthe words CUTLER-HAMMER when used as a registered or unregisteredTrade Mark, corporate title or trading style in the field of activity in whichparties are engaged.

• Defendant was granted the right to use the words CUTLER-HAMMER aspart of the corporate title by Cutler-Hammer Inc. in a restricted manneronly upon or in connection with goods manufactured under the licensefrom Cutler-Hammer, Inc.

• The Agreement ratifies the use of the words CUTLER-HAMMER by BhartiaCutler-Hammer Limited prior to its date of incorporation and formally setforth the terms and conditions under which Bhartia Cutler-HammerLimited was permitted to use the words “CUTLER-HAMMER”.

• Relevant clauses in the agreement are Clause 1 (a) and (e) .

IV. Registered User Agreement 1979-1986

• Executed between Cutler-Hammer, Inc. and Bhartia Cutler-Hammer Ltd.on 19th February, 1979.

• The term of the agreement is 7 years that is from the year 1979 to 1986.

• Defendant was granted permission to use the following registered TradeMarks of Cutler-Hammer, Inc. for all of the goods of said registration inIndia:

• Trade Mark under No. 164434.

• Trade Mark “CUTLER-HAMMER” under No. 164435.

• Trade Mark under No. 205632.

• Defendant agreed to use the said Trade Marks only in manner as set forthin the Clause 1 to 5 of the agreement and only as long as the goods aremanufactured in accordance with the standards, specifications andinstructions approved by Cutler-Hammer, Inc.

• Defendant was allowed to use the Trade Mark “CUTLER-HAMMER” underNo. 164435 in conjunction with the word Bhartia in the particular manner

that is (hereinafter referred to as “impugned arrangement”).

Whereas the other two Trade Marks were allowed to be used along withthe legend “Made in India by Bhartia Cutler-Hammer Limited, a whollyIndian owned Licensee of Cutler-Hammer Inc, U.S.A.”

7 8

a

b

c

d

e

f

g

h

i

03972013]


Clause 7: “User recognizes the Trade Mark Owner’s title to the said TradeMarks and shall not at any time do or suffer to be done any act or thingwhich will in any way impair the rights of the Trade Mark Owner in or tosaid Trade Marks. It is understood that User shall not acquire and shallnot claim any title to the said Trade Marks by virtue of the license grantedto user or through user’s use of the said Trade Marks, it being the intentionof the parties that all use of said Trades Marks by user shall at all timesinure to the benefit of the Trade Mark Owner.”

It is evident from the above that Defendant admitted and acknowledgedthe proprietorship of Cutler-Hammer, Inc. in respect of the Trade Marks164435, 164434 and 205632. Defendant also agreed in Clause 12 that“....when said Trade Marks are used by user in relation to user’s goods, theTrade Marks shall be so described as to clearly indicate that they are theTrade Marks of the Trade Mark owner and that they are being used onlyby way of permitted use by the Trade Mark owner.”

Relevant clauses of the agreement are Clauses 1 to 7 and 11.

V. Sales Agreement 1988-1990

• Executed between BHARTIA INTERNATIONAL PRIVATE LIMITED (BI)and Eaton Corporation (Plaintiff No. 1) on 13th July, 1988.

• See Defendant’s admission: Para 4 (a) at Pg. 7 of the Reply.


• As per the agreement BI was appointed as Plaintiff No. 1’s commissionagent in India for products manufactured by Plaintiff No. 1 outside India.

• As per Clause I (1) of the agreement the said products included EatonCutler-Hammer products (For reference see Exhibit A of the agreement) .

• In Clause I (6) of the agreement, Plaintiff No. 1 agreed to supply advertisingmatter, technical brochures, catalogs and price lists to BI.

• Clause III (1) of the agreement talks of proprietary rights of Plaintiff No. 1vested in their Trade Marks/trade names.

• Relevant clauses in the agreements are Clause I (1) , I (6) and III (1) .

VI. Sales Agreement 1990-1995

• Executed between BHARTIA INTERNATIONAL PRIVATE LIMITED (BI)and Eaton Corporation (Plaintiff No. 1) on 4th September, 1990.



• As per the agreement, BI was appointed as Plaintiff No. l’s commissionagent in India for products manufactured by Plaintiff No. 1 outsideIndia.

• As per Clause I (1) of the agreement the said products included EatonCutler-Hammer products (For reference see Exhibit A of the agreement) .

• In Clause I (6) of the agreement, Plaintiff No. 1 agreed to supply advertisingmatter, technical brochures, catalogs and price lists to BI.

• Clause III (1) of the agreement talks of proprietary rights of Plaintiff No. 1vested in their Trade Marks/trade names.

• Relevant clauses in the agreements are Clause I (1) , I (6) and III (1) .


7 9

a

b

c

d

e

f

g

h

i



VII. License and Technical Service Agreement 1992-2000

• Executed between Eaton Limited and BHARTIA CUTLER-HAMMERLIMITED on 11.12.1992.



• The said agreement provides exclusive right and license to manufactureand assemble the various designs of LICENSED PRODUCTS under theKNOW-HOW and TECHNICAL DATA in India.

• Article VII of the agreement provides for license fee and Royalties.Accordingly, royalties were paid by Defendant to Plaintiff No. 1.

VIII. The Export Agreement 1994-2000

• Executed between Bhartia Cutler-Hammer Limited and Eaton Corporationon 16th March, 1994.

• Term of the agreement is equal to the term of the License and TechnicalService Agreement dated 11th December, 1992 that is till the year 2000.

• As per the agreement the Plaintiff No. 1 was appointed as agent to promotesales of its licensed products manufactured by Bhartia Cutler-HammerLimited outside India.

• It was a commercially restricted agreement executed by Plaintiff No. 1 tocontrol prices of the products manufactured by Bhartia Cutler-HammerLimited using Plaintiffs know how and technical data.

64. It is not a case of the Defendant that they were not aware of proprietorship ofPlaintiffs over the Trade Marks in question. Despite acknowledging and admittingthe proprietary rights of Plaintiffs in the Trade Mark CH and further expresslyagreeing not to apply for registration of the said marks in various agreementsexecuted between the parties, the Defendant dishonestly adopted the impugnedmark CUTLER HAMMER and applied for registration thereof in the year 1992under No. 582999. The same is registered by committing fraud on the Registry andmaking false claim of proprietorship and user thereof. The rectification for removalof impugned Trade Mark from the Register is filed by Plaintiff No. 1 on 20th July,2012 and the same is admitted by Intellectual Property Appellate Board andnumbered as ORA/269/2012/TM.DEL. Defendant had no plausible explanation/justification to adopt the marks, CUTLER-HAMMER, BHARTIA CUTLER-HAMMER and CH and/or variants thereof. Even after obtaining registration ofthe mark “CH (logo) ” with the word CONTROL, the Defendant was using themark CH without using the word CONTROL below the logo as appeared fromregistration obtained by the Defendant who has also applied for registration of

Trade Mark in various Classes which is similar to Plaintiffs’ Trade Mark CH.

65. Despite acknowledging and admitting the proprietary rights of Plaintiffs overthe Trade Mark CUTLER HAMMER and further expressly agreeing not to apply forregistration of the said mark in various agreements executed between the parties,the Defendant dishonestly adopted the impugned mark CUTLER HAMMER andapplied for registration thereof in the year 2003. The Plaintiff No. 1 filed notice ofopposition opposing registration of the impugned mark subject matter of ApplicationNo. 1189782 on/or around 23rd June, 2004 with the Registrar of Trade Marks at NewDelhi. The said opposition proceedings are pending.

8 0

a

b

c

d

e

f

g

h

i

03992013]


In the year 2007, Defendant made another severe attempt to register identical and/or deceptively similar Trade Mark (s) BHARTIA CUTLER-HAMMER, CUTLERHAMMER and CH and silently filed 21 applications in various Classes with anintention to obtain proprietary rights over the said impugned marks which areidentical/deceptively similar to Plaintiff’s Trade Marks in disguise. The saidapplications are pending for registration. Surprisingly, out of 21 applications filedin the year 2007, only one application for registration of Trade Mark CUTLERHAMMER is in relation to goods of Defendant’s manufacture and sale that is Class09. Rest of the applications is filed in respect of goods/services not related toDefendant’s business.

66. As per Clause III of Sales Agreement 1977-1988 the Defendant agreed not toclaim its rights of ownership in Trade Marks and Trade Marks which are propertyof the Plaintiffs and the Defendant will not impair Plaintiffs’ ownership of suchTrade Marks and will not use to indicate in anyway that the Defendant is part of thePlaintiffs. Similarly, in the License and Technical Service Agreement as per 7.7 ofthe Agreement, it was agreed that the licensee shall not apply or obtain registrationof any Trade Marks and shall not challenge the validity or contest the right of theproprietor and in the user agreement between 1979-1986 in Clause 7 the Defendantrecognized the right the Trade Marks of the owner and the Defendant shall notacquire and shall not claim any title to the said Trade Marks by virtue of the licencegranted to the Defendant and user shall at all times have the benefit of the TradeMark owner.

67. However, the Defendant despite of abovementioned stipulations which are ofthe binding clauses has acted absolutely opposite to the agreements intentionallyand deliberately as appeared from its acts and deeds. The details of wrongful act ofthe Defendant are given as under:-

(i) The Defendant has claimed the proprietorship right in the Trade MarksRegistry and placed evidence in order to obtain the registration duringthe period when the Defendant was licensee.

(ii) The Defendant has made every effort to impair the Trade Marks of thePlaintiffs.

(iii) The Defendant is claiming by giving its indication that the Defendant isstill part of the Plaintiffs which is untrue.

(iv) The Defendant applied for registration and obtained registration of logo“CH” knowingly, intentionally and fraudulently which is contrary toClause 7.7 of the Licence and Technical Service Agreement.

(v) The Defendant has challenged the registration of the Plaintiffs contraryto the agreements despite of recognizing the ownership rights of thePlaintiffs. They have claimed their independent rights by acquiring userwhich is in use to the Plaintiff.

(vi) The Defendant is claiming independent user in order to become proprietorof the same very Trade Marks.

68. A mere justification is not enough that as the Plaintiffs have not used the TradeMarks in India, the Defendant is entitled to use the same Trade Marks who can alsoclaim proprietary rights independently as there is delay on the part of the Plaintiffs.

69. It is necessary here to discuss the similar aspect which has been dealt with by theDivision Bench of this Court and the Supreme Court who have rejected the similarsubmissions of the Defendant in same situation. The judgments are as follow:-


8 1

a

b

c

d

e

f

g

h

i



(i) In the case of Velcro Industries v. Velcro India Ltd. 1993 (1) Arb. LR 465, alearned Single Judge of the Bombay High Court (S.N. Variava, J.) rejected acontention made on behalf of the Defendants therein that they are entitled tocontinue use of Velcro as a part of their corporate name because they haveindependently developed a reputation in India. It was noted that theDefendants in that case were merely acting as licensees and even if theagreement between the parties did not provide that on termination of the license,the Defendants would cease to use Velcro as a part of their trade name, thatwould make no difference, since the Trade Mark Velcro is a registered TradeMark of the Plaintiff and to allow the Defendants to use it as a part of theircorporate name is to permit them to give an impression to the public that theyare still connected with or have a license from the Plaintiffs.

70. Transborder Reputation

(i) In the case of N.R. Dongre v. Whirlpool Corporation15, 1996 (16) PTC 585, theAppellants got registered the mark “Whirlpool” in respect of washingmachines. The Whirlpool Corporation filed a suit for passing off action broughtby the Respondents to restrain the Appellants from manufacturing, selling,advertising or in any way using the Trade Mark “Whirlpool” of their product.It was held that the passing off an action was maintainable in law even againstthe registered owner of the Trade Mark. It was held that the name of“Whirlpool” was associated for long with the Whirlpool Corporation andthat its trans-border reputation extended to India. It was held that the mark“Whirlpool” gave an indication of the origin of the goods as emanating fromor relating to the Whirlpool Corporation. It was held that an injunction was arelief in equity and was based on equitable principles. It was held that theequity required that an injunction be granted in favour of the WhirlpoolCorporation. It was held that the refusal of an injunction could cause irreparableinjury to the reputation of the Whirlpool Corporation, whereas grant of aninjunction would cause no significant injury to the Appellants who could selltheir washing machines merely by removing a small label bearing the name“Whirlpool”.

(ii) In the case of Milment Of the Industries & Ors. v. Allergan Inc16, 2004 (28) PTC585 (SC) , the Apex Court in para 9 and 10 of the judgment held as under:

9. We are in full agreement with what has been laid down by this Court.Whilst considering the possibility of likelihood of deception or confusion,in present times and particularly in the field of medicines, the Courtsmust also keep in mind the fact that nowadays the field of medicine is ofan international character. The Court has to keep in mind the possibilitythat with the passage of time, some conflict may occur between the use ofthe mark by the Applicant in India and the user by the overseas company.The Court must ensure that public interest is in no way imperiled. Doctorsparticularly eminent doctors, medical practitioners and persons orCompanies connected with medical field keep abreast of latest

1 5 Ed.: MANU/SC/1223/1996: 1996 VI AD (SC) 710: 1996 (2) ARBLR 488 (SC) : JT 1996 (7)SC 555: [1996] Supp 5 SCR 369: (1996) 5 SCC 714: 1996 (6) SCALE 276

1 6 Ed.: MANU/SC/0512/2004: (2005) 1 CALLT 1 (SC) : [2004] 121 CompCas 486 (SC) :2004 (170) ELT 260 (S.C.) : [2004 (3) JCR 175 (SC) ]: 2005 - 2 - LW 29: [2004] Supp (2)SCR 586: 2004 (75) DRJ 109: (2004) 12 SCC 624: 2004 (5) SCALE 772: 2004 (5) ALLMR(SC) 722

8 2

a

b

c

d

e

f

g

h

i

04012013]


developments in medicine and preparations worldwide. Medicalliterature is freely available in this country. Doctors, medical practitionersand persons connected with the medical field regularly attend medicalconferences, symposiums, lectures etc. It must also be remembered thatnowadays goods are widely advertised in newspapers, periodicals,magazines and other media which is available in the country. This resultsin a product acquiring a worldwide reputation. Thus, if a mark in respectof a drug is associated with the Respondents worldwide it would lead toan anomalous situation if an identical mark in respect of a similar drugis allowed to be sold in India. However one note of caution must beexpressed. Multinational corporations, who have no intention of comingto India or introducing their product in India should not be allowed tothrottle an Indian Company by not permitting it to sell a product inIndia, if the Indian Company has genuinely adopted the mark anddeveloped the product and is first in the market. Thus the ultimate testshould be who is first in the market.

10. In the present case, the marks are the same. They are in respect ofpharmaceutical products. The mere fact that the Respondents have notbeen using the mark in India would be irrelevant if they were first in theworld market. The Division Bench had relied upon material which primafacie shows that the Respondents product was advertised before theAppellants entered the field. On the basis of that material the DivisionBench has concluded that the Respondents were first to adopt the mark.If that be so then no fault can be found with the conclusion drawn by theDivision Bench.

(iii) Yet in another landmark judgment by the Supreme Court in the case ofBaker Hughes Ltd. & Anr. v. Hiroo Khushlani & Anr.17 2004 (29) PTC 153 (SC)dealt with the same aspect and held as under in paras 3 to 6:

3. In 1994 Appellants sold their share in the 2nd Respondent Companyand called upon the 2nd Respondent Company to stop use of the name“Baker”. As 2nd Respondent refused to delete the name “Baker” from itsCorporate name the Appellants filed the suit seeking an injunctionagainst the Respondents from using the name “Baker” as part of theircorporate name or in any other manner. In the suit, the learned SingleJudge granted an ad-interim injunction restraining the 2nd Respondentfrom using the name “Baker” as part of their corporate name. The2nd Respondent-company has also been directed to make an applicationto the Registrar of Companies for deleting the name 'Baker from itscorporate name. In granting the above injunction, the learned Single Judgekept in mind well established principles which govern grant of injunctionin an action of passing off. The learned Single Judge held that theAppellants had trans-border reputation and goodwill in the name inIndia. It was held that use of this name by the Respondents is likely tocause confusion and deception and that the Appellants would sufferdamages if the interim relief was not granted.

1 7 Ed.: MANU/SC/0719/2004: (2004) 12 SCC 628: 2004 (6) SCALE 251


8 3

a

b

c

d

e

f

g

h

i



4. The Division Bench, by the impugned Judgment, has set aside theorder of the learned Single Judge and vacated the interim injunction. Themain ground on which the interim injunction has been vacated is thatthe right of the Appellants (herein) under Clause 8.3 of the Agreementdated 21st Decemebr, 1984 was not enforceable. The Division Bench heldthat the Agreement had not been placed before the Government of Indiaand was thus illegal and unenforceable.

5. Prima facie, it appears to us that the Division Bench has erroneouslyinterfered with the well reasoned judgment of the learned Single Judge.The application, which had been made by the 1st Respondent to theGovernment of India, itself shows that the Appellants had a very hugeturnover, that they are regularly supplying equipment to parties inIndia. As per this letter they had reputation in India. At the interimstage this admission of the 1st Respondent had to be taken note of. The2nd Respondent-company could thus use the name “baker” only ifthere was permission, or an Agreement, by which the Appellantspermitted them to use the name “Baker”. In the absence of any suchAgreement or permission the 2nd Respondent would be guilty ofpassing off its goods as those of the Appellants and an injunctionwould have to follow on basis of well-settled principles governinggrant of injunction. It has to be remembered that the goods are identicalThe Technical Know-how Agreement does not contain any clausewhich permits user of the name “Baker”, nor does the Technical Know-how Agreement contain any provision for grant of a 40 per centshareholding in the 2nd Respondent-company. These provisions arecontained only in the Agreement dated 21st December, 1984. The factthat the 2nd Respondent-company could be incorporated with the name“Baker” as part of its corporate name and the fact that 40 per centshareholding was given to the Appellants in the 2nd RespondentCompany prima facie shows that the Agreement dated21 st December, 1984 was acted upon and accepted even by the2nd Respondent. The minutes of the Board Meeting held on3rd September, 1993 also prima facie shows that even on this date theRespondents accepted this Agreement to be binding.

6. The execution of this Agreement is not denied by the Respondents.What has been claimed is that this Agreement was not to be acted uponand/or that as this Agreement was not put before the Government ofIndia, the Agreement was illegal and unenforceable. This argumenthas found favour with the Division Bench. Prima facie, it appears to usthat this is a self defeating argument If the Agreement was not to beacted upon, then there is no right in the 2nd Respondent company to usethe name “Baker”. In spite of questions from this Court no otherpermission or licence to use the name “Baker” could be shown to us. Ifthe Agreement is unenforceable then the entire Agreement isunenforceable. In that case the 2nd Respondent has got no right to usethe name “Baker”. On the reasoning that this Agreement was illegaland unenforceable the interim injunction should have been confirmed.The goods being identical there was likelihood of confusion and/ordeception if the Respondents were permitted to carry on using thisname.

8 4

a

b

c

d

e

f

g

h

i

04032013]


(iv) In the case of Daimler Benz Aktiegesellschaft and Another v. Hybo Hindustan18,AIR 1994 Delhi 239, a learned Single Judge of this Court, while commentingupon the trans-border reputation of trade name “Benz”, held as follows:

In my view, the Trade Mark law is not intended to protect a person whodeliberately sets out to take the benefit of somebody else’s reputationwith reference to goods, especially so when the reputation extendsworldwide. By no stretch of imagination can it be said that use for anylength of time of the name “Benz” should be not objected to.

(v) In Apple Computer Inc. v. Apple Leasing and Industries, (I.A. No. 7678 of 1989in Suit No. 2751 of 1989, decided on 10th May, 1991) it was held by this Courtthat in order to prove a prima facie case for grant of interim injunction it was notnecessary for the Plaintiff in a passing off action to prove that it was carryingon business in India. For the grant of interim injunction it was enough that thePlaintiff had a reputation in India. In that case the principle laid down inBudweiser’s case (1984) FSR 413, namely, that unless there was a businessactivity in the place where passing off was alleged to have taken place, actionfor passing off could not be maintained, was departed from. It was alsorecognised that there was a strong trend to prevent deception of the public,whether it was deliberate or innocent. This principle is more relevant to Indiabecause there is a greater need to catch up with the more advanced countriesin the matter of business enterprises including manufacture of products andservices. This an only be possible when a foreign trader has the confidencethat its Trade Mark/name will be safe and will not be imitated. Transfer oftechnology and collaboration will get a big boost if unfair competition is avoidedand nobody is allowed to thrive at somebody else’s reputation and goodwill.

(vi) The Madras High Court in Haw Par Bros. International Ltd. v. Tiger Balm Co.(P) Ltd. and Others19, 1996 PTC (16) (DB) 311, on review of several decisions ofthe various Courts agreed with the view taken by this Court on the question oftrans-border reputation. In Kamal Trading Co. v. Gillette UK Ltd., Middle Sex,England, (1988) 1 PLR 135, the principle laid down by the Budweiser’s case wasnot accepted by a Division Bench of the Bombay High Court. The BombayHigh Court expressing its view held as follows:

It is necessary to note that the goodwill is not limited to a particularcountry because in the present days, the trade is spread all over theworld and the goods are transported from one country to another veryrapidly and on extensive scale. The goodwill acquired by themanufacturer is not necessarily limited to the country where the goodsare freely available because the goods though not available are widelyadvertised in newspapers, periodicals, magazines and in other medias.The result is that though the goods are not available in the country, thegoods and the mark under which they are sold acquires wide reputation.Take for example, the televisions, and Video Cassette Recordermanufactured by National, Sony or other well known Japanese concerns.These televisions and V.C.Rs. are not imported in India and sold in openmarket because of trade restrictions, but is it possible even to suggest thatthe word “National” or “Sony” has not acquired reputation in this

1 8 Ed.: MANU/DE/0035/1994: 1994 RLR 79

1 9 Ed.: MANU/TN/0526/1995


8 5

a

b

c

d

e

f

g

h

i



country. In our judgment, the goodwill or reputation of goods or marksdoes not depend upon its availability in a particular country.

Plea of Defendant delay, latches, waiver and acquiesces on part of thePlaintiff in bringing the suit for infringement/passing off

71. It is not denied by the Defendant that the Plaintiffs (including its predecessor)had a business relationship with Defendant since its incorporation in the year 1965.The Plaintiffs and their predecessor entered into several agreements with theDefendant whereby Defendant was given right to use Plaintiffs’ Trade Marks subjectto certain conditions and limitations.

71.1 It is a matter of record that the last License and Technical Service Agreementwith Defendant was executed on 11th December, 1992 and had a term of 8 years andexpired in the year 2000. This implies that Defendant had permission to use thewords CUTLER-HAMMER till the year 2000.

71.2 In the year 2004, Plaintiff No. 1 filed Notice of Opposition to Defendant’sapplication for registration of mark CUTLER-HAMMER bearing No. 1189782 inClass 09. On opposition being filed by the Plaintiffs, Defendant was put to notice inthe year 2004 itself. Any use after the notice being sent to Defendant was at its ownrisk and consequence. Amar Singh Chawla v. Rajdhani Roller Flour Mills Pvt Ltd., 1990PTC 220.

71.3 The Plaintiff No. 1 opposing registration of the mark CUTLER-HAMMER(Device) subject matter of Application No. 1189782, stopped using the impugnedarrangement/marks openly. It was only in the year 2011 at Hanover Fair, GermanyPlaintiff found that the Defendant’s goods were being displayed in the fair under

the Trade Mark CUTLER-HAMMER and/or

71.4 Thereafter, Plaintiff approached a District Court, Braunschweig, Germany andobtained a relief of temporary injunction on 7th April, 2011 against Defendant

restraining them to use the Trade Mark CUTLER-HAMMER and/or .

71.5 Thereafter, the Defendant vide its letter dated 23rd August, 2011 gave disclosureof information and indemnification of damages to avoid further litigation. Defendantvide its letter dated 23rd August, 2011 accepted the preliminary injunction andadmitted that the use of marks by them was an infringing act.

72. It is the case of the Plaintiffs that on 19th December, 2011 the Defendant’s goodsunder the impugned marks BHARTIA CUTLER-HAMMER and CH (logo) werediscovered from the market against a cash memo. Plaintiffs also obtained the pricelist of Defendant’s products printed in the year 2011 from one of their distributorand noticed that Defendant continued use of the impugned arrangement/marksCUTLER-HAMMER, BHARTIA CUTLER-HAMMER and CH (logo) on theirproducts. Caution notice was published by Plaintiff No. 1 in respect of Trade MarkCUTLER-HAMMER. On 6th January, 2012, Cease & Desist notice was sent by PlaintiffNo. 1 to Defendant. On 18th January, 2012, Plaintiff filed suit for infringement andpassing off against Defendant being CS (OS) No. 156/2012.

73. From the above, it is clear that there has been no acquiescence on part of Plaintiffs.As all agreements pertaining to Trade Mark rights executed between the parties hadspecific clauses pertaining to Trade Mark rights which specify that:

8 6

a

b

c

d

e

f

g

h

i

04052013]


i. Plaintiff No. 1 and its predecessor is the registered proprietor of the TradeMarks;

ii. The Defendant cannot claim any right over the said Trade Marks by virtueof permitted use of Trade Marks;

iii. The Defendant will not attempt to secure statutory rights in the said TradeMarks.

74. It is settled law that where there is fraud, there is no room for doctrine ofacquiescence to operate. The acquiescence cannot be inferred merely by reason ofthe fact that the Plaintiff has not taken any action against the infringement of itsrights. Even if the Defendant has been using both the Trade Marks from the periodwhen the relation between the parties are broken. Is it possible that the Defendantwould and could take any benefit out of it knowing the said Trade Marks arebelonging to the Plaintiffs. Can the Defendant in the facts of the present case isentitled to take the defence of estoppel, acquiesces, delay, latches and abandonmentof the same Trade Marks by the Plaintiff?

75. This aspect has been dealt with by the Division Bench of this Court in the case ofRob Mathys India Pvt. Ltd. v. Synthes Ag Chur20, 1997 (17) PTC (DB) as under:

Estoppel, Acquiescence, delay & laches.

One of the arguments advanced is in regard to plea of the estoppel. One feelsthat this cannot be a case where estoppel should be applied against all theprinciples of fair play, equity and goods conscience for the Appellant has beenusing the Trade Mark with the implied consent and permission of the licensee(Respondent/Plaintiff No. 2 of the Plaintiff No. 1) . The facts in the case ofHabib Bank Ltd. v. Habib Bank AG Zurich All ELR 1981, were altogether different.In the said case there was no implied permission for user at all and on accountof prolonged user of the Trade Mark, the Court took the view that the plea ofestoppel would apply in that case.

Learned Counsel for the Respondent Shri Bose has contended that it was well-settled that if the Defendant acts fraudulently with the knowledge that he isviolating the Plaintiff’s rights, the essential elements of estoppel are lackingand in such a case the protection of the Plaintiff’s rights by injunctive reliefnever is properly denied. The doctrine of estoppel could only be invoked topromote fair dealings. In any event the defense of acquiescence is not availableto the Defendant/Appellant in the instant case for it is well-settled that theacquiescence must be such as to lead to the inference of a license sufficient tocreate a new right in the Defendant. The learned Counsel for the Respondentrelied on M/s. Hindustan Pencils Pvt. Ltd. v. M/s. India Stationery Products Co.,(supra) and M/s. Power Control Appliances v. Sumeet Machines Pvt. Ltd.21 (1994) 2SCC 448.

In so far as the acquiescence is concerned, the observations of the SupremeCourt in M/s. Power Control Appliances v. Sumeet Machines Pvt. Ltd. (supra) inparas 26 and 27 are noteworthy. They read as under:

26. Acquiescence is sitting by, when another is invading the rights andspending money on it. It is a course of conduct inconsistent with the claim

2 0 Ed.: MANU/DE/0308/1997

2 1 Ed.: MANU/DE/0383/1989: AIR 1990 Delhi 19: 1989 (2) ARBLR 72 (Delhi) : 38 (1989)DLT 54


8 7

a

b

c

d

e

f

g

h

i



for exclusive rights in a Trade Mark, trade name etc. It implies positive acts;not merely silence or inaction such as is involved in laches. In Harcourt v.White Sr. John Romilly said: “It is important to distinguish mere negligenceand acquiescence.” Therefore, acquiescence is one facet of delay. If thePlaintiff stood by knowingly and let the Defendants build up an importanttrade until it had become necessary to crush it, then the Plaintiffs would bestopped by their acquiescence. If the acquiescence in the infringement amountsto consent, it will be a complete defense as was laid down in Monsoon (JG) &Co. v. Boehm, the acquiescence must be such as to lead to the inference of alicense sufficient to create a new right in the Defendant as was laid down inRodgers v. Nowill.

27. The law of acquiescence is stated by Cotton, LJ in Pro torn v. Bannis asunder:

It is necessary that the person who alleges this lying by should have beenacting in ignorance of the title of the other man, and that the other manshould have known that ignorance and not mentioned his own title.

In the same case Bowen, LJ said:

In order to make out such acquiescence it is necessary to establishthat the Plaintiff stood by and knowingly allowed the Defendantsto proceed and to expend money in ignorance of the fact that he hadrights and means to assert such rights.

(Emphasis supplied)

Delay implicate in this case is certainly no defense to an action forinfringement of a Trade Mark for the Appellants neither claimed to be rivalsof Respondent No. 1 nor of Respondent No. 2 at least and Respondent No. 2also never claimed to be rivals of Respondent No. 1. They have been usingthese Trade Marks with the permission and consent of Respondent No. 1and not as proprietors. Unchallenged continued assertion of proprietaryrights in and use of Trade Marks is essential to set up defense of acquiescence.But there is no such defense.

Therefore, neither alleged estoppel nor acquiescence nor delay would be anappropriate cause to refuse the injunction prayed for.

The Appellant is thus estopped by its conduct and now it cannot be allowed totake an about turn to claim that in these registered as well as unregisteredTrade Marks, the Appellant has acquired ownership on the basis of theaforesaid user.

ABANDONMENT OF TRADE MARK:

76. Though, there is Section 102 of the Act relating to abandonment, it is confined toabandonment of an application for registration of Trade Mark and it is not applicableto the present situation. Consequently, one has to revert back to common law rules.

However, here, in view of the peculiar circumstances and non-user of the TradeMark in India by the Respondents and Plaintiffs Nos. 1 and 2 themselves, thequestion of abandonment is also required to be seen.

2 2 Ed.: MANU/DE/0650/1994: 1994 IV AD (Delhi) 667: 56 (1994) DLT 304

8 8

a

b

c

d

e

f

g

h

i

04072013]


Question of abandonment depends on determining the intention to be inferred fromthe facts of each case. While a mere non-user for a few years may not amount toabandonment of a Trade Mark if referable to accountable facts, a long unexplainednon user may suggest an intention to abandon the mark. (See Whirlpool Company &Anr. v. N.R. Dongre & Ors.22, 1995 (32) DRJ 318) .

However, it may be mentioned that a Division Bench of Calcutta High Court in J.N.Nicols (Vimto) Limited v. Rose & Thistle & Anr.23, AIR 1994 Cal 43 took the view thatwhere an application for removal of registered Trade Mark was filed for non-user ofthe same for a long period, the defense of import ban as special circumstance for thesaid non-user cannot be granted when other similar product was manufacturedand freely sold during that period in spite of the import restriction. Hence the onushas not been discharged by the registered proprietor of Trade Mark for excusing himfrom non-user during the prescribed period, preceding the application for removalof registered mark. The existence of special circumstance must affect the trade as awhole and the onus of establishing that the case comes within the ambit of Section 46(3) lies on the registered proprietor of the Trade Mark. It may be shown that the non-user was due to special circumstance of the trade only and not by reason of someother cause which would have otherwise been inoperative even in the absence of thespecial circumstances. If the non-user was, in fact, by reason of some other factorsapart from the special circumstances, question of a defense under Section 46 (3)being made available to the proprietor of the mark does not and cannot arise. Aspecific case shall have to be made and proved with necessary documentary evidencethat the non-user was the direct effect of the existence of the special circumstances.The special circumstances cannot be taken note of as a defense if the non-user is byreason of a voluntary act. This view taken by Calcutta High Court might have helpedthe proceedings under Section 46 of the Act. But here in this case due to special kindof relationship between the Respondents No. 1 and 2 and between RespondentNo. 2 and the Appellant in the trade and there being no intention to abandon or notto use the Trade Mark in relation to the goods to which the registration of the TradeMark related, the Appellant even for that purpose is not entitled to claim removalfrom register of the Trade Mark the device and word “Synthes” on the ground ofalleged non-user. In the present case, the question of abandonment has to be judgedin the peculiar set of facts. Here the Plaintiff/Respondent No. 1 is one who is notindulging in any trading activities not only in India but also outside India. ThePlaintiff/Respondent No. 2 does not have any registration as registered user of theTrade Marks in India. It is not the case here where the Trade Mark has not been gotrenewed by Plaintiff/Respondent No. 1. It is different thing to look at the situationfrom the point of view of trafficking in Trade Marks. But in the face of renewal of theTrade Mark and allowing the Plaintiff/Respondent No. 2 to use the same exclusivelyand further tacitly allowing the Appellant to use it, it is difficult rather not possibleto say that the Trade Mark in this case has been abandoned.”

77. In the case of Morgardshammar India Limited & Ors. v. Morgardshammar AB24,2013 (53) PTC 186 (Del.) (DB) it was held as under:

43. In so far as the acquiescence is concerned, the observations of the SupremeCourt in M/s. Power Control Appliances v. Sumeet Machines Pvt. Ltd., reported in(1994) 2 SCC 448, in paras 26 and 27 are noteworthy. They read as under:

2 3 Ed.: MANU/WB/0005/1994: (1993) 2 CALLT 411 (HC) : 98 CWN 216: 98 CWN 216

2 4 Ed.: MANU/DE/4585/2012: 193 (2012) DLT 238


8 9

a

b

c

d

e

f

g

h

i



26. Acquiescence is sitting by, when another is invading the rights andspending money on it. It is a course of conduct inconsistent with the claim forexclusive rights in a Trade Mark, trade name etc. It implies positive acts; notmerely silence or inaction such as is involved in laches. In Harcourt v. White Sr.John Romilly said: “It is important to distinguish mere negligence andacquiescence.” Therefore, acquiescence is one facet of delay. If the Plaintiffstood by knowingly and let the Defendants build up an important trade untilit had become necessary to crush it, then the Plaintiffs would be stopped bytheir acquiescence. If the acquiescence in the infringement amounts to consent,it will be a complete defense as was laid down in Monsoon (JG) & Co. v. Boehm,the acquiescence must be such as to lead to the inference of a licence sufficientto create a new right in the Defendant as was laid down in Rodgers v. Nowill.

The law of acquiescence is stated by Cotton, LJ in Pro tor v. Bannis as under:-

It is necessary that the person who alleges this lying by should have beenacting in ignorance of the title of the other man, and that the other manshould have known that ignorance and not mentioned his own title.

In the same case Bown, LJ said:

In order to make out such acquiescence it is necessary to establish thatthe Plaintiff stood by and knowingly allowed the Defendants to proceedand to expend money in ignorance of the fact that he had rights andmeans to assert such rights.

DELAY

78. The Defendant has intentionally and deliberately claimed the false user of marksCUTLER-HAMMER/BHARTIA CUTLER-HAMMER and CH from several decades”.The Defendant has claimed use of the Trade Mark CUTLER HAMMER from the year1968 and other marks from the year 1977 and has produced on record the Salesfigures along with Certificate of Chartered Accountant from the year 1976-2010 arewrong and not substantiated by any documentary evidence. It is the admitted positionthat during the said period the user of Defendant was permissive user. The claiminguser being proprietor during the licensing period was fraudulent and dishonest asper settled law.

Even false claims made by Defendant as to “advertisement and promotion of productsunder marks CUTLER-HAMMER/BHARTIA CUTLER-HAMMER and CH from theyear 1976-2011”. In most of the period, the Defendant’s user was permissive user.

79. In Rob Mathys India Pvt. Ltd. v. Synthes Ag Chur, 1997 (17) PTC 669 (DB) , thisCourt echoed the view expressed by the Supreme Court in Power Control Appliancesv. Sumeet Machines Pvt. Ltd., JT 1994 (2) SC 17 to the effect that it is a settled principleof law relating to Trade Marks that there can be only one mark, one source and oneproprietor. A Trade Mark cannot have two origins. It was held that after terminationof the collaboration agreement between the parties to that litigation, the Appellanttherein, not the owner of the Trade Mark, could not use the word “Synthes” or theTrade Mark “AO/ASIF” after revocation of the collaboration agreement.

The Division Bench of this Court in the case of J.K. Jain v. Ziff Davies25, 2000 PTC 244(DB) held that an ex licensee, having taken the benefit of an agreement with the

2 5 Ed.: MANU/DE/1334/2000: 2000 (56) DRJ 806

9 0

a

b

c

d

e

f

g

h

i

04092013]


licensor is estopped from resisting an application for an injunction by the licensorafter termination of the agreement between the parties.

80. In the case of Hindustan Pencils Pvt. Ltd. v. M/s. India Stationery Products Co.26,reported in AIR 1990 Delhi 19, in para-31 it was held as under:

31. Even though there may be some doubt as to whether laces or acquiescencecan deny the relief of a permanent injunction, judicial opinion has beenconsistent in holding that if the Defendant acts fraudulently with the knowledgethat he is violating the Plaintiff’s rights then in that case, even if there is aninordinate delay on the part of the Plaintiff in taking action against theDefendant, the relief of injunction is not denied. The defense of laces orinordinate delay is a defense in equity. Inequity both the parties mud’s come tothe Court with clean hands. An equitable defense can be put up by a party whohas acted fairly and honestly. A person who is guilty of violating the law orinfringing or usurping somebody else’s right cannot clarify the continuedmisuse of the usurped right. It was observed by Romer, J. in the matter of anapplication brought be J.R. Parkington and Co. Ld., (1946) 63 RPC 171 at page181 that “in my judgment, the circumstances which attend the adoption of aTrade Mark in the first instance are of considerable importance when onecomes to consider whether the use of that mark has or has not been a honestuser. If the user in its inception was tainted it would be difficult in most casesto purify it subsequently”. It was further noted by the learned Judge in thatcase that he could not regard the discreditable origin of the user as cleansed bythe subsequent history. In other words, the equitable relief will be affordedonly to that party who is not guilty of a fraud and whose conduct shows that,there had been, on his part, an honest concurrent user of the mark in question.If a party, for no apparent or a valid reason, adopts, with or withoutmodifications, a mark belonging to another, whether registered or not, it willbe difficult for that party to avoid an order of injunction because the Court mayrightly assume that such adoption of the mark by the party was noting honestone. The Court would be justified in concluding that the Defendant, in such anaction, wanted to cash in on the Plaintiffs name and reputation and that wasthe sole, primary or the real motive of the Defendant adopting such a mark.Even if, in such a case, there may be an inordinate delay on the part of thePlaintiff in bringing a suit for injunction, the application of the Plaintiff for aninterim injunction cannot be dismissed on the ground that the Defendant hasbeen using the mark for a number of years. Dealing with this aspect Harry D.Nims in his “The Law of Unfair Competition and Trade Marks”, Fourth Edition,Volume Two at page 1282 noted as follows:

Where infringement is deliberate and willful and the Defendant actsfraudulently with knowledge that he is violating Plaintiffs rights, essentialelements of estoppels are lacking and in such a case the protection of Plaintiffsrights by injunctive relief never is properly denied. “The doctrine of estoppelscan only be invoked to promote fair dealings.

81. In the case of Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia and Others27,reported in 2004 (Vol. 28) PTC 121, relevant para-5 of the said judgment is as under:

2 6 Ed.: MANU/DE/0383/1989: 1989 (2) ARBLR 72 (Delhi) : 38 (1989) DLT 54

2 7 Ed.: MANU/SC/0186/2004: 2004 (2) PLJR 141: 2004 (73) DRJ 647: (2004) 3 SCC 90: 2004(2) SCALE 231


9 1

a

b

c

d

e

f

g

h

i



5. The law on the subject is well-settled. In cases of infringement either of TradeMark or of Copyright normally an injunction must follow. Mere delay inbringing action is not sufficient to defeat grant of injunction in such cases. Thegrant of injunction also becomes necessary if it prima facie appears that theadoption of the Mark was itself dishonest.

82. In the case of Fedders North American v. Show Line and Ors.28, 2006 (32) PTC 573Del, decided by Hon’ble Mr. Justice Madan B. Lokur, in the similar facts wherein theDefendant claimed the users of the Trade Mark “Fedders” more than 40-50 years.The Hon’ble Court still granted the injunction, inter alia, on the reasons that it isrecurring cause of action and the Defendant had no answer how to claim the right ofthe Trade Mark “Fedders”. The Defendant cannot be permitted to take advantage ofthe laws of delays. Both parties know where they stand.

83. None of the cases referred by the Defendant is applicable to the facts andcircumstances of the present case. The Defendant’s Counsel has failed to refer evena single case in which the injunction has been refused by any Court with similarcircumstances. The facts in cases referred are materially different and do not helpthe case of the Defendant.

84. Rather, in case the law with regard to the rightful owner of the Trade Mark andthe act of ex-licensee is examined, it emerges that either during the licensing periodof agreement or after expiry, it is implicit and clear that the ex-licensee is not entitledto claim the ownership of a Trade Mark nor he is permitted by law to file anapplication for registration of the Trade Mark in his name nor is entitled to file thepetition for rectification of the same very Trade Marks in which ex-licensee wasusing the Trade Marks as a permissive user, otherwise it would amount to fraudand misrepresentation. The ex-licensee under no circumstances can declare himselfas owner of the Trade Mark to claim the concurrent user because as per scheme ofthe Act, the benefit of concurrent user can be derived by a party whose user is honestand bona fide. In the present case, both things are missing. In other words, hecannot be allowed to make a hole in the plate in which he was eating; such wrongfuluser would be considered as stolen property which cannot become rightful propertyin any amount of user.

BALANCE OF CONVENIENCE IN FAVOUR OF PLAINTIFF

85. Plaintiff No. 1 founded in 1911 and incorporated in Ohio in 1916 is a wellknown premier diversified fortune 200 industrial company having amanufacturing presence in Australia, Brazil, Canada, China, Costa Rica, CzechRepublic, Dominican Republic, France, Germany, India, Indonesia, Ireland, Italy,Japan, Malaysia, Mexico, Monaco, Netherlands, Poland, Puerto Rica, Singapore,South Africa, South Korea, Spain, Switzerland, Taiwan, Thailand, United Kingdomand United States of America and has been selling their products under variouswell known Trade Marks.

85.1 Plaintiffs’ Trade Marks CUTLER-HAMMER/CH logo are well known TradeMarks having extra territorial goodwill and reputation worldwide. Plaintiff No. 1has trans-border reputation extending to India. The use of identical/deceptivelysimilar Trade Marks on part of Defendant is bound to confer an undue advantage of

2 8 Ed.: MANU/DE/1938/2006: 2006 (32) PTC 573 (Del)

9 2

a

b

c

d

e

f

g

h

i

04112013]


reputation and goodwill of Plaintiffs’ well known marks to the Defendant and suchuse would be detrimental to the well known character and reputation thereof. ThePlaintiffs are the registered proprietor of Trade Mark CUTLER-HAMMER underNo. 164435 in Class 09. Whereas the Defendant does not have any statutory right inthe Trade Mark CUTLER-HAMMER/BHARTIA CUTLER-HAMMER and itsvariants.

85.2 The Plaintiffs have been using the Trade Marks worldwide and there is noreason to assume that the same were abandoned. Mere fact that the registrations offew Trade Marks inadvertently lapsed and then no steps were taken to reinstate thesaid registration on account of adopting the new version of it, the same is no groundto claim that Plaintiffs have abandoned the Trade Marks.

85.3 The fact that the Defendant until the year 2000 has manufactured licenseproducts using Plaintiffs know how and technical data and for which Defendanthas paid royalties as well itself supports that Defendant cannot on its ownmanufacture goods of same engineering standard even if the Defendant is using themarks since the year 1986 with the knowledge of the Plaintiffs, such user will alwaysbe considered as dishonest and fraudulent.

86. The Plaintiffs establish a prima facie case for grant of an interim injunction. Thebalance of convenience is also in favour of the Plaintiffs and against the Defendant.The Plaintiffs shall suffer an irreparable loss and injury to its hard earned goodwill,reputation and business unless the Defendant is restrained from continuing withits illegal trade activities during the pendency of the suit.

RELIEF

87. In view of the abovesaid reasons, the prayer made in the Plaintiffs’ applicationbeing I.A. No. 1204/2012 is allowed. Accordingly, the Defendant, its dealers, agentsand representatives on its behalf are restrained from using impugned arrangementand/or mark (s) CUTLER-HAMMER, BHARTIA CUTLER-HAMMER, CH (logo) orCH CONTROL or any other mark as may be identical and/or deceptively similar tothe Plaintiffs’ registered Trade Mark CUTLER-HAMMER under No. 164435 in Class 9amounting to infringement thereof and also from manufacturing and selling, offeringfor sale, directly or indirectly dealing in goods included in Class 9 and/or any othercognate or allied goods or the goods of the same description under the impugnedarrangement and/or mark (s) CUTLER-HAMMER, BHARTIA CUTLER-HAMMER,CH (logo) or CH CONTROL or any other mark as may be identical and/or deceptivelysimilar to the Plaintiffs’ Trade Mark CUTLER-HAMMER and CH (label) and fromdoing any other act as is likely to cause confusion & deception amounting to passingoff their goods and/or business as and for the goods and/or business of the Plaintiffs.However, the Defendant is granted three months’ time to dispose of the existingstock lying with it.

88. With regard to the Defendant’s application being I.A. No. 4318/2012 filed in CS(OS) No. 575/2012, the same is dismissed being not maintainable in view of thefacts and circumstances of the present case as well as under the statute provisionsof Section 142 of the Trade Marks Act, 1999 as the Plaintiff No. 1 who is the proprietorof the Trade Marks with due diligence has commenced the action against theDefendant.

89. It is made clarified that the findings arrived in this order are tentative and shallnot come in the way when the matters would be decided after trial.


9 3

a

b

c

d

e

f

g

h

i



90. The Defendant is also burdened with cost of ' 1 lac which shall be deposited bythe Defendant with the Prime Minister’s Relief Fund within four weeks from today.

91. Both I.A. Nos. 1204/2012 & 4318/2012 are disposed of. List the matters on 23rd

August, 2013 before the roster Bench for further proceedings.

9 4

SNC 192013]



95

MIPR 2013 (2) SNC 101

IN THE HIGH COURT OF BOMBAY

S. Narendra Kumar & Co.v.

Apricot Foods Pvt. Ltd.

CHAMBER SUMMONS NO. 1319 OF 2012 IN SUIT NO. 604 OF 2010DECIDED ON: 29.05.2013

Judge

S.J. Kathawalla, J.

Counsel

For Appellant/Petitioner/Plaintiff: Ravi Kadam, Sr. Adv., Along and Dr. B.B. Saraf,Gayatri Sharma, Zaid Ansari and Priyanka Shah, Instructed by M/s. S.K.Srivastav & Co.

For Respondents/Defendant: Ashish Kamat Along and Manish Saurastri, RahulDhote and Minesh, Instructed by M/s. Krishna & Saurastri Associates

An amendment, the effect of which destroys the accrued rights and takesaway the benefit of admission, ought not to be granted.

Trade Mark — Infringement — Present suit filed by Plaintiff to restrain Defendantfrom infringing Plaintiff’s registered mark “EVEREST” and the registered marksset out at Exhs. C1 to C40 of the Plaint - Plaintiff also sought to restrain Defendantfrom using the mark “EVEREST” or any other identical or deceptively similarmark so as to pass off the Defendant’s products as that of Plaintiff’s —

Held, in Section 124 (5) of the Trade Marks Act, 1999 (Act), it was clarified that thestay of the suit for infringement of a Trade Mark under Section 124 of the Act should

* MANU/MH/0604/2013

Manupatra Intellectual Property Reports (MIPR)SNC 20 [Vol. 2

Manupatra Intellectual Property Reports vAugust 201396

not preclude the Court from making any interlocutory order during the period of thestay. In the present case, Plaintiff’s application for rectification of the register inrelation to the Defendant’s mark was pending. Section 124 of the Act thus clearlyshowed that a suit for infringement was not barred by the mere fact that Defendant’smark was also registered. In fact, the said provision clearly reflected that a suit couldbe filed and would lie. The course of action to be adopted in such a suit was alsoprovided for. The response of Defendant to Section 124 of the Act, viz. that it did notconfer any jurisdiction upon and/or enable the Court to entertain a suit forinfringement against the registered Proprietor of the allegedly offending mark runscontrary to the fundamental principle that the jurisdiction of a Court was not excludedunless barred. Defendant had not disclosed any bar to the filing of a suit forinfringement in circumstances where Defendant’s mark was also a registered mark.The mere fact that the suit was filed five years after the cease and desist notice didnot in any manner make the suit lack bona fides. There was nothing to indicate thatPlaintiff was aware of Defendant’s mark being registered and therefore the questionof suppression of the same did not arise. In any case, it was not as though Plaintiffsecured any order from this Court on the basis that Defendant’s mark wasunregistered. As regards the grant of leave under Clause 14, Defendant had filed anapplication for revocation of the same which should be considered by this Court onits own merit. If Defendant disputed the contents of the amendment, it should beopen for it to do so after the amendment was allowed. As correctly submitted onbehalf of Plaintiff, the Defendant could not seek adjudication on the merits of theproposed amendment at this stage. Hence, the Chamber Summons was allowed andamendment to be carried out and a copy of the amended plaint to be forthwithserved on the Advocate for the Defendant. Consequently, Chamber Summons wasdisposed of.

MIPR 2013 (2) SNC 111

INTELLECTUAL PROPERTY APPELLATE BOARD, CHENNAI

T. Varadaraj Paiv.

Kiran Kumar and Registrar of Trade Marks

ORA/40/2010/TM/CH AND M.P. NOS. 197/2011 AND 25, 320 AND 399/2012DECIDED ON: 04.07.2013

Judges

Prabha Sridevan, Chairman and S. Usha, Vice-Chairman

Counsel

For Appellant/Petitioner/Plaintiff: Harikrishna Holla

For Respondents/Defendant: S. Balachandran

* MANU/IC/0047/2013

SNC 212013]


In order to prove prior use, it must be substantiated with evidence for theclaim of use.

Trade Mark — Claim of prior use — Impugned Registration — Applicants filed anapplication for registration of the Trade Mark — Respondents issued a legal noticeto the Applicants stating about the impugned registration and about their date ofuse since 1981 — Respondents filed suit before District Court against the Applicantfor injunction — Court held that Respondent had not substantiated with anyevidence for the claim of use since 1981 and dismissed the interlocutory petitionand the suit is pending — Whether the Applicants who are subsequent adoptersof the Trade Mark have adopted an identical label of the Respondents only totrade upon the goodwill of the Respondents —

Held, the rival marks are deceptively similar. In such a case the issue that arises forconsideration is who is the prior adopter and user of the Trade Mark. The Applicantsown admission is that they are using the Trade Mark since the year 1989, whereasthe Respondent’s use is since 1981. The Respondents had placed certain bills,invoices etc. and some bills issued by the press for printing the cartons. They hadalso filed the licence issued by the Gram Panchayat for manufacturing it. In supportof the same they had filed the affidavits of the Proprietor of Bharath Press and thecertificate issued by Panchayat Development Officer.

Thus, from the depositions it was clear that the Respondents had been carrying onbusiness under the Trade Mark Raghavendra Malt since the year 1981 as claimed intheir application for registration. Therefore there was no fraudulent act by theRespondents in obtaining the registration as averred by the applicants.

In view of the above observations, there was no reason to cancel the Trade Markregistered under No. 1266408 in Class 31. Application dismissed.

MIPR 2013 (2) SNC 121

INTELLECTUAL PROPERTY APPELLATE BOARD, CHENNAI

M/s. Marc Enterprises Pvt. Ltd.v.

Shri Gaurav Arya Proprietor andRegistrar of Trade Marks Baudhik Sampada Bhavan

ORA/90/2005/TM/DEL AND M.P. 375/2012AND 3/2013 IN ORA 90/2005/TM/DELDECIDED ON: 18.06.2013

Judges

Prabha Sridevan, J. (Chairman) and V. Ravi, Member (T) (Trade Marks)

97

M/s. Marc Enterprises Pvt. Ltd. v. Shri Gaurav Arya Proprietor and Anr.

* MANU/IC/0044/2013

Manupatra Intellectual Property Reports (MIPR)SNC 22 [Vol. 2

Manupatra Intellectual Property Reports vAugust 2013

Counsel

For Appellant/Petitioner/Plaintiff: K.G. Bansal and Saurabh Kapoor

For Respondents/Defendant: Shree Pushpam Jha for R1

Discretion under Section 12(3) can only be exercised when two or more partiesunknown to each other and unaware of the mark used by each other innocentlyadopt and use the same trade mark in respect of their respective goods of thesame nature.

Trade Mark — Removal of mark — Impugned Trade Mark — Suit filed byApplicant against Respondent for infringement and passing off — Applicantclaimed that he would be grievously prejudiced by continuance of impugnedmark and prayed that it be removed — Respondent claimed that they hadconceived and adopted a distinctive Trade Mark in or about April, 2001 andspecifically claimed that Applicant was never using mark in respect of goodsmentioned in Class 9 — Whether Respondent’s adoption of mark was honest —

Held, evidence showed that Applicant had been in existence prior to Respondent’sclaim of user. None of documents showed that Respondent had been using the markfrom 2001 as claimed. Fact that whether Mark is common to trade or whetherApplicant has been using the Mark for goods other than geyser was not relevanthere. Respondent’s evidence showed user only from 2004, though the user claimedwas from 1st April, 2001. Applicant’s registration was clearly earlier. Therefore, themark must be removed.

Thus, Respondent was not able to prove his user as claimed. Hence, OriginalRectification Application allowed.

Trade Mark — Removal of mark — Impugned Trade Mark — Suit filed byApplicant against Respondent for infringement and passing off — Photo copies oforiginal documents submitted as proof — Whether permissible —

Held, evidence was filed through proof affidavits and as a rule only photo copies ofthe original documents were filed. Rule 12 of the Intellectual Property AppellateBoard Rules require that originals shall be left in Appellate Board for inspection ofother party. This Rule is observed only in breach. The parties must at least be readyto produce the originals at the time of hearing. More importantly, photo copies thatare filed before the Appellate Board must be legible. In Trade Mark matters priorityof user and the date of user very often clinch the issue. In future, if dates of theinvoices are not legible, then the entire evidence and rule against the party, who filessuch unacceptable evidence may be rejected. Therefore, hereafter the parties shallfile only legible copies of the exhibits. Registry is directed to return the entire paperbooks containing affidavit even if one document is illegible. Counsel must be readywith the originals of the documents when the matter comes up for hearing or at leastthey must ascertain from the Registry which documents must be produced for thehearing. Evidence proves the case and without evidence the pleadings are of no use.The necessity of filing clearly legible documents is acceptable and genuine copies ofdocuments cannot be diluted.

98

C-172013]


Notes on International Cases


FAPL brought a claim seeking aninjunction against the Defendantspursuant to Section 97A of the Copyright,Designs and Patents Act 1988 (the 1988Act), which implemented Article 8(3) ofEuropean Parliament and CouncilDirective (EC) 2001/29 (on theharmonisation of certain aspects ofCopyright and related rights in theinformation society, requiring theDefendants to take measures to block orat least impede access by their customersto a website known as FirstRow Sports(FirstRow). The issue for considerationwas whether the Court had jurisdictionto make the orders requested.Consideration was given to Regulation2 of the Electronic Commerce (ECDirective) Regulations 2002, SI 2002/2013(the Regulations).

The Court ruled that Section 97A of the1988 Act empowered the High Court togrant an injunction against a serviceprovider, where that service provider hadactual knowledge of another personusing their service to infringe Copyright.It is a settled law that where a televisionbroadcast was re-transmitted via the

Copyright

The Football AssociationPremier League Limited v.British Sky Broadcasting

Limited and Ors.England and Wales High Court

(Chancery Division); Decided on:16th July, 2013

In the instant case, the Claimant(FAPL) was the governing body of thefootball competition known as the

Barclays Premier League (the PremierLeague). FAPL owned the Copyright inrecordings of television footage of allPremier League matches, and in artisticworks which appeared within thatfootage. The Defendants were the sixmain retail internet service providers inthe UK and between them; they had afixed line market share of some 94 percent of UK internet users.

99

Manupatra Intellectual Property Reports (MIPR)C-18 [Vol. 2


internet, there was no need to show thatthe “public” to which the re-transmissionwas communicated was any differentfrom the public to which the originaltransmission was addressed. The factthat it was a separate communication tothe public by a different technical meanssufficed. Any re-transmission of aterrestrial television broadcast via theinternet would constitute acommunication because it involved a“specific technical means different fromthat of the original communication” andan “intervention… which is differentfrom that of the broadcastingorganisation concerned”. That reasoningwas equally applicable to re-transmission of satellite and cabletelevision broadcasts via the internet.

In order for the Court to have jurisdictionto make the orders sought by FAPL, fourmatters had to be established. First, thatthe Defendants were service providers.Secondly, that users and/or theoperators of FirstRow had infringedFAPL’s Copyrights. Thirdly, that usersand/or the operators of FirstRow hadused the Defendants’ services to do that.Fourthly, that the Defendants had actualknowledge of that.

Relying on the case of Dramatico v Sky itwas held that the Defendants wereservice providers within the meaning ofRegulation 2 of the Regulations, andhence within the meaning of Section 97Aof the Act. None of the Defendants hadsuggested otherwise. Further, FirstRowhad communicated FAPL’s Copyrightworks to the public in the UK and therebyinfringed FAPL’s Copyrights in thoseworks. Having considered theproportionality of the orders sought bythe instant applications as betweenFAPL (and the supporting right holders)and the Defendants, and as betweenFAPL and the operators and users of FirstRow, the court was satisfied that theorders sought were proportionate.

Thus, the court would make the ordersas requested by FAPL.

Patent

Federal Trade Commissionv. Actavis, Inc., et al.

Supreme Court of the United States;Decided on: 17th June, 2013

In the instant case the United StatesSupreme Court issued a 5-3 decisionholding that pharmaceutical patent

settlement agreements involving “reversepayments”, otherwise known as “pay-for-delay” agreements, are notpresumptively anti-competitive butshould instead be analyzed under therule-of-reason analysis to determine ifthey are likely to result in anti-competitiveharm. In doing so, the Court overturnedthe Eleventh Circuit’s dismissal of theFederal Trade Commission (“FTC”)lawsuit against Solvay Pharmaceutical,Par Pharmaceutical, PaddockLaboratories, and WatsonPharmaceuticals (subsequently acquiredby Actavis), and rejected the “scope ofthe patent” test applied by the Eleventh,Second, and Federal Circuits, courts thathad all held that a settlement agreementwas lawful as long as it did not exceedthe exclusionary rights granted by theunderlying patent.

Under the Hatch-Waxman Act, genericdrug companies, in filing a AbbreviatedNew Drug Application (“ANDA”), canmake a “Paragraph IV certification”claim that their product does not infringethat of the brand-name drugmanufacturers or the relevant patent isinvalid. Hatch-Waxman also provides aperiod of exclusivity from the firstcommercial marketing of the drug forfirst-to-file generic manufacturerswhereby no other generic can competewith the brand-name drug.

Actavis and Paddock Laboratories(joined by Par Pharmaceutical) separatelyfiled ANDAs for the brand-name drug

C-192013]



AndroGel patented by SolvayPharmaceuticals. In light of theParagraph IV certification, Solvaybrought a patent infringement actionagainst Actavis and Paddock. Theparties ultimately settled, with thegeneric companies agreeing not toproduce the generic product until severalyears before the expiration of the patent’sterm in exchange for a monetary paymentby Solvay, the brand-name patentee. TheFTC subsequently brought a lawsuitunder Section 5 of the Federal TradeCommission Act, 15 U.S.C. §45, allegingthat the parties unlawfully agreed to“share in Solvay’s monopoly profits,abandon their patent challenges, andrefrain from launching their low-costgeneric products to compete” againstAndroGel.

The Eleventh Circuit affirmed the DistrictCourt’s dismissal of the FTC complaint,finding that “absent sham litigation orfraud in obtaining the patent, a reversepayment settlement is immune fromantitrust attack so long as itsanticompetitive effects fall within thescope of the exclusionary potential of thepatent.” .

Justice Breyer found that there wasreason for concern that “reversepayment” settlement agreements mayhave significant adverse effects oncompetition, and both patent law andantitrust policies must be weighed whenconsidering the legality of the settlements.The Court viewed a reverse paymentsettlement as the Plaintiff “paying moneyto Defendant B purely so B will give upthe patent fight” and delayingintroduction of lower cost genericalternatives. The Court reviewed severalprecedents in the patent settlementcontext and the balance between patentand antitrust policies, concluding thatthey “make clear that patent-relatedsettlement agreements can sometimesviolate the antitrust laws” and courtsshould consider “traditional antitrustfactors such as likely anticompetitive

effects, redeeming virtues, market power,and potentially offsetting legalconsiderations present in thecircumstances…”

Furthermore, despite acknowledgingthat there was some support in a generallegal policy favoring settlement of thesepatent-related disputes, the Court heldthat the Eleventh Circuit’s focus on thedesirability of settlements overlooked anumber of factors that warrantedproviding the FTC with an opportunityto prove its antitrust claim. The Courtoffered some guidance as to what type ofagreements are likely to pose antitrustconcerns, discussing “five sets ofconsiderations” that weigh in favor ofantitrust scrutiny.

1. The reverse payments at issuehave the “potential for genuineadverse effects on competition,”largely higher consumer prices. Anagreement to stay out of the marketsplits the benefit between thebranded patentee manufacturerand the generic challenger, at a lossto consumers, and removes thepossibility of competitionoccurring more quickly.

2. The prospective anticompetitiveconsequences of the agreements“will at least sometimes proveunjustified,” and the opportunityshould be available for thecomplainant to examine thepotential consequences and theDefendant to show legitimate pro-competitive justifications under therule of reason.

3. “Where a reverse paymentthreatens to work unjustifiedanticompetitive harm, the patenteelikely possesses the power to bringthat harm about in practice,”e.g., the size of the payment to ageneric challenger by the brandedmanufacturer suggests a marketpower to charge higher-than-competitive prices.

101



4. An antitrust action isadministratively feasible as it maynot be necessary to litigate thevalidity of the underlying patent.

5. Allowing for the risk of antitrustliability from unjustified reversepayments would not interfere withthe parties’ ability to settle patentdisputes. The parties have othermethods of settlement, and therelevant antitrust assessmentshould be what reasons are thereto prefer settlements other than“large and unjustified” reversepayments.

The FTC had advocated for a “quicklook” approach. However, the Courtdeclined to hold that reverse paymentsettlement agreements are presumptivelyunlawful: “the likelihood of a reversepayment bringing about anti-competitiveeffects depends upon its size, its scale inrelation to the payer’s anticipated futurelitigation costs, its independence fromother services for which it mightrepresent payment, and the lack of anyother convincing justification,” factualcomplexities that require the applicationof a full “rule of reason” analysis.

Chief Justice Roberts, joined by JusticesScalia and Thomas, dissented,maintaining that the correct approachapplied by the majority should have been“whether the settlement gives Solvaymonopoly power beyond what the patentalready gave it,” not a statutorily-insupportable “novel approach” ofconsidering the anticompetitive effects ofthe reverse payment settlements under arule of reason analysis. Instead, thedissent agreed with the EleventhCircuit’s application of the “scope of thepatent” rule: settlements do not generateantitrust liability so long as thesettlement’s competitive effects fall withinthe scope of the exclusionary potentialof the patent absent sham litigation orfraud in obtaining the patent.

Trade Mark

Boxing Brands Limited v.Sports Direct International

Plc and Ors.England and Wales High Court

(Chancery Division); Decided on:25.07.2013

This case concerned a Trademarkdispute in respect of a mark“QUEENSBERRY”. Each side

claimed rights in the mark. The Claimant(BBL) was a company associated with F,a well-known boxing promoter. Alsoassociated with BBL was R, the owner ofthe Planet Hollywood chain ofrestaurants. The Defendants were allassociated with Sports Direct, a well-known retailer. The Second Defendantwas the successor to a boxing enterpriseassociated with L and G which startedin Bedford in 2004 with the name“QUEENSBERRY” or “QUEENSBERRYBOXING”. The Third and FourthDefendants had a licence from theSecond Defendant.

The First Defendant was a holdingcompany. Each side was the owner of anumber of registered Trademarkscomprising the word “QUEENSBERRY”for various goods and services. Each sidehad UK registered Trademarks and BBLalso owned a community Trademark. Themajor issue was about the rights to aclothing brand. Each side wished to sellclothing under that Trademark. BBLalleged infringement of its UK registeredTrademark 2,485,784 (the 784 mark),registered inter alia in class 25 for“Articles of clothing; footwear;headgear”. The mark had been appliedfor on 8th May, 2008.

C-212013]



In November 2012, the Claimant, havinglearned that a clothing brand was beinglaunched at a store in London, appliedfor an interim injunction. A judgegranted the order and directed the casebe tried on an expedited basis. The actionincluded a claim for Copyrightinfringement relating to a winged logo,for which BBL contended it owned theCopyright. The Defendants contendedthat BBL’s 784 mark was invalid either:

(i) Under Section 5(4) (a) of theTrade Marks Act 1994 (the Act) onthe basis that as at 8th May, 2008, Land G could have prohibited theClaimant from using the markunder the law of passing off;

(ii) under Section 3(6) of the Act onthe basis that the mark had beenapplied for in bad faith in thatApplicant applied for it knowingthat the mark really belonged to Land AG; or

(iii) under Section 46 of the Act.

The Defendants also contended thateven if the mark was valid, any sales bythem of clothing under the name wouldnot infringe because they had a defenceunder Section 11(3) of the Act (use in alocality). The Second Defendantcounterclaimed based on passing off.

BBL contended that it was entitled to usein relation to clothing and sportsequipment or licence others to use it. Theissues for consideration were:

(i) Whether the 784 mark wasinvalid under Section 5(4) (a) of theAct under the law of passing off;

(ii) Whether the mark was invalidunder Section 3(6) of the act on thebasis that the mark had beenapplied for in bad faith;

(iii) Whether the Defendants had adefence under Section 11(3) of theAct and, if the 784 mark was valid,would it be infringed by the sale ofthe Third and Fourth Defendants’clothing; and

(iv) Whether the claim forinfringement of Copyright hadbeen established.

There was no dispute that if the markwas valid, the clothing the Defendantsintended to sell, did or would infringeBBL’s 784 Trademark. A further issuearose as to whether the specifications ofUK registered Trademark 2,499,451 andcommunity Trademark 7,376,395, insofaras they related to the goods in Classes16, 18 and 28, were valid.

The court ruled that 1) it was settled lawthat the law of passing off required threeelements: (i) goodwill; (ii) misrepresen-tation; and (iii) damage. The testapplicable under Section 5(4)(a) of theAct was whether, at the date of theapplication (to register the mark) normaland fair use of the mark in relation to therelevant goods and services could havebeen prevented by the persons allegingownership of the mark by an action forpassing off. Even if the owner of aprotectable goodwill had notgenerated any goodwill outside thesphere of their business, i t waspossible that usage outside that fieldcould lead to passing off.

In conclusion on goodwill, it wasaccepted that L and G had a right,protectable in passing off, to preventsomeone else opening a gym in Bedfordand calling it QUEENSBERRY but theirgoodwill did not extend any further.They had no goodwill as a boxing agencyand no goodwill in or relating to clothing.The question was whether the rights Land G had in May, 2008 could haverestrained sale of branded clothing inMay, 2008. On the facts, the answer wasno; at 8th May 2008, L had had no right inthe law of passing off to prevent anyonefrom using the word as a Trade Mark inrelation to articles of clothing, footwearor headgear.

The challenge to validity based onSection 5(4) of the act would be rejected.The 784 mark was not invalid on that

103



ground. The Second Defendant’scounterclaim based on Section 5(4) of theAct was dismissed. The counterclaim bythe Second Defendant based on passingoff was dismissed .(2) Section 3(6) of theAct provided that a mark should not beregistered if or to the extent that theapplication was made in bad faith. Thetest was conduct involving dealingswhich fell short of the standards ofacceptable commercial behaviourobserved by reasonable and experiencedmen in the particular area beingexamined. On the facts, the 784 TradeMark had been applied for in theknowledge that L and G had been usingthe sign in some way. However thatalone was not sufficient to give rise tobad faith within Section 3(6) of the Act.

Applying settled law, the registration ofthe 784 mark for clothing was not doneto stop L or G from continuing to use thesign as the name of a gym or a boxingagency. Moreover the degree of legalprotection which L or G would have hadat the time was only their rights availablein passing off. All that they could haveprevented was use of the word as the

name of a boxing gym in Bedford. Itfollowed that the application for the 784mark was entirely acceptable commercialbehaviour. The challenge to validity ofthe 784 mark on the ground of bad faithwas rejected (3) on the court’s findings, adefence under Section 11(3) could notassist the Defendants. On the facts, theDefendants’ predecessors in title werenot using the mark as a clothing mark on8th May, 2008 in any locality . There wasnothing which impugned the validity ofthe 784 mark. In all the circumstances,the 784 mark was valid and would beinfringed by the sale of the Third andFourth Defendants’ clothing.(4) On thefacts, the Defendants had shown nointention to use the winged logo and hadmade no threat to do so. Accordingly theclaim for Copyright infringement wasdismissed.

(5) The specifications of UK registeredTrademark 2,499,451 and communityTrademark 7,376,395 insofar as theyrelated to the goods in Classes 16, 18 and28 were invalid. The specifications hadto be amended to remove those goods.

104

D-92013] International News


International News

Russia says no to onlinevideo piracy

Digital piracy has been a matter ofconcern since long time and hasbecome an international issue.

Russian President Vladmir Putin signedFederal law No.187-FZ “On AmendingSeparate Legislative Acts of the RussianFederation Concerning the Questions ofProtection of Intellectual Rights inInformation and TelecommunicationNetworks. These amendments aim atstrengthening copyright protection in theonline environment and addressesissues of liability of the intermediary. Theproposed measures are to protectexclusive rights in “films includingcinema and television films”. It willamend the Civil Code of RussianFederation, Civil Procedure Code,Arbitrazh (Commercial) Procedure codeand Federal Law No. 149-FZ of July 27,2006 “on information, informationtechnologies and protection ofinformation”.

EU High Court DeclaresCopying Levies on FirstSale of Blank Media, tobe no Breach of EU Law

In a ruling sought by the SupremeCourt of Austria, the European Courtof Justice has said that private copying

levies on first sale of blank media suchas blank CDs and DVDs, memory cardsand MP3 players under certainconditions is not a breach of EU law. TheEuropean Court of Justice says that thelevy cannot be collected if the use of theblank media is not for making privatecopies. However, it was observed thatunder certain conditions, the EU lawdoes not prohibit a general levy with theoption of reimbursement in cases wherethe intended use is not the making ofprivate copies.

TPP Negotiations raisesIP as an issue along with

public health and biotech

The 18th round of Trans-PacificPartnership (TPP) Negotiationstook place between 15th – 25th July

2013 in Kota Kinabalu, Malaysia. In thisround of TPP Negotiations, IP was takenup as an issue along with other technicalissues and agreements were reached onthem. A strong stand was taken by theUS-based Biotechnology IndustryOrganization (BIO), in support of strongintellectual property standards and itsprotection under Trans- PacificPartnership Negotiations. The BIOissued a letter and white paper to USTrade Representative Michael Froman,urging him to support strong intellectualproperty standards and protection

105

Manupatra Intellectual Property Reports (MIPR)D-10 [Vol. 2


throughout the Trans-Pacific Partnership(TPP) region. Countries negotiating theTPP include Australia, BruneiDarussalam, Canada, Chile, Malaysia,Mexico, New Zealand, Peru, Singaporeand Vietnam. Japan has recently joinedthe negotiations.

U.S. patent system atrisk due to increasingpatent litigation trolls,

says RPX

According to a recent presentationby the RPX corporation, which isa patent risk management

services provider, the U.S. patent systemis getting corrupted due to the increasingpatent litigation trolls by Non PracticingEntities (NPEs). According to the trendsin 2012, financial companies foundthemselves against a NPE in a patentlitigation nearly four times than they didfive years ago. It is also of the view that2013 will be in no way different from thepast years if no action will be taken fast.

Global Innovation Index2013

The Global Innovation Index thisyear is themed on local dynamicsof innovation. It can prove to be

useful for nations who are planning tostir up their innovation policies andcapacity. US bags the fifth position in theleague of most innovative nations in theworld, whereas Switzerland is at the firstposition, Sweden and U.K being at thesecond and the third positionsrespectively, as published by thepublished by Cornell University,INSEAD, and the World IntellectualProperty Organization (WIPO).

Apple all set to navigateyour car through your

eyes

Apple plans to convert a cardashboard into a giant touchscreen which would be called a

digital dash. The dash boards wouldhave laser pointers fitted into it whichwould respond to the movement of theeyes and the forehead. The plans are filedin the U.S. Patent and Trademarks officeand according to them it is an inventionof Canadian Tim Pryor.

Third trilateralsymposium held at

WIPO, Geneva

The WIPO along with WHO andWTO had organized the thirdtrilateral joint technical

symposium at Geneva, at the WIPO. Itaimed at discussions to explore newinnovations in the medical business.Participants had representatives ofinternational and philanthropicorganizations, experts on patentinformation and such other eminentrepresentatives from respectableorganizations.

Department of nationallibrary continues with its

anti -piracy campaignalong with Microsoft

The anti piracy campaign to put afull stop on retail shops in U.K.supplying pirated articles

continue with the support of the softwaregiant Microsoft. The Director General of

D-112013] International News


Department of National LibraryMr. Mohammad Abbadi said “Our goalis to ensure an environment that nurturescreativity and is free of violations, and toencourage innovation in all fields,because selling or buying illegal softwarehas a negative impact on the Kingdom’seconomy and society as a whole.” Thiscampaign was started earlier this year.A study commissioned by Microsoftearlier this year found that one in threePCs around the world with counterfeitsoftware installed will be infected withmalware in 2013. To give pace to thiscampaign, Microsoft has come up with awebsite www.howtotell.com whichwould help consumers to protectthemselves from pirated software andwill also provide them with tips todifferentiate between original andpirated softwares.

Initiative by USdepartment of commerce

on copyright policy,creativity and innovation

in digital economy

US has been giving credit tocopyright for its economicgrowth since last many years.

The US Department of Commerce hascome up with a Green Paper recently onCopyright Policy, Creativity, andInnovation in the Digital Economy. It isa work of Department of Commerce’sInternet Policy Task Force (IPTF) alongwith the US Patent and Trademark Office(USPTO) and the NationalTelecommunications and InformationAdministration (NTIA). It aims at

enforcing copyright on the internetproperly and establishing amultistakeholder dialogue on improvingoperation of the notice and takedownsystem under the Digital MillenniumCopyright Act (DMCA) and also aims atdiscussing policies and issues relatingto copyright and innovations that aresignificant to economic growths.

Limitation on grants ofcomputer software by

the German government

The German Government has takensteps to limit granting of patentson computer programs, as a result

of the efforts of the German Parliament“Bundestag”. Except for computerprograms, which replace mechanical orelectromagnetic component, restrictionshave been put to grant patents on othercomputer programs. It subsequentlyposed a restriction on the government fornot interfering with the legal distributionof free software. This step is very muchappreciated by several associations andmany of the major parties of Germany.

EPO removes languagebarrier for 6 languages

Bulgarian, Czech, Icelandic,Romanian, Slovak and Slovenianare new additions to the free

translation service provided for thepatents document at the EuropeanPatent Office (EPO). This step has beentaken to remove language barriers andgive easier access for inventors andbusinesses to patent documentsworldwide.

107

Manupatra Intellectual Property Reports (MIPR)D-12 [Vol. 2


National News

Initiative taken byCGPDTM to spread IPR

awareness

In a developing country like India,Intellectual Property Rights (IPR) playa very vital role in the socio- economic

growth of the country. IPR is now nomore limited to just protecting one’sinnovations, designs and copyrights buthas spread its wings to achieve muchgreater importance and now is animportant part to achieve growth andstability in the economy. To acceleratedevelopment, the Controller General ofPatents, Designs and Trademarks(CGPDTM) along with associations suchas CII, FICCI and ASSOCHAM,undertook an initiative to organize anawareness program, which was a oneday program. The program aimed atbringing awareness among 12 chosenclusters and sensitize them about theirIP rights and also to use the patents andtrademarks, innovations and researchesfor development of their businesses. The12 chosen clusters were under the threeassociations namely FICCI, CII andASSOCHAM.

India implementsMadrid system of Trade

Mark registration

With effect from 8th July 2013, thetrademark filing in India willbe done according to the

Madrid System of international trademark registration. According to astatement from the Controller General ofTrade Marks, “any natural person orlegal entity which has a real and effectiveindustrial or commercial establishmentin, or is domiciled in, or is a national ofIndia and has got a registration of atrademark or an application pending forthe registration of a trademark in India,may now make an application for theinternational registration of the sameunder the Madrid Protocol”. Similarly,India can also be designated ininternational trade mark applications,pursuant to India’s submission ofinstrument of accession to the MadridProtocol.

IPR needs to bedomestically developedsays member of scientific

advisory committee

Ashok Jhunjhunwala, a member ofthe Prime Minister’s ScientificAdvisory Committee recently

expressed that our telecom industry hasbeen importing equipments since manyyears and has been working for others todevelop their Intellectual Property Rights(IPR), which has proved to be a burdenon our financial position or an avoidableexpense, which could have been avoidedif we had worked on developing our ownIPRs. According to him we are practicallynil at 3G and 2G technologies. Themember says that in respect of 4G

109

Manupatra Intellectual Property Reports (MIPR)E-8 [Vol. 2


technology we have some IPR in ourhands, in 5G we should have atleast 15-20 per cent of IPRs done by us.

India says no to bringingchanges to its IPR regimeand advices us to tighten

its patent laws

Anand Sharma, Commerce andIndustry Minister, visited USrecently, where he raised the

issue on US Patent Laws andstrengthening them to lessen misuse ofthe patents by US drug companies. Indiaadvised Washington to work on itspatent laws to lessen the ongoingpractices of “trolling” and “evergreening”. India also turned down thesuggestion given by US, to bring changesin intellectual property regimes to makeit favourable for its users, saying that itcannot do so because of its compliancewith the Trade Related IntellectualProperty Rights (TRIPS).

Patent to be sought forindigenous electricaldesign of Delhi metro

The new metro station coming up atDelhi which will be known asChirag Dilli Metro Station had an

area of just 30m around it, which led tothe development of this indigenouselectrical design which would supplycurrent to the pantograph and will buildneutral sections of the overhead line.Further, the whole line would run on asingle phase, and there are also plans torun the whole of phase III on the samedesign. This design is expected to raisethe resistibility and reliability.

Gujarat based IQ andimmunity increasingweed bags us patent

Gujarat has been blessed withseaweed growing along its 1600km coastline which is believed

to increase one’s IQ level and immunity,claim scientists at the Bhavnagar-basedCentral Salt and Marine ChemicalsResearch Institute (CSMCRI). A juiceextracted from the weeds is reportedlybeneficial to the brain. A test has beenconducted on chickens by the MumbaiVeterinary College and the extracted juiceof this weed has reportedly made thebrains work miraculously and alsoreduced mortality rate amongst chicken.The Central Salt and Marine ChemicalsResearch Institute (CSMCRI) hasreceived a US patent for the said juice.

Japanese patent officegrants patent to Venus

remedies for its antibiotic

Elores one of the antibiotics of theIndian based Venus Remedies hasbeen granted a patent by the

Japanese patent office. The product willbe launched in the Japanese markets byend of 2015. The said drug prevents thedevelopment as well as the spread ofbacterial resistance from one species toanother and is expected to fetch greatprofits for the company in the next fiveyears aiming to be around $100 million(around 600 crores). Venus hasreportedly received patents for thisproduct from 46 countries, including theUS, Australia, New Zealand, Russia,South Africa, South Korea, India and allmajor economies, including EUconstituents.

E-9National News


2013]

Chidambaram conveysIndia’s respect towards IPR

With respect to the much talkedabout concern showed by U.S.towards the business

environment in India, Chidambaramconveyed to the American lawmakersthat India does have respect towards IPRand knows its importance for the growthof the economy. Issues such ascompulsory licensing and patentprotection were discussed. He alsohighlighted the importance of Indiafulfilling its own domestic needs bymanufacturing for itself and to soonbecome a manufacturing hub and alsostressed on the need of rebalancing theglobal economy. Chidambaram was ona visit, in the middle of the slowdown, towin the hearts of the American investors.

South Africa based pro-health group objects to

placing India on us‘special 301 watch list’

South Africa’s Treatment ActionCampaign has raised an objectionthrough a letter to the US Trade

Representative Ambassador MichaelFroman to placing India on the “USSpecial 301 Watch List”, after immensecriticism faced by India on itsIntellectual Property Protection Policy.It has also supported fully the IndianDrug Industry and has appreciated itin the letter saying that this industryproduces over 80% of medicines and90% of paediatric medicines used in thedeveloping world.

111

Manupatra Intellectual Property Reports (MIPR)E-10 [Vol. 2


F-472013]


Biotechnological Intervention for AttainingGlobal Food Security

Ishita Chatterjee*

The drastic increase in the global population leads to a situation where the crop productivitycould not meet the requirements of all resulting in the global food insecurity. To meet thechallenge efforts have been made to utilize the current technologies, including modernbiotechnology, to achieve high productivity in a sustainable manner coupled with promotingcomplementation of traditional technologies with modern day tools could be a solution to theproblem of food security facing mankind. Utilization of the overall crop productivity hasbeen drastically reduced due to the growing urbanization, industrialization and diminishingper capita arable lands and water resources. Hunger, poverty, high energy prices, biofuels,declining productivity and limited natural resource base are some of the challenges to foodsecurity globally. The transgenic technology and marker assisted selection are few of thepromising tools for crop improvement leading to increased production to meet the globaldemand and ensure food security globally.

Food Security: An overview

Food is essential for people to livesustainable and healthy lives. Advancesin food production, processing, and tradehave substantially strengthened foodavailability, stability, access, andutilization in past decades. Yet, at thebeginning of the 21st century, achievingfood security for all is a far reaching goal(Braun, 2009). The status of food securityis variable in different parts of the world.The number of undernourished peoplein developing countries actuallyincreased form 823 million in 1990 to 923million in 2007 (FAO 2008a). Populationand income growth-combined with highenergy prices, biofuels, science andtechnology breakthroughs, climatechange, globalization, and urbanization

are causing drastic changes in foodconsumption, production and markets(Braun, 2009).

Food security is a situation in whichpeople do not live in hunger or fear ofstarvation. World-wide around 852million men, women and children arechronically hungry due to extremepoverty; while up to 2 billion people lackfood security intermittently due tovarying degrees of poverty (FAO, 2003).The World Food Summit in 1996describes that food security exists whenall people, at all times, have physical andeconomic access to sufficient safe andnutritious food to meet their dietaryneeds and food preferences for a healthyand active life (FAO, 1996). Food securityas defined by FAO, provides a useful goal

* Lecturer, Faculty of Law, Allahabad University

Manupatra Intellectual Property Reports (MIPR)F-48 [Vol. 2


of production

b) Access to food-a function ofpurchasing power / access tosustainable livelihoods, and

c) Absorption of food in the body-determined by access to safedrinking water and non foodfactors such as environmentalhygiene, primary health careand primary education.

The future of food security depends onpopulation stabilization, theconservation and care of arable landthrough attention to soil health andreplenishment of fertility, and theconservation and careful management ofall water sources so that more crops canbe produced per drop of water (M SSwaminathan, 1993).

The food-related global issues to beaddressed by the agriculture scientists,governance are

i) global food emergencyresponses, ii) trade and standardiii) competition policy, iv)international agricultureresearch, v) food safety andagriculture-health links, vi)climate change adaptation andmitigation, vii) Cross-boundarywater, and viii) natural soil andgenetic resources (Braun, 2009).

Some of the important issues forinternational agriculture research forattaining global food security asproposed (Braun et al., 2008) are:

i) Increasing the productivity ofcrop and livestock systems

ii) Reducing vulnerability to bioticand abiotic stresses

iii) Improving the nutritionalquality of food

iv) Addressing Climate Change

v) Increasing the resilience of agro-ecosystems

vi) Improving the soil fertility

vii) Increasing the efficiency of wateruse

towards which the world should strive.Food security is a valuable concept ifused with a clear understanding of whatit means, its limitations, and how itinteracts with behavior and non-foodfactors. Estimates of household foodsecurity, combined with individualanthropometric estimates for childrenand a thorough understanding ofhousehold behavior provide a powerfulnput into the design and implementationof policies and programs to improvenutrition (Pinstruo-Andersen, 2009). Adirect relationship exists between foodconsumption levels and poverty.Families with the financial resources toescape extreme poverty rarely suffer fromchronic hunger: while poor families notonly suffer the most form chronic hunger,but are also the segment of thepopulation most at risk during foodshortages and famines.

Two commonly used definitions of foodsecurity come form the UN’s Food andAgriculture Organization (FAO) and theUnited States Department of Agriculture(USDA):

• Food security exists when allpeople, at all times, have access tosufficient, safe and nutritious foodto meet their dietary needs and foodpreferences for an active andhealthy life.

• (FAO)

• Food security for a householdmeans access by all members at alltimes to enough food for an active,healthy life. Food security includesat a minimum (1) the readyavailability of nutritionallyadequate and safe foods, and (2) anassured ability to acquireacceptable food in sociallyacceptable ways (that is, withoutresorting to emergency foodsupplies, scavenging, stealing, orother coping strategies). (USDA)

• Food security has two three majordimensions:

a) Availability of food-a function

F-492013]


Biotechnological Intervention for Attaining Global Food Security

115

(Tuli et al., 2009). The status of biotechcrops in India is provided.

Transgenic crops: A hope for future

Transgenic / genetically modified (Gm)/ biotech crops are the plants in whichthe gene(s) is transferred from a differentspecies or sometimes an entirely differentkingdom.

A number of transgenic plants have beenproduced so far which are resistant toinsects, viruses, pathogens, herbicidesand a variety of other biotic and abioticstresses. Some other traits includeincreased nutrient content, improvedflavour, their use as vaccines, bioreactors(for manufacturing chemicals orpharmaceuticals) etc.

Different transgenic plants have beenaccepted worldwide, viz. Soybean,Maize, Cotton, Canola, Rice, Potato,Tomato, Tobacco, Squash, Papaya etc.Out of these, there has been a significantrise in the consumption of Soybean,resulting in its maximum globalacceptance. The progress has been sospectacular that by the turn of thecentury, we hope to be growing cropswhich have been tailored to marketspecification by addition, subtraction ormodification of genes.

Transgenic approach aims for

(i) Increasing crop productivity,and thus contributing to globalfood, feed and fiber security,with benefits for producers,consumers and society at large

(ii) Conserving biodiversity, as aland-saving technology capableof higher productivity on thecurrent 1.5 billion hectares ofarable land, and therebyprecluding deforestation andprotecting biodiversity in forestsand in other in-situ biodiversitysanctuaries.

(iii) More efficient use of externalinputs, thereby contributing to asafer environment and moresustainable agriculture systems.

Transgenic / geneticallymodified (Gm) / biotech

crops are the plants in whichthe gene(s) is transferredfrom a different species or

sometimes an entirelydifferent kingdom

Biotechnological interventions:

Indian agriculture faces the formidablechallenge of having to produce more farmcommodities for our growing human andlivestock population from diminishingper capita land and water resources.Biotechnology, in combination withclassical breeding techniques, has thepotential to over come this challenge toensure the livelihood security of over 110million families in our country (Nateshand Bhan, 2009). The success of Bt cottonin India as evident form the increasedyield form 302 kg/ha in 2001-02 to 560kg/ha in 2007-08 clearly reflects thepotential of modern biotechnologicaltools in crop productivity.

In India substantial efforts is being madeby public and private sector organizationtargeting different crops like brinjal,cabbage, castor, cauliflower, corn,groundnut, okra, potato, rice, tomato forenhancing productivity using transgenicapproach. Efforts are being made toidentify desirable QTLs ( Quantitativetrait loci) and genes for specific trait andits incorporation in common cultivars

viii) Improving the genetic resourcemanagement

ix) Undertaking institutionalinnovations to improve marketaccess

x) Ensuring that agriculturalproduction benefits the poor,especially women

xi) Promoting agriculture-healthlinkages



(iv) Increasing stability ofproductivity and production tolessen suffering during faminesdue to abiotic and biotic stresses.

(v) The improvement of economic,health and social benefits, food,feed, and fiber security andalleviation of abject poverty,hunger and malnutrition for therural population dependent onagriculture in developingcountries.

(vi) The production of renewableresource based bio-fuels whichwill reduce dependency on fossilfuels, and therefore contribute toa cleaner and safer environmentwith lower levels of greenhousegases that will mitigate globalwarming.

There has been advancement in the areaof transgenic with development of first,second and third generation transgenic.In case of first generation emphasis wasto develop plants with only selectablemarker genes like useful for thedevelopment of transformation systemsin different crops. In second generationbesides the selectable marker genes oneor two transgenes encoding simpleagronomic traits (such as pest andherbicide resistance) were also inserted.In third generation transgenic cropsmultiple transgene targeting multiplepest and diseases, often in a temporal orspatial manner along with additionalvalue-added or agronomic traits isincorporated.

Present status of Transgenic crops:

The world population has topped6 billion people and is predicted to

116

double in the next 50 years. Ensuring anadequate food supply for this boomingpopulation is going to be a majorchallenge in the years to come. GM foodspromise to meet this need in a number ofways:

(i) Pest resistance: Crop losses forminsect pests can be staggering,resulting in devastationfinancial loss for farmers andstarvation in developingcountries. Farmers typically usemany tons of chemical pesticidesannually. Consumers do notwish to eat food that has beentreated with pesticides becauseof potential health hazards, andrun-off of agricultural wastesfrom excessive use of pesticidesand fertilizers can poison thewater supply and cause harm tothe environment. Growing GMfoods such as Bt corn can helpeliminate the application ofchemical pesticides and reducethe cost of bringing a crop tomarket.

(ii) Herbicide tolerance: For somecrops it is not cost-effective toremove weeds by physicalmeans such as tilling, so farmerswill often spray large quantitiesof different herbicides (weed-killer) to destroy weeds, a time-consuming and expensiveprocess that requires care so thatthe herbicide doesn’t harm thecrop plant or the environment.Crop plants genetically-engineered to be resistant to onevery powerful herbicide couldhelp prevent environmentaldamage by reducing the amountof herbicide needed. Forexample, Monsanto has createda strain of soybeans geneticallymodified to be not affected bytheir herbicide productRoundup. A farmer grows thesesoybeans which then onlyrequire one application of weed-

There has been advancementin the area of transgenic withdevelopment of first, second

and third generationtransgenic

F-512013]


killer instead of multipleapplication, reducingproduction cost and limiting thedangers of agricultural wasterun-off.

(iii) Disease resistance: There aremany viruses, fungi and bacteriathat cause plant diseases. Plantbiologists are working to createplants with genetically-engineered resistance to thesedisease.

(iv) Cold tolerance: Unexpected frostcan destroy sensitive seedlings.An antifreeze gene form coldwater fish has been introducedinto plants such as tobacco andpotato. With this antifreeze gene,these plants are able to toleratecold temperatures that normallywould kill unmodifiedseedlings.

(v) Drought tolerance/salinitytolerance: As the worldpopulation grows and moreland is utilized for housinginstead of food production,farmers will need to grow cropsin locations previously unsuitedfor plant cultivation. Creatingplants that can withstand longperiods of drought or high saltcontent in soil and groundwaterwill help people to grow cropsin formerly inhospitable places.

(vi) Nutrition: Malnutrition iscommon in third worldcountries where impoverishedpeoples rely on a single cropsuch as rice for the main stapleof their diet. However, rice doesnot contain adequate amountsof all necessary nutrients toprevent malnutrition. If ricecould be genetically engineeredto contain additional vitaminsand minerals, nutrientdeficiencies could be alleviated.For example, blindness due tovitamin A deficiency is acommon problem in third world

countries. Researchers at theSwiss Federal Institute oftechnology Institute for PlantSciences have created a strain of:golden: rice containing anunusually high content of beta-carotene (vitamin A). Since thisrice was funded by theRockefeller Foundation, a non-profit organization, the Institutehopes to offer the golden riceseed free to any third worldcountry that requests it. Planswere underway to develop agolden rice that also hasincreased iron content.However, the grant that fundedthe creation of these two ricestrains was not renewed,perhaps because of the vigorousanti-GM food protesting inEurope, and so thisnutritionally-enhanced rice maynot come to market at all.

(vii) Pharmaceuticals: Medicinesand vaccines often are costly toproduce and sometimes requirespecial storage conditions notreadily available in third worldcountries. Researchers areworking to develop ediblevaccines in tomatoes andpotatoes. These vaccines will bemuch easier to ship, store andadminister than traditionalinjectable vaccines.

(viii) Phytoremediation: Not all GMplants are grown as crops. Soiland groundwater pollutioncontinues to be a problem in allparts of the world. Plants suchas poplar trees have beengenetically engineered to cleanup heavy mental pollution formcontaminated soil.

According the ISAAA brief 39 GlobalStatus of Commercialized Biotech/GMCrops (Clives, 2008), there has beensubstantial increased in the productionof GM crops and number of countriesadopting the transgenic crops has

117

Biotechnological Intervention for Attaining Global Food Security



increased to 25 worldwide. The biotechcrops has contributed immensely tosustainability by 1) Contributing to food,feed and fiber security including moreaffordable food (lower prices); 2)Conserving biodiversity; 3) Contributingto the alleviation of poverty and hunger;4) reducing agriculture’s environmentalfootprint; 5) Helping mitigate climatechange and reducing greenhouse gases;6) Contributing to more cost-effectiveproduction of biofuels; and 7)Contributing to sustainable economicbenefits worth US$44 billion form 1996to 2007 (Clives, 2008).

Conclusion:

There has been a drive for attainingglobal food security by participation ofagricultural scientist by adopting thetools of biotechnology to surpass thelimitation of arable lands, mitigation thelosses due to insects, pests, abioticstresses etc. the adoption of transgenictechnology worldwide is a positivesignal and needs to be extended fordifferent crops throughout the world.There is a need to integrate the classicalgenetic and modern genomicapproaches, together with “science ofomics: i.e. transcriptomics, protemics,metabolomics and tools of bioinformaticsfor effective use of genomics in breedingwhich is sometime referred as genomics-assisted breeding (GAB). Food securityis a global population day by day.

References

Beyond borders. Global Biotechnologyreport 2007, Ernst & Young, pp 1-82.

FAO (1996) Declaration on world foodsecurity. World Food Summit, FAO,Rome.

FAO (Food and AgricultureOrganization of the United Nations)(2008a) Hunger on the rise: soaring pricesadd 75 million people to global hungerrolls. Briefing paper. Memo.

Gupta H. S et al., (2009) Quality proteinmaize for nutritional security : rapiddevelopment for short duration hybridsthrough molecular marker assistedbreeding, Current Science, 96(2), 230-237.

James, C., (2008) Global status ofcommercialized biotech/GM crops. InISAAA Brief No. 39, International Servicefor the Acquisition of Agri-BiotechApplications, Ithaca, New York, pp. 1-243

Joachim von Braun (2009) Addressingthe food crisis: governance, marketfunctioning, and investment in publicgoods, Food Sec., 1:9-15.

Natesh S and Bhan M K (2009)biotechnology sector in India, Strength,limitations, remedies and outlook,Current Science, 97(2), 157-169.

Per Pinstrup-Andersen (2009) Foodsecurity: definition and measurement,Food Sec. 1:5-7

R. Babu, Sudha K. Nair, B. M. Prasannaand H. S. Gupta (2004) Integratingmarker-assisted selection in cropbreeding - Prospects and challenges ;Current Science, 87,607-619

Stuber, C. W., Polacco, M., Senior, M.L.(1999) Synergy of Empirical Breeding,Marker Assisted selection and Genomicsto Increase Crop Yield Potential, CropScience 39:1571-1583

Tuli, R., Sawant, S. V., Trivedi, P. K. Singh,P. K. and Nath, P(2009) Agriculturalbiotechnology in India: prospects andchallenges. Biotechnol. J. 4, 1-10.

Varshney R K, Hoisington D A and TyagiA K 92006) Advances in cereal genomicsand application in crop breeding, Trendsin Biotechnology, 24, 1-10.

Von Braun j et al, (2008) InternationalAgricultural Research for Food Security,Poverty Reduction and the Environment:What to expect from scaling up CGIARinvestments and “Best Bet” programs.International Food Policy ResearchInstitute, Washington D.C.

118

F-532013]


Proposed hike in Patent Fee-Bane or boonfor investors

Kanisshka Tyagi*

DIPP is proposing a sweeping fee hike for filling patents and prosecuting same before thepatents office. The relevant notification proposing the hike in fee proposes to levy a penaltyin form of additional fee of ten percent on those who opt to file the patent application viaphysical mode. This article discusses if this proposed hike in the wake of the holistic patentenvironment in India is justifiable or not.

The general prise rise and inflation inthe economy has enveloped the IndianPatent Office (“IPO”) as well. TheDepartment of Industrial Policy andPromotion (“DIPP”) has proposed tohike fee levied for filling and prosecutingpatents vide its notification dated6th May, 20131. The notificationessentially seeks to amend the PatentRules of 2003 (“Patent Rules”) inparticular Rules 7 and 136 of the PatentRules providing for the official fee forfiling and prosecution of patentapplications. Central governmentproposes to enact and implement theamended patent rules to be designatedas The Patents (Amendments) Rules,2013 after the same is deliberated uponby parliament.

As pointed out above the proposedamendment seeks to amend Rules 7and 136 of the Patent Rules. While Rule 7

in its current form lays down rules ontwo matters namely the quantum of feepayable and the mode of payment of feein respect of grant of patents and othermatters under the Patents Act, 1970(“Act”), Rule 136 confers power on theController2 to award cost in allproceedings before the Controller. SubRule (1) of the Rule 7, of the Patent Rulesruns as follows:-

“the fees payable under Section 142 inrespect of the grant of patents andapplications there for, and in respect ofother matters for which fees required tobe payable under the act shall be asspecified in the first schedule”

Now by the soon to be amendment thatis being made through this notificationby The Department of Industrial Policyand Promotion aims to add a proviso tothis Sub-rule. The proviso to this rule isproposed to be worded as,

* Kanisshka Tyagi is partner with corporate and commercial firm Kaden Boriss. She advisesclients on and handles transactions related to private equity investments, real estate, acquisitions,corporate restructuring arrangements commercial contracts and secretarial matters.

1 http://dipp.nic.in/English/acts_rules/Notification/ipr/Draft_PatentRules2013.pdf

2 Controller General of Patents, Designs and Trade Marks defined in Section 2(1)(b) of thePatents Act, 1970.

119



“provided that 10 percent additionalsurcharge shall be levied on the fees fordifferent proceedings under PatentAct, 1970 when the application for patentand other documents are filed inphysical mode namely in hard copyformat “

Since Rule 136 of the Patent Rules is alsoproposed to be amended it is pertinent tonote the provisions of Rule 136 alsowhich are reiterated herein-below:

“In all proceedings before the controller,he may, subject to Rule 63, award costsas he considers reasonable, havingregard to all circumstances of the case;provided that the amount of costsawarded in respect of any, matter set forthin the fourth schedule shall not exceedthe amount specified therein”

Interestingly the Rule 136 of the PatentRules after the proposed amendmentshall stand in the following form:-

“Provided that 10 percent additionalsurcharge shall be levied on the scale ofthe costs awarded in respect of certainproceedings before the controller, asstated in the fourth Schedule, when thedocuments are filed in physical mode,namely, in hard copy format”

Further the amendment of the firstschedule of the Patent Rules is alsosought which proposes to almost doublethe fee presently charged by the IPO. Theproposed first schedule lists a total offifty chargeable/non chargeableactivities while the first schedule in its

current form lists sixty activities.Further, the proposed amendmentmentions application for permission forapplying patent outside India underSection 39 of the Patents Act and Rule71(1) “which is not subject to fee underthe present Patent Rules. Surprisingly,entry for ‘filing representation opposinggrant of patent under Section 25(1)” inthe first schedule of the Proposed Rulesis exempted from depositing any fee asopposed to present Patent Rules whichcharge fee of INR 1500 (Rupees onethousand five hundred) for naturalapplicants and INR 5000 (Rupees fivethousand) for others.

A very interesting aspect of thisamendment is that it stipulates paymentto be made via two categories one of thetwo shall be the payment via e-route andthe other would be the payment viaphysical mode. The main punch of theseproposed amended rules provide anincentive to applicants filling choosingthe route of electronic filing and leviespenalty in form of additional fees of 10%on any filing done on paper. Thiscategorisation into e-route and physicalroute is a clear deviation from the existingclassifiation into different slabs of feepayable by natural persons and that bypersons other than natural persons.Furthermore, the fourth schedule postamendment sought via the relevantnotification of DIPP, witnsses a price hikefor all nine enteries in comparison to thecurrent Fourth Schedule the PatentRules. The enteries have not beenchanged, replaced or substitueted. Stampfee for power of attorney where a patentagent or other person has been appointedor stamp fee in respect of relevantaffidavits remains unchanged i.e, the feeis the amount actually paid. Thisschedule is with respect to the provisothat shall be added in rule 136 and hasgot nothing to do with the ‘e’ - filing orthe physical filing. This seems to be anadditional part of this harsh policy ofthe DIPP of going with the flow of hikingthe fees.

A very interesting aspect ofthis amendment is that itstipulates payment to be

made via two categories oneof the two shall be the

payment via e-route and theother would be the payment

via physical mode

120

F-552013]


Objective behind the proposedamendment

The objective sought behind the revisionof fees has not been stated explicitlyanywhere in the notification dated 6th

May, 2013; however by implication, theintention behind the strategy of chargingmore for physical filing and promotingpatenting the “e” way may beunderstood to mean that the additionalfee is required for overhauling thepresent physical filing system andequipping the IPO with state of the arttechnology. Nonetheless, one would stillquestion the utilisation of the alreadyavailable excess funds at the disposal ofIPO. Though it must be appreciated thatthe move is warranted in order toameliorate the IPO services whilediscouraging frivolous application, onecannot ignore the fact that such increasein fees would unnecessarily burden thepatent filing while discouraging thegenuine applicants as well.

Despite the fact majority of populationin our country has difficulty in accessinginternet, the move to modernise and shiftto electronic filing completely ignored thelimitation of the proposed modelparticularly in rural areas whilstcontributing through additional fees

burden. Guidance should be sought fromthe Ministry of Corporate Affairs andother government departments whichhave successfully shifted towards theelectronic mode without causing anyundue hardship to the masses. Further,as the move comes immediately after theUnited States Patent and TrademarkOffice (“USPTO”) revised its fee schedulein March, 2013, it is seen as unnecessarystep effected only to follow theinternational move by the IPO whichalready has excess funds in its kitty.

Comparison with United States

Talking of the inspirational patenthistory of the United States (“US”), a lotneeds to be learnt from the super power.It is imperative to mention here that whilethe USPTO fee hike has been imitated,the USPTO fee charging system is onewhich essentially provides forclassification of entities based on theirsize, thereby providing for discount of50% (fifty percent) and 75% (seventy-fivepercent) for small and micro entities asagainst the large entities. While in Indiawe have classification based on (a)natural persons and (b) persons otherthan natural persons, which completelyoverlooks the fact that incentive isrequired based on ones earning/sizerather than the form.

Lessons to be learnt from USA

To understand and seek direction fromUS patent regime it is important toanalyse its development. There isbeginning to every successful story,United nation’s story of the patentawareness success shot up during thenineteenth century. The need ofpatentability arose with the inventions ofThomas Alva Edison. A proper “patentoffice” was established in America duringthis time. Though the establishment ofsuch an authority was not new to theworld history, yet the American system ofpatentability was a system that made itsway through to the top patent system ofthe world. The USPTO administeredpatent laws and collected fees frominventors in order to meet its operating

Despite the fact majority ofpopulation in our countryhas difficulty in accessing

internet, the move tomodernise and shift to

electronic filing completelyignored the limitation of theproposed model particularly

in rural areas whilstcontributing throughadditional fees burden

Proposed hike in Patent Fee-Bane or boon for invstors

121



expenses. The fees, was way too low incomparison to the British counterparts.Therefore, patent registration becameeasily accessible to many inventors in theU.S. American patents provided inventorswith exclusive ownership of the creationsand inventions for seventeen years. Inreturn, inventors had to disclose to thepublic the details of their invention. Also,the patent system, established under theUS Constitution, was intended to providean economic incentive for the inventor,who could assign all or partial rights in apatent to other individuals or companies.Earlier, inventors used to sell off theirpatent rights for a flat sum or in exchangefor royalty payments. Some also obtainedfinancial support for past or ongoinginventive activity or for assistance inestablishing businesses to exploit theirinventions. The creativity of one personwas not getting any recognition in theprocess, and thus States decided on tosafeguard its citizens’ creativity andinventions and make them limited to themand to allow them use their invention allover the world in their own name. Thiswas a step by the USA to pump itseconomy and develop the intellectualproperty; by following the principle ofproviding greater protection which in turnresulted in enhanced creativity andinvention. Much true to its principle, USAtoday has one of the most powerful patentsystem in the world.

India must learn from the remarkableprogress and ideology that USAimplemented way back in the nineteenthcentury. It must not be forgotten that thepatent law in India lacks awarenessenormously. The process of patentabilitylacks conscious participation of theinventors. Brain drain is happening atthe cost of this unawareness, besidescreative inventions and ideas are beingtraded off from the country because oflimited patent and trademark awareness.It is appreciable that the Department ofIndustrial Policy and Promotion isencouraging registration the “e-way” butthe hike first and fourth schedule is anextremely redundant amendment and it

needs to be reconsidered. The inventorsare not supposed to be “paying a price”for the protection of their own creativityand inventions. It needs a mention herethat while Patent system was freshlyintroduced in the American legal system,they did not focus on ‘fee’ for suchprotectionist system, the focus waszeroed down to promotion of, efficiency,creativity, innovation, hard work andintelligence of their citizens.

While the growth rate of India withrespect to patentability is painfully slowand with conventions and organisationslike the Madrid Protocol, Trade relatedIntellectual Property Rights (“TRIPS”),World Intellectual Property Organisation(“WIPO”) and Paris convention forprotection of Industrial property; it isalready very hard for India to match upwith the global pace and standards.Stringent policies like this, the situationwill only land the nation into some moredeep waters.

India must not forget that its patent regimeis still at a very nascent stage and suchdiscouraging steps shall have a verynegative effect. It is pretty confusing thatwhy the Patent Rules are being amendedby the DIPP at this stage of Patent scenarioin India, when the aim and motive for thesame should be the development withrespect to patent awareness.

Conclusion

In the point of fact, an in-depth study ofthis patent amendment seems to belacking a vision. The policy is notappealing at all. The focus of theProposed Rules seems to be to acquire

The focus of the ProposedRules seems to be to acquireadvanced technology whichis noble but is in fact very

premature step consideringthe present day system

122

F-572013]


advanced technology which is noble butis in fact very premature step consideringthe present day system. The urgent needof the hour is development of the patentsystem in India, while creatingawareness for the protection of rights ofthe inventors. India has a perfect legalsystem for such protection already, butthe vacuum lies with the “patentawareness preaching” system of thecountry. Thousands of inventions areeither sold off or are being traded to othercountries, for the reason that thisunawareness still prevails. In the era ofconventions like the Paris Convention,Madrid protocol and Trade relatedintellectual property rights; an urgentneed of matching the global standardsshould be insisted.

Another ambiguity that requires attentionis that DIPP intends to hike the fees withoutproviding any justification for suchincrease or how this increase is going tobenefit the patent regime/inventors. Hadthere been any reason for such a hike, thischange in the fee would have definitelybeen taken up from another point of view,which could have been a positive point ofview as well. Appreciation definitely goesall in for India’s decision to get itselfregistered as the member of the Madridprotocol and moving one step closer tomatching its pace with the “World PatentDevelopment”.

Although a deep apprehension lies inthe fact that this step might prove

suicidal to the already lagging behindnumber of applications that are beingfiled for patent protection in India. Often,a comparison is made between thedeveloping nations- India and China.While China was ranked fifth in 2009 innumber of patent filling by the WIPO andIndia here lags far behind China, as Indiahas recorded only one tenth of theapplications compared to that of China.China, in 2009 had, filed 7,946 patentapplications, compared to 761 by India,followed by Singapore (594), Brazil (480),and South Africa (389), among others. Arecent report by the Financial Times hadsuggested that China would displace theUS as the world’s leading producer ofscientific knowledge in term of volumeby 2020. A remarkable progress is beingmade by China, which is a hard-hittingcompetitor to India, then why must Indialag behind only because of suchunwanted and unrequited policies.World Intellectual PropertyOrganization has ranked India on thefifth spot with 33,450.00 patent filings,non-residents, in the year 2011, incontrast to 255,832.00 of The UnitedStates, 110,583.00 for China and55,030.00 for Japan and 40,890.00asagainst that of Korea. Therefore the paceneeds to matched to a great extent, andfiddling with the patent schedule andrules seems to be just not “the very idea”that India needs to implement at thisdefenceless point of time.

Proposed hike in Patent Fee-Bane or boon for invstors

123



125

Samsung v. Apple – Enforment Veto by the Us Government

It was on the date June, 4, 2013, that the United States International TradeCommission determined that Apple Inc. had violated Section 337 of the Tariff Act of1930 (1930 Act), in the importation of certain devices such as the smartphones andtablet computers that infringe a U.S. patent owned by Samsung Electronics Co., Ltd.and Samsung Telecommunications America Inc. (Samsung). It was after this orderby the International Trade Commission that the Commission again issued anexclusion order prohibiting the unlicensed importation of infringing devices,manufactured for or on behalf of Apple. Further a cease and desist order was issuedthat prevents Apple from engaging in activities such as the same of those productsin the United States. The authority to exclusion has been assigned to the UnitedStates Trade Representative. Furthermore the legislative history of Section 337 liststhe following considerations relevant to the policy review of the impact of theCommission’s determination to issue an exclusion order: (1) public health andwelfare; (2) competitive conditions in the U.S. economy; (3) production of competitivearticles in the United States; (4) U.S. consumers; and (5) U.S. foreign relations,economic and political. In addition, on January 8, 2013, the Department of Justiceand United States Patent and Trademark Office issued an important Policy Statemententitled “Policy Statement on Remedies for Standard-Essential Patents Subject toVoluntary FRAND Commitments”

Such a statement makes clear standards particularly voluntary consensus standardsset by standards developing organizations which have incorporated importanttechnical advances that are fundamental to the interoperability of many of theproducts on which consumers have come to rely. It also expresses substantialconcerns about the potential harms that could result from owners of standards-essential patents (SEPs) who have made a voluntary commitment to offer to licenseSEPs on terms that are fair, reasonable, and non-discriminatory (FRAND), gainingundue leverage and engaging in “patent hold-up”. At the same time, technologyimplementers also can cause potential harm by constructive refusal to negotiate aFRAND license with the SEP owner or refusal to pay what has been determined tobe a FRAND royalty. Due to the fact that the Policy Statement makes clear, whetherpublic interest considerations counsel against a particular exclusion order dependson the specific circumstances at issue. It also explains that to mitigate against patenthold-up, exclusionary relief from the Commission based on FRAND-encumberedSEPs should be available based only on the relevant factors described in the PolicyStatement. The courts are also engaged on the issue of appropriate remedies forinfringement of SEPs and that the Concerned Authorities look forward to thedevelopment of appellate jurisprudence on this issue. The SEP Policy Statement is

Special Feature

Manupatra Intellectual Property Reports (MIPR)SF-2 [Vol. 2


one part of the Administration’s continuing efforts to consider the scope ofappropriate remedies for owners of SEPs, and encourage the development of strong,innovative standards. Further the Administration was committed to promotinginnovation and economic progress, including through providing adequate andeffective protection and enforcement of intellectual property rights. Relief availableto the owners of intellectual property rights through Section 337 is an importantfacet of achieving that objective. At the same time, standards, and particularlyvoluntary consensus-based standards set by SDOs, have come to play anincreasingly important role in the U.S. economy. Important policy considerationsarise in the enforcement of those patents incorporated into technical standardswithout which such standards could not be implemented as designed, when thepatent holder had made a voluntary commitment to offer to license these SEPs onFRAND terms. The Concerned Authorities had reviewed the various policyconsiderations set out above based on the information provided in this case, includinginformation developed in connection with the Commission’s determination. Afterextensive consultations with the agencies of the Trade Policy Staff Committee andthe Trade Policy Review Group, as well as other interested agencies and persons,this Authority has decided to disapprove the USITC’s determination to issue anexclusion order and cease and desist order in this investigation. Such a decisionwas based on my review of the various policy considerations discussed above asthey related to the effect on competitive conditions in the U.S. economy and the effecton U.S. Consumers.

In the future cases involving SEPs that are subject to voluntary FRAND commitments,the Commission should be certain

(1) to examine thoroughly and carefully on its own initiative the public interestissues presented both at the outset of its proceeding and when determiningwhether a particular remedy is in the public interest and

(2) to seek proactively to have the parties develop a comprehensive factualrecord related to these issues in the proceedings before the AdministrativeLaw Judge and during the formal remedy phase of the investigation beforethe Commission, including information on the standards-essential natureof the patent at issue if contested by the patent holder and the presence orabsence of patent hold-up or reverse hold-up. In addition, the Commissionshould make explicit findings on these issues to the maximum extentpossible. However it would not mean that the patent holder was not entitledto a remedy, they can pursue their rights through the Courts.


Manupatra Publishing Private Limited

Consolidated IndexVolume 2, Parts 1-4

August, 2013





®

Consulting Editors

A.A.Mohan Prathiba M Singh (LL.M Cantab)Mohan Associates Singh and Singh Advocates(Chennai) (Delhi)

Sunil B Krishna Nikhil KrishnamurthyKrishna & Saurastri Krishnamurthy & Co.(Mumbai) (Bangalore)

Associate Editors

Bitika Sharma Kavita Mundkur Nigam &Singh and Singh Advocates Madhumita Sen(Delhi) Krishna & Saurastri

(Mumbai)

Shwetambari RaoKrishnamurthy & Co.

(Bangalore)


All rights, including trademark & copyright reserved. No part of this publication may be reproducedor transmitted in any material form (including photocopying or storing it in any medium byelectronic means and whether or not transiently or incidentally to some other use of this publication)without the written permission of the copyright holder, viz. Manupatra Information SolutionsPvt. Ltd., application for which should be addressed to it or as expressly permitted by law. Suchwritten permission must also be obtained before any part of this publication is stored in a retrievalsystem of any nature. The doing of any unauthorized act in relation to a copyright work mayresult in both a civil claim for damages and criminal prosecution.

The publisher acknowledges that judgments are in the public domain. However, the editorialnotes in the judgments along with the headnotes, references to authorities, citing references,legislations, subsidiary legislations, notes and footnotes are the copyrighted material of the publisher.All editorial inputs have been prefixed with an Ed.: or have been reflected by a change of font. Theparagraphing and copyediting of the judgments contained herein are unique to this publicationand may not be reflected in the original transcripts of the court. These are being done in consonancewith the Manupatra House Style. Manupatra Publishing Pvt. Ltd. has been licenced to useaforementioned Editorial Notes and inputs.

The publisher has taken all care and effort to ensure that the information reproduced here isaccurate and up-to-date. However, the publisher, owner, editor, copyright holder or printer takesno responsibility for any inaccuracy or omission that may have inadvertently crept in or anyadvice rendered or accepted on the basis of this work. Under no circumstance shall the publisher,owner, editor, copyright holder or printer be liable for any direct, incidental, special and consequentialloss and damage that results from the user’s reliance or non-reliance of information provided inthis publication.

The views expressed in the articles published in this Journal are those of the authors alone.Publisher, owner, editors, copyright holder does not necessarily agree with these and these shouldnot be taken to reflect either the views or the policy of this Journal or those of the organisations towhich they may belong or in which they may be employed.

This journal can be exported from India only by the publisher. Violation of this condition of salewill lead to criminal and civil prosecution.

MIPR shall be published in 11 Parts (3 Volumes).

Material published in this part is the exclusive copyright property of Manupatra InformationSolutions Pvt. Ltd.

Printed and published by Priyanka on behalf ofManupatra Publishing Pvt. Ltd. from

174, Nilgiri Appartments, Alakhnanda, New Delhi-110019

© Manupatra Information Solutions Pvt. Ltd.www.manupatralawreports.in

Printed at M/s R-Tech Offset Printers 1617 A/1,Uldhanpur, Naveen Shahdara, Delhi - 110032

Editor: Priyanka

MIPR shall be published by 15th of every month. Non-receipt of part must be intimated within30 days from the date of publication. No complaint regarding non-receipt shall be entertainedafter 30 days of publication.

For any queries regarding missing parts and change of addressplease forward your queries to:

B-37, Sector 1, Noida 201301, U.P., Ph Nos. 91 120 4014444, 4014445Toll Free No. 1800 180 3550 (for BSNL & MTNL Subscribers only)

Mon–Fri (9 am – 6 pm) or email to: [email protected]

I-12013]


Index

Section AJudgments

• Allied Blenders & Distilleries Pvt. Ltd. v. M/s. JohnDistillers Limited and Registrar of Trade Marks 08.03.2013 ............ 0054

• Bayer Corporation, Pittsburg, U.S.A. v.Union of India and Ors. 04.03.2013 ............ 0097

• Eaton Corporation & Anr. v. BCH Electric Limited 01.07.2013 ............ 0369

• Gopal Kaushik v. Gastro Pub Private Ltd. & Ors. 22.04.2013 ............ 0366

• Hamdard National Foundation & Anr. v.Hussain Dalal & Ors. 07.06.2013 ............ 0223

• LML Limited v. Bajaj Auto Limited 02.05.2013 ............ 0295

• M/s. Becton Dickinson and Company v.The Controller of Patents & Designs 28.12.2012 ............ 0070

• M/s. Haldiram (India) Pvt. Ltd. and Ors. v.The Registrar of Trade Marks and Ors. 26.04.2013 ............ 0273

• M/s. Jaguar Cars Limited v. M/s. ManufactureDes Montres Jaguar S.A. and Anr. 30.04.2013 ............ 0187

• M/s. Mandom Corporation v.M/s. Fem Care Pharma Limited 05.04.2013 ............ 0201

• M/s. Mohamed Aboobacker Chank Lungi Ltd. v.V. Saraswathi, Sole Proprietrix,Trading as Saraswathi Textiles 21.01.2013 ............ 0001

• M/s. Societe Des Produits Nestle S.A. v.The Registrar of Trade Marks and Ors. 22.04.2013 ............ 0080

• Maharashtra Hybrid Seeds Co. Ltd. v. UOI and Ors. 22.03.2013 ............ 0016

• Marico Limited v. Adani Wilmar Ltd. 18.04.2013 ............ 0237

• Merck Sharp and Dohme Corporation & Anr. v.Glenmark Pharmaceuticals Ltd. 05.04.2013 ............ 0249

Manupatra Intellectual Property Reports (MIPR)I-2 [Vol. 2


• Mohan Lal, Proprietor of Mourya Industries v.Sona Paint & Hardwares AND Micolube India Limited v.Rakesh Kumar Trading as Saurabh Industries & Ors. 15.05.2013 ............ 0156

• Ramesh Sippy v. Shaan Ranjeet Uttamsingh and Others 01.04.2013 ............ 0125

• Ranbaxy Laboraties Ltd. v.The Controller of Patents & Designs and Anr. 12.06.2013 ............ 0259

• Reckitt Benckiser (India) Ltd. v. Hindustan Unilever Ltd. 14.05.2013 ............ 0148

• Rediff.com India Ltd. v. E-eighteen.com Ltd. 22.07.2013 ............ 0333

• Royal Orchid Hotels Limited v. Registrarof Trade Marks and Kamat Hotel (India) Limited 18.06.2013 ............ 0322

• S.P. Chockalingam v. Controller of Patents and Anr. 15.03.2013 ............ 0039

• Sai Paranjpaye v. PLA Entertainment Pvt. Ltd. and Ors. 04.04.2013 ............ 0215

• Super Cassettes Industries Ltd. v. Onkar Singh & Ors. 30.05.2013 ............ 0352

• Tata Sons Ltd. and Anr. v. Arno Palmen and Anr. 22.03.2013 ............ 0231

• Thomson Reuters Global Resources v. The ControllerGeneral of Patents, Designs & Trade Marks and Ors. 08.03.2013 ............ 0211

Section BSummarised Notes on Cases

• Double Coin Holdings Limited v. Trans Tyres (India)Pvt. Ltd. and the Registrar of Trade Marks 07.03.2013 ......... SNC 4

• Merck Sharp and Dohme Corporation & Anr. v.Glenmark Pharmaceuticals Ltd. 05.04.2013 ......... SNC 1

• Jagdish Gopal Kamath and Others v.Lime & Chilli Hospitality Services P. Ltd. 22.04.2013 ....... SNC 13

• M/s. Amrutha Aromatics v. M/s. N. Ranga Rao& Sons and The Registrar of Trade Marks 03.06.2013 ....... SNC 14

• Mylan (Previous Matrix) Laboratories Limited v.Pfizer Inc., OSI Pharmaceuticals Inc., F. Hoffman-LaRoache Ltd. and The Controller of Patents 14.05.2013 ....... SNC 16

• M/s. Marc Enterprises Pvt. Ltd. v.Shri Gaurav Arya Proprietor and Registrar ofTrade Marks Baudhik Sampada Bhavan 18.06.2013 ....... SNC 21

• T. Varadaraj Pai v.Kiran Kumar and Registrar of Trade Marks 04.07.2013 ....... SNC 20

• Radio One Limited v. Phonographic Performance Ltd. 02.04.2013 ....... SNC 10

• FMI Limited v. Ashok Jain & Ors. 19.03.2013 ......... SNC 3

I-32013]


• Ammini Karnan v. IPAB, and Ors. 27.03.2013 ......... SNC 7

• S. Narendra Kumar & Co. v. Apricot Foods Pvt. Ltd. 29.05.2013 ....... SNC 19

• M/s. Lowenbrau Buttenheim v.M/s. Lowenbrau Munchen 06.05.2013 ....... SNC 12

Section CNotes on International Cases

• Association for Molecular Pathology et al. v.Myriad Genetics, Inc., et al ....................................................................................... C-14

• Bowman v. Monsanto Co. et al ................................................................................. C-9

• Boxing Brands Limited v. Sports Direct International Plc and Ors. ............... C-20

• Capitol Records, LLC v. Redigi Inc. ......................................................................... C-7

• Fage UK Limited and Fage Dairy Industry S.A. v.Chobani UK Limited and Chobani Inc ................................................................... C-4

• Federal Trade Commission v. Actavis, Inc., et al ................................................. C-18

• Gunn ET AL. v. Minton .............................................................................................. C-3

• Interflora, Inc., Interflora British Unit v.Marks and Spencer Plc, Flowers Direct Online Limited .................................... C-10

• Public Relations Consultants Association Limited (Appellant) v.The Newspaper Licensing Agency Limited and Others ..................................... C-1

• The Football Association Premier League Limited v.British Sky Broadcasting Limited and Ors. .......................................................... C-17

• Twentieth Century Fox Film Corporation and Ors. v.David Harris and Ors. .............................................................................................. C-13

• Zee Entertainment Enterprises Limited and Ors. v. Zeebox Limited .............. C-15

Section DInternational News

• U.S. patent system at risk due to increasing patent litigation trolls,says RPX ..................................................................................................................... D-10

• Akamai Technologies v. Limelight Networks........................................................D-1

• Apple all set to navigate your car through your eyes ....................................... D-10

• Apple v. Samsung ........................................................................................................D-1

• Department of national library continues with its anti -piracy campaignalong with Microsoft ................................................................................................ D-10

• EPO removes language barrier for 6 languages ................................................. D-11

• EU High Court Declares Copying Levies on First Sale of Blank Media,to be no Breach of EU Law .........................................................................................D-9

133

Consolidated Index(Volume 2, Parts 1–4)



• Federal Trade Commission v Watson Pharmaceuticals ......................................D-4

• Global Innovation Index 2013 ............................................................................... D-10

• Initiative by US department of commerce on copyright policy,creativity and innovation in digital economy..................................................... D-11

• IP courts for Poland .....................................................................................................D-8

• Least Developed Countries (LDCs) granted eight extra years to implementinternational intellectual property rules .................................................................D-7

• Limitation on grants of computer software by the German government ...... D-11

• Newspaper Licensing Agency v. Meltwater ..........................................................D-3

• Russia says no to online video piracy .....................................................................D-9

• SIPO and European Patent Office sign MOU on patent classification systemD-7

• The Association for Molecular Pathology v. Myriad Genetics Inc ....................D-2

• Third trilateral symposium held at WIPO, Geneva ........................................... D-10

• TPP Negotiations raises IP as an issue along with public healthand bio tech ...................................................................................................................D-9

• Treaty for facilitating access to published works by visually impairedpersons and persons with print disabilities ..........................................................D-7

• UNHCR Resolution for medicine access ................................................................D-8

• University of Pennsylvania v. Wharton Business Foundation ..........................D-2

• US Administration’s 2013 Joint Strategic Plan for Intellectual PropertyEnforcement released ..................................................................................................D-8

• You Tube v. Viacom.....................................................................................................D-3

Section ENational News

• Biryani sought to be considered for Geographical Indication protection ........ E-5

• Campaign for consumer awareness of counterfeit automobile spare parts .... E-5

• Chidambaram conveys India’s respect towards IPR ................................................................................................................. E-9

• Copy cat drug firms get off lightly in India as compared to the USA ............... E-4

• Digital e-book chapters to replace conventional photocopying ........................ E-5

• DU photocopy case ..................................................................................................... E-1

• Gujarat based IQ and immunity increasing weed bags us patent .................... E-8

• Hiring best scientists at desired pay scale, says the Telecom Minister ............ E-3

• India implements Madrid system of Trade Mark registration ........................... E-7

• India ought to show the world that it respects its Intellectual Property rights:Kiran Mazumdar-Shaw .............................................................................................. E-3

134

I-52013]



135

• India says no to bringing changes to its IPR regime and advices us totighten its patent laws ................................................................................................ E-8

• Indian tech start-ups filing patents to get government funding Bangalore .... E-1

• Initiative taken by CGPDTM to spread IPR awareness ....................................... E-7

• IPR needs to be domestically developed says member of scientific advisorycommittee ...................................................................................................................... E-7

• Japanese patent office grants patent to Venus remedies for its antibiotic ....... E-8

• Kit Kat trademark dispute .......................................................................................... E-1

• License agreements to increase access to HIV medicines.................................... E-6

• Patent to be sought for indigenous electrical design of Delhi metro ................. E-8

• South Africa based pro- health group objects to placing India on us‘special 301 watch list’ ............................................................................................... E-9

• Symed Labs Ltd v. Glenmark pharmaceuticals Ltd. and Anrs. ......................... E-2

• Unions formed by singers and composers post Copyright AmendmentAct, 2012. ....................................................................................................................... E-6

Section FArticles

The Architecture of Intellectual Property HoldingCompanies at page F-1

This article analysis the benefits of centralized ownershipof Intellectual Property assets, the strategic planning ofmanaging its legal, marketing and administrative mattersin a separate entity known as the Intellectual PropertyHolding Company. It also explores how objectifying IP in aseparate holding company helps in commercializing itseparate from the operations and goodwill of the parentand identifies the tax havens in which IP holdingcompanies have started flocking together.

Novartis Indian Supreme Court judgment: what isefficacy for pharmaceutical invention? at page F-9

Lend a Hand to the Handlooms at page F-17

Geographical Indication is a unique class of Intellectualproperty which has been accorded a distinct status by theInternational Intellectual Property regime. The reasonbehind such a specialized protection is that they aretraditional products, produced by rural communities overgenerations that have gained a reputation in the marketsfor their specific qualities. The indicators contribute toprotect the brand names of valuable products, maintain

KRISHNAVENI SHead Research.Altacit Global

DR. SUDHIR RAVINDRAN

Attorney,Altacit Global

AJAY CHANDRU &GOWREE GOKHALE

DR. RAJENDRA MOHAN

GONELA

Retired IAS officer andFormer PrincipalSecretary AP

KRISHNAVENI.S

Head-Research,Altacit Global



and improve standards through a common rule and can beseen as an instrument to fight against fake and imitationgoods. GI can constitute as a worthwhile marketing toolfor producers of such goods. India has a rich culturalheritage and is home to many varieties of handloom fromdifferent states, which has resulted in a precious wealthwhich forms basis for innovation. Each state produceshandlooms which have unique material and designs. Theyare a result of knowledge which has been passed on tothem from generation to generation specific to the locality.This article analysis the problems which plague theHandloom industry suggests how proper use of GI as atool can help revive and ensure survival of the industry.

IPAB upholds the first compulsory license granted togeneric drug company NATCO Ltd. at page F-24

In March last year the Controller General of Patents createdhistory by issuing the first ever compulsory license to anIndian generic company Natco Pharma to manufacture andsell a generic version of Bayer Corporation’s patentprotected anti-cancer drug ‘Sorafenib Tosyalte’ marketedas NEXAVAR by Bayer. Bayer appealed against the orderto the IPAB which upheld the Controller’s order. This orderhas received world-wide attention from pharmaceuticalcompanies, governments and the academia.

This article examines the compulsory license regime inIndia and critically analyses the order of the IPAB.

Copyright vis-a-vis Public interest: Striking a Balance atpage F-29

The concepts of “copyright” and “neighboring rights” haveassumed significance in the context of contemporaryscientific, economic, social, political and legal environmentnot only in India but also in the entire world. The copyrightlaw, today, not only protects the rights of the copyrightsowner and neighboring rights, but also deals with subjectof public interest and tries to strike a balance between thetwo in this digital environment. Therefore, this articleanalyze the private rights of the author along with theneighboring rights, both of which having a relation withthe right of the society at large (or the public domain).

Pharma Patenting: A Judicial Approach at page F-44

In the pharmaceutical industry, the patent protection ofdrugs and medicines is accorded a meticulous importance,because drugs and medicines can easily be copied or imitatedand because of the significant research and developmentspending and the high risks associated with thedevelopment of a new drug. We also need to look cautiously

ADITI JHA and GOWREE

GOKHALE

Nishith DesaiAssociates

DR. SUDHIR RAVINDRAN

Attorney Altacit Global

ARINDAM GHOSH

3rd Year StudentB.A., LL.B.(Hons.),Hidayatullah NationalLaw University, Raipur

SARVESH KUMAR SHAHI

LL.M. Final year,Nalsar University ofLaw, Hyderabad

I-72013]



137

upon the conditions of granting patent under Indian Patentlaw to new drugs coming into the market. Most importantpoint is that a proper balance should be made consideringthe welfare of the people of the country and exclusive rightto monopoly of the foreign investors (especially pharmaindustries) to make and sell life-saving drugs. To providesolution to all the problems of granting patent protection thecourts in India have to act and judge sensibly, as for examplewe have already seen through latest two or three judgmentsof Supreme Court & High Courts of India. To see the futureimpact of the recently pronounced “Novartis” judgment weneed to watch the both sides of the coin.

Biotechnological Intervention for Attaining Global FoodSecurity at page F-47

The drastic increase in the global population leads to asituation where the crop productivity could not meet therequirements of all resulting in the global food insecurity.To meet the challenge efforts have been made to utilize thecurrent technologies, including modern biotechnology, toachieve high productivity in a sustainable manner coupledwith promoting complementation of traditional technologieswith modern day tools could be a solution to the problem offood security facing mankind. Utilization of the overall cropproductivity has been drastically reduced due to the growingurbanization, industrialization and diminishing per capitaarable lands and water resources. Hunger, poverty, highenergy prices, biofuels, declining productivity and limitednatural resource base are some of the challenges to foodsecurity globally. The transgenic technology and markerassisted selection are few of the promising tools for cropimprovement leading to increased production to meet theglobal demand and ensure food security globally.

Proposed hike in Patent Fee-Bane or boon for investorsat page F-53

DIPP is proposing a sweeping fee hike for filling patentsand prosecuting same before the patents office. The relevantnotification proposing the hike in fee proposes to levy apenalty in form of additional fee of ten percent on those whoopt to file the patent application via physical mode. Thisarticle discusses if this proposed hike in the wake of theholistic patent environment in India is justifiable or not.

Section GSpecial Feature

• Samsung v. Apple – Enforment Veto by the Us Government ........................... SF-1

ISHITA CHATTERJEE

Lecturer, Faculty ofLaw, AllahabadUniversity

KANISSHKA TYAGI

Partner, Kaden Boriss(Corporate andCommercial Firm)



Subject Index

Copyright — Claim for ownership of copyright by Partnership firm — Challengethereto — Plaintiff claimed to be the owner of the copyright and also to the Author’sSpecial Rights in the film titled “Sholay” and four other films — He submitted thatthe author of a cinematograph film has to be a natural person and a firm not being anatural person could not claim authorship of the film — Whether a Partnership firmcould be the owner of the copyright — Held, a Partnership is a compendium ofindividuals and when a Partnership firm is the owner of the copyright, in fact, thePartners are the joint owners of the copyright and as such the “joint authors” of thecopyright in the film. Joint authorship is acknowledged in Section 2 (z) of theCopyright Act wherein “work of joint authorship” is defined to mean a workproduced by the collaboration of two or more authors in which the contribution ofone author is not distinct from the contribution of other author or authors. When aPartnership firm makes a film and takes various steps including funding the film,the financial contribution of one Partner is not distinct from the contribution of theother Partners. Therefore, the Partners of a Partnership firm would be the joint authorsand as such the owners of the copyright. The concept that a Partnership firm ownsintellectual property rights is not alien to the laws relating to intellectual property.If a Partnership firm has been using the Trade Mark, unless there is evidence to thecontrary, it has to be prima facie presumed that it is the property of the firm. Theprovisions of Section 24 of the Trade Marks Act, 1999, also recognizes registration ofa Trade Mark in case of two persons who are Partners of a firm. Similarly the PatentRights shall be deemed to belong to the two Partners of the firm and the Partners willhold it for the business of the Partnership and that during the subsistence of thePartnership, none of the two Partners can treat and deal with the Patent Right as hisindividual property. Similarly, the Partners who were the owners of the film at thetime of its completion were the authors of the film and thus the first owners of thecopyright therein. The film would thus be the property or asset of the firm in whichall the persons who were Partners at the time when the film was completed had jointor common interest. Therefore, the submission of the Plaintiff that a Partnershipfirm cannot be the owner of the copyright was rejected.

Ramesh Sippy v. Shaan Ranjeet Uttamsingh and OthersNotice of Motion No. 406 of 2013 in Suit No. 166 of 2013

Decided On: 01.04.2013 at page 0125MANU/MH/0290/2013

Copyright — Infringement — Injunction sought — Entitlement to relief if any —Quantum of damages payable to Plaintiff by Defendants — Whether rightspurchased by Defendants No. 4 to 6 vide agreement dated 14th January, 2004 wasfor a valid and bona fide consideration and if so, to what effect — Held, Plaintiffhad not led evidence to prove punitive loss. Plaintiff had merely asserted punitiveloss and no damages could be granted in absence of evidence to prove it. As forother reliefs prayed for Plaintiff, a permanent injunction against Defendants wasgranted from releasing, selling, recording, distributing, publicly performing,broadcasting or in any other manner exploiting copyright in infringing albumand its underlying works or any future album/musical/literary works of DefendantNo. 3, thereby infringing Plaintiff’s copyright in it as assigned under DetailedAgreement. Defendants were also ordered to render all accounts of profits earnedwith respect to infringing album and also delivery up of all infringing materialspertaining to infringing album.

138

I-92013]




Copyright — Infringement — Injunction sought — Release of fourth album —Assignment of copyright in four albums either under First Agreement or DetailedAgreement — Whether by releasing fourth album of Defendant No. 3 throughDefendant Nos. 4, 5 and 6, Defendant Nos. 1 and 2 had breached First Agreementand/or Detailed Agreement and that whether Detailed Agreement was terminatedor revoked by Defendants before release of infringing album — Held, Defendant No.1 has neither terminated nor revoked Detailed Agreement. Instead, Defendant No. 1has repeatedly sought to terminate First Agreement. First Agreement ceased to existbetween parties upon execution of Detailed Agreement, which clearly supersededall other agreements between parties. Therefore, Detailed Agreement was stillsubsisting at time of release of infringing album. Since Defendants No. 4 to 6 hadreleased infringing album in voice of Defendant No. 3 during subsistence of DetailedAgreement, irrespective of whether or not said Defendants entered into Agreementdated 14th January, 2004, they had infringed upon exclusive copyright held byPlaintiff by virtue of Detailed Agreement. Moreover, in Written Statement ofDefendants No. 4 to 6, it was submitted that they purchased rights to works ofDefendant No. 3 from one SJ. It could also be seen that as on 16th May, 2002, DefendantNo. 2 had entered into an assignment deed with said SJ for same songs/albums thatit had assigned to Plaintiff. Therefore, Defendant Nos. 1 and 2 were liable for breachof Detailed Agreement. Further, Defendant Nos. 4 to 6 were liable for infringingcopyright which was exclusively assigned to Plaintiff. As far as Defendant No. 3 isconcerned, Defendant No. 2 has placed on record, an Order of Senior Judge (CivilDivision), Ludhiana dated 16th August, 2003 granting an interim injunction in favourof Defendant No. 2 and against Defendant No. 3 finding that latter had breachedERA between them dated 3rd March, 2001 and restraining Defendant No. 3 fromperforming any stage show without permission of Plaintiff. Therefore, it was clearthat Defendant No. 3 has also not honoured ERA between them, which issue is to befinally decided by appropriate Court. However, since Defendant No. 3 was notprivy to Detailed Agreement, he could not be held liable for its breach or inducementto breach thereof.



Copyright — Infringement — Passing off — Injunction sought — Deceptive andconfusing similarity — Plaintiff alleged that Defendant was using a similar imageof Dial to analyze stock market quotes and market voices which was initially usedby Plaintiff to display prospects of a stock or a mutual fund — Further alleged thatDefendant’s use of visual tool with Dial like graphics was an attempt to pass offPlaintiffs visual tool with Dial like graphics for commercial gain on their website —Whether use of Dial was enough to bring a suit of Copyright Infringementand Passing off — Held, a detailed comparison of works of Plaintiff with that ofDefendant, on whole, led to Court’s inference that two works were not similar.Apart from fact that both Plaintiff and Defendant were using a Dial which Defendantwas entitled to use, there was no other similarity. Further tag-line of Plaintiff “Howhot is this Stock?” was not used by Defendant at all. Defendant used words “MutualFund Meter” which by no stretch of imagination could be said to be similar to tag-

139

Consolidated IndexSubject Index (Volume 2, Parts 1–4)



line of Plaintiff. Defendant’s contention was upheld by Court and it observed thatregistration of a copyright unlike that of a Trade Mark is indeed a prima facie evidence“of the particulars entered therein”. Further registration of copyright does not saveregistrant from a charge of infringement of copyright of another and does not lendany presumption of validity to copyright of registrant. Thus, Court held that use ofDial was not enough to bring a suit of copyright infringement and passing off.Court, further, said that a Dial had been used as an instrument to display variousvariable qualities and parameters like speed, electric current, voltage, weight, etc.and therefore, Plaintiff could not claim any exclusive right to use a Dial to representstrength of its assessment made by it for purchase/sale of a stock or mutual fund.Court, also, said that law of copyright was not concerned with protection of originalideas but with expression of thoughts and it protects original or derivative workscreated by author by his own skill, labor, creativity and investment of capital. Hence,it was of opinion that since Plaintiff did not develop “Dial” as a product of his skilland labor, therefore, he could not claim copyright over it. Further Court, relyingupon case of Eastern Book Company v. D.B. Modal and R.G. Anand v. Deluxe Films, saidthat where same idea has been developed in a different manner it shows that sourcebeing is common and therefore similarities are bound to occur and in such difficultcases, Courts are required to determine whether similarities are in the fundamentalor substantial aspects of mode of expression adopted in copyrighted work and ifthey found that Defendant’s work is a literal imitation of copyrighted work, then itwould be a case copyright infringement which was not situation in present case.Thus, Plaintiff’s submission that Defendants had “adapted” Plaintiff’s work wasrejected by Court as Plaintiff’s failed to establish infringement or deceptive similaritybetween two works. Suit dismissed.

Rediff.com India Ltd. v. E-eighteen.com Ltd.C.S. (OS) No.1115/2008,


Copyright — Infringement — Remake of film “Chashme Buddoor”(1981) — Suit forpermanent injunction — Distortion and/or mutilation of Plaintiff’s work “ChashmeBuddoor” — Whether Plaintiff was entitled for an order of permanent injunction ofthis Court from theatrically and/or otherwise releasing the said film “ChashmeBuddoor” (2013) to the public — Held, the Plaintiff had developed the story,screenplay and dialogue of the original film as a commissioned work for the originalproducer to whom she had assigned all her rights and from whom they werepurchased. Thus, the Plaintiff herself understood the Agreement dated3rd September, 1980 to mean that she had given up all her rights including all thecopyrights in the film “Chasme Buddoor”(1981). Further, before acquiring remakerights of the original film, Defendants had issued public notice in trade magazine inthe year 2007 inviting objections from third parties, if any, in relation to acquisitionof such remake rights. However, the Plaintiff did not raise any objection to the same.Hence the new film did not infringe copyright of the Plaintiff in the literary worksauthored by her in any manner whatsoever. The Plaintiff had also herself crystallizedher claim in terms of monetary compensation before the Film Writers Association tothe extent of Rs. One crore for alleged breach of her copyright as well as her moralrights and therefore the Plaintiff could be compensated if ultimately it is found thatshe was correct in her submissions qua her alleged copyright and moral rights.Moreover, the Plaintiff had approached the Court at the last minute i.e just one daybefore the release of the film. Therefore, the Plaintiff had not made out a prima faciecase in her favour and the balance of convenience was also in favour of the

140

I-112013]


Defendants. Consequently, the Court rejected the application made on behalf of thePlaintiff to the release of the movie “Chasme Buddoor” (2013).

Sai Paranjpaye v. PLA Entertainment Pvt. Ltd. and OthersNotice of Motion No. (L) 764 of 2013 in Suit No. (L) 280 of 2013

Decided on: 04.04.2013MANU/MH/0344/2013

Copyright — Infringement — Suit for permanent injunction — Premature filing ofsuit — Alleged by Defendant that time frame as provided under agreement notexpired at time of filing suit — Whether suit was liable to be dismissed as beingpremature? — Held, Plaintiff had not approached this Court seeking specificperformance of agreements between parties. Further cause of action in instant casewas regarding infringement of exclusive rights assigned to Plaintiff through differentagreements executed between parties. In any event, Defendants No. 1 and 2 had notled any evidence in furtherance of their contention and thus same ought to be decidedagainst them for lack of evidence.



Copyright — Infringement — Suit for permanent injunction — Validity of assignmentdeed — Whether Plaintiff and Defendants No. 1 and 2 did not enter into a validassignment deed dated 11th December, 2001? — Held, Plaintiff had contended thatFirst Agreement was no longer subsisting and in fact stands superseded/novatedby Detailed Agreement dated 20th July, 2002. However, it must be borne in mind thatin order to be superseded/novated, First Agreement must have been duly executedbetween parties. A mere perusal of documents placed on record shows that FirstAgreement was signed by competent persons on behalf of two parties. A copy ofFirst Agreement has also been placed on record (Exhibited as P1), which has alsobeen admitted by Defendants No. 1. Furthermore, it is not disputed that DefendantNo. 2 provided first two albums to Plaintiff under aegis of First Agreement and alsoreceived consideration there for. Moreover, Defendants No. 1 and 2 had not led anyevidence to assail execution of First Agreement. Therefore, it was found thatDefendants No. 1 and 2 validly entered into First Agreement dated11th December, 2001 with Plaintiff.



Copyright — Infringement — Temporary Injunction sought — Plaintiff claimed tobe owner of copyright and also to Author’s Special Rights in the film titled “Sholay”and four other films — Temporary injunction sought against Defendants fromdealing with the said film Sholay and also from in any manner communicating tothe public the purported 3D version of the said film Sholay in India or outside India— Whether the Defendants were guilty of infringement and the Plaintiffs were thusentitled in law to restrain them from doing so — Held, from the facts, it was clearthat the Plaintiff never claimed to be the author/owner qua the copyright in thecinematograph film Sholay and for the first time after 40 years made his claim. Itappeared that Defendant Nos. 7 and 8 were bona fide purchasers/transferees forvalue without notice of any alleged claim of the Plaintiff. They had bought rights toproduce 3D version of the film Sholay from Defendant No. 5 for valuable consideration

141




under a bona fide belief that the Defendant No. 5 (which includes their predecessorsin title who are claiming the rights in relation to the said film Sholay since release ofthe film) was the full owner of the copyright in the film Sholay. The Defendant Nos.7 and 8 in their reply affidavit had specifically stated that Defendant No. 7 createdtelevision landmark by telecasting the movie Sholay on Doordarshan which wassubsequently telecast on Sony T.V. Said telecast was never objected to by the Plaintiffon the basis of his alleged copyright over the said film Sholay. According to DefendantNos. 7 and 8, the said movie “Sholay” was thereafter re-telecast on movie channelsfor more than 50 times but the Plaintiff did not object. In the above circumstances thePlaintiff had failed to make out a prima facie case in his favour. The balance ofconvenience was also in favour of the Defendants and against the Plaintiff. No ad-interim relief was therefore granted in favour of the Plaintiff. However, the issuesraised by the Defendants qua limitation and maintainability of the suit were keptopen and not dealt with herein.



Copyright — Owner of films — Temporary injunction sought — Plaintiff claimed tobe the owner of the copyright and also to the Author’s Special Rights in the filmtitled “Sholay” and four other films — Whether the Plaintiff was the owner of thefilms — Held, an owner is a person who has spent towards the production of thefilm and who has not merely arranged for the funds but in fact has taken the risk ofcommercial failure, i.e. one who will loose money if the film flops and who will reapthe fruit of commercial success if the film is a hit. In the instant case, it was the Sippyfirm which spent on the production of the film and accordingly the cinematographfilm became the property of the said firm when the film was completed. Admittedly,the Plaintiff had resigned from the Partnership Firm much prior to the completion ofthe film. The Plaintiff had only directed the film “Sholay” and had received accoladesas a Director of the film “Sholay”. Since it was the Partnership Firm which producedthe film the name of late Mr. Vijay Sippy being a Partner in the said firm was alsoacknowledged and credited as Associate producer of the film. The Plaintiff hadtherefore miserably failed to show that he had spent any amount whatsoever on thefilm Sholay by himself and/or by taking a loan. Therefore Plaintiff at no point oftime was the author and/or the owner of the said film Sholay.



Designs — Infringement of registered design — Passing off — Whether theconception of passing off as available under the Trade Marks could be joined withthe action under 2000 Act when the same was mutually inconsistent with that ofremedy under 2000 Act — Held, design could be used as a Trade Mark and if byvirtue of its use, goodwill was generated in the course of trade or business, it couldbe protected by an action in the nature of passing off. Unlike the Trade Marks Act, 1999(1999 Act) which saved passing off remedy by an express provision in the form ofSection 27(2) of 1999 Act; there was no such provision in 2000 Act, and therefore bynecessary implication, there was legislative intent reflected, which was that, apassing off remedy ought not to be made available to a registered design. Thus, thebasis for a suit for infringement under the Designs Act was based on the uniqueness,newness and originality of the design while an action for passing off was opted for

142

I-132013]


when a party was misrepresenting using the Plaintiff’s Trade Mark, the consequencesof which includes damage to the reputation and goodwill of the Plaintiff and his/hergoods. Therefore, as the two remedies stem from different causes of action, the Courtruled that they could not be combined in the same suit. The Court, however, notedthat for convenience, if the two matters were instituted in the Court at close proximityto each other and if the Court has jurisdiction in both matters, then they could beheard together, albeit as separate causes. Reference disposed of.

Mohan Lal, Proprietor of Mourya Industries v.Sona Paint & Hardwares AND Micolube India Limited v.

Rakesh Kumar Trading as Saurabh Industries & Ors.CS (OS) Nos. 384/2008 and 1446/2011


Designs — Suit for infringement of registered design — Maintainability — Section 22of Designs Act, 2000 (2000 Act) — Whether suit for infringement of registered designwas maintainable against another registered proprietor of the design under theDesigns Act, 2000 — Held, composite reading of provisions of the Designs Actwould show that a Plaintiff was entitled to approach the Court and plead that hisregistered design was unique and that the Defendant registrant (in a case where hehas a registration in his favour as against one who applied an unregistered designto articles in the class of articles qua which registration was obtained) had obtainedregistration which was neither new nor significantly distinguishable when comparedto the Plaintiff’s registered design. Assertion in the suit was a right of monopoly. Itwas quite possible that the Defendant on the other hand apart from pleading as partof his defence, those very grounds which were available under Section 19 of Act toseek cancellation of the Plaintiff’s registration might be able to establish that hisregistered design was new or original or even significantly distinguishable fromthat of the Plaintiff. Therefore, the submissions made by parties that one registereddesign holder could not sue another registered design holder failed to appreciatethe nature of the suit. Suit for infringement sought to assert the monopoly rights ofthe Plaintiff based on the uniqueness, newness and the originality of his design quathe Defendant registrant. Entry by the Controller of Designs in the Register of Designswas only a prima facie evidence of any matter so directed to be done by 2000 Act orauthorised to be entered in the Register of Designs.




Designs —Infringement of registered design — Remedy of passing off — Availabilityof — Whether there could be an availability of remedy of passing off in absence ofexpress saving or preservation of the common law by Designs Act, 2000 and more sowhen the rights and remedies under the Act were statutory in nature — Held, passingoff action simply put was an action filed to vindicate one’s claim that the Defendantby employing misrepresentation (whether intentional or not) was seeking to representto the public at large that his goods were those of the claimant and such a mis-representation had caused or was likely to cause substantial damage to the goodwill/reputation which was attached to the Plaintiff’s goods. Therefore, in a passing offaction the Plaintiff would have to establish the following ingredients - (i) That therewas goodwill or reputation attached to the goods or services which the Plaintiff

143




offers in the mind of the purchasing public, i.e., the consumers, who associate orwere in a position to identify such goods or services by virtue of Trade Mark usedwhich could include the get-up, trade dress, signs, packaging, label, etc. (ii) That theDefendant had employed mis-representation which made the consumers believethat the Defendants goods were those of the Plaintiff. It was no defence in an actionof passing off that the mis-representation was unintentional or lacked fraudulentintent. (iii) And lastly, that the Defendant’s action had caused damage or wascalculated to cause damage. The 2011 decision of the Delhi High Court in the samecase had come into criticism for its decision that an action for passing off could notbe intiated by the holder of a registered design as such a remedy of passing off wasnot available under the Designs Act. This argument was discarded by the threejudge bench of the Delhi High Court. The Court thus relying on McCarthy onTrademark and Unfair Competition noted that dual protection may exist under thetwo IPR regimes of design law and trademark law especially as shape which was arelevant consideration in this case is protected under Trade Mrk and Design laws inIndia. The Court ruled that while simultaneous registration as a Trade Mark anddesign was not permitted, there was no bar on a design post registration on beingused as a Trade Mark. Therefore, dual protection under Design law and Trade Marklaw was permitted.




Intellectual Property — Protection of Plant Varieties — Rules 32 and 33 of theProtection of Plant Varieties and Farmers Rights Rules, 2003 (“Rules”) ; Section 21(2)of the Protection of Plant Varieties and Farmers’ Rights Act, 2001(“Act”) —Application for registration of product — Objection raised by opponent — Delay infiling objection — Delay condoned — Sustainability — Whether the Registrar hadthe power to condone a delay in matters regarding filing of opposition — Held, theCourt in order to address this question primarily relied on Rules 32 and 33 of theRules and Section 21(2) of the Act. Communication placed by the Ministry informedthat on detailed discussion between the concerned Ministries it was found thatRule 32 mandates compliance with time schedules provided for in the Act in relationto advertisements, oppositions, etc. Rule 33(6) allows the Registrar to condone adelay with regard to submission of evidence and Section 21(2) states that any personmay file an opposition within 3 months of date of advertisement. It was contendedthat the power under Rule 33(6) to condone delay should be extended to Rule 32.The Court highlighted that Rule 33 deals with condonation of delay in relation tosubmission of evidence. On the other hand, Rule 32 explicitly deals with filing ofoppositions and states that the time period provided for in the Act is absolute andtherefore cannot be extended. The Court, therefore held that the power under Rule 33was with regard to a specific matter and hence could not be imported into Rule 32which dealt with other matters. Thus, High Court concluded that mandate of Rule 32of Rules should be read as one which was directory and not mandatory and thuspower could be exercised in appropriate case by the Registrar to extend the timeperiod for filing the application for opposition. Petitions dismissed.

Maharashtra Hybrid Seeds Co. Ltd. v. UOI and Ors.W.P.(C) 4527/2010 and W.P.(C) 640/2012

Decided on: 22.03.2013 at page 0016MANU/DE/0736/2013

144

I-152013]


Intellectual Property — Protection of Plant Varieties — Rules 32 of the Protection ofPlant Varieties and Farmers Rights Rules, 2003 (“Rules”) and Section 21(2) of theProtection of Plant Varieties and Farmers’ Rights Act, 2001(“Act”) — Applicationfor registration of product — Objection raised by opponent — Objection raised beyondthe stipulated period of three months as prescribed — Delay was of 86 days in filingthe notice of opposition — Whether the time period of three months underSection 21(2) was incapable of extension in view of Rule 32 — Held, in this regard,it was held that since the Act does not provide for a sanction in case of non-compliancewith the said period, the Registrar could extend the time-limit. This was supportedby the fact that time-limitations are procedural matters and given that the statutedeals with rights of farmers, procedural irregularities should not hinder realizationof rights conferred by the Act. Moreover, since the Act is a beneficial legislation itshould be interpreted liberally in order to achieve the objectives for which it wasmade. Also, the Court observed that a Rule takes colour from the substantiveprovisions of the Act and therefore could not be read to limit the application of theAct. Parallels were drawn with Section 21(2) of the Trade Marks Act, 1999 whichexpressly prohibits filing of oppositions after the prescribed time period. Since thisnegative connotation was missing from the present Act, the Court said that thisfurthered the legislative intent of condoning a delay. It was also accepted that sincethe applications were published and not personally notified to the opposite party,there could be circumstances where the interested party missed the advertisementand in appropriate cases, the Registrar should be allowed to condone delay.Therefore, it was held that Rule 32 should be read as directory and not mandatory.In this regard, the Court also held that the Central Government had the power tomake such a Rule and this Rule was not liable to be struck down.



Patent — Challenge to validity of Patent under Section 3(f) of Patent Act, 1970 —Revocation of a patent granted to Respondent Bajaj Auto — Respondent was grantedpatent for an intake system for two-stroke engines used in two-wheelers that wouldresult in improved fuel efficiency and reduced emissions — Whether patent inquestion referred to a mere arrangement or rearrangement or duplication of knowndevices each of which carry on their own functions in an independent manner andhence not patentable under Act — Held, the conventional functions of individualparts would not suggest increase in efficiency and reduction of emission. Theimpugned claim related to combination of several parts and not any individual partto part. Moreover positive limitation in claims made invention specifically applicableto type of two wheelers having monocoque chassis and where engine andtransmission are disposed substantially to one side of vehicle. Accordingly thiscould not be described as mere arrangement and rearrangement. Therefore thisground also failed. Applicant had thus not made out a case for revocation of thispatent. Accordingly the Application was dismissed.

LML Limited v. Bajaj Auto LimitedTRA/3/2007/PT/DEL

Decided On: 02.05.2013 at page 0295MANU/IC/0028/2013

Patent — Compulsory license — Grant of — Reasonable requirement of the public— Whether the patented invention had been made available to the public at areasonably affordable price — Held, the Board dismissed Bayer’s contention that

145




“reasonable affordability” of an invention mean reasonable to both public and theinventor. Bayer noted that its Patient Assistance Program (PAP) and Health InsuranceSchemes ameliorate factors against reasonable affordability of invention. Despiteseveral affidavits in support of Bayer’s claims on huge costs and the long drawnprocess of drug invention, the Board highlighted the absence of view on reasonablyaffordability from a patient’s perspective. It disagreed with the Controller and heldthat slashing of prices by manufactures to increase affordability cannot be said tofrustrate proceedings and therefore it held that the words at the end of Section 84(6)are not absolute taboo to prevent the inventor from bringing down the price andmaking his invention available to the public. Pertinently, it noted that CompulsoryLicenses are concerned with public interest rather than the Applicant for CompulsoryLicense. The Board, however, agreed with the Controller conclusion on affordabilityand observed that: the Controller was right in holding that the sales of the drug bythe Appellant at the price of about 280,000/- was alone relevant for the determinationof public requirement and he was also right in considering the purchasing capacityof the public and the evidence available to conclude that the invention was notreasonably affordable to the public.

Bayer Corporation, Pittsburg, U.S.A. v. Union of India and Ors.OA/35/2012/PT/MUM


Patent — Compulsory license — Public interest — Suppression of facts by Natcoregarding the counter claim, CIPLA’s presence in the market, and false statementthat it had applied and obtained a process patent for producing Sorafenib Tosylate— Whether mere presence of a public interest element in grant of compulsory licenseabsolves the party of its duty to make correct statements — Held, the Board, whileexpressing disapproval regarding NATCO’s conduct, held that owing to the publicinterest element in the current proceedings, it could not allow the appeal solely onthe basis of Natco’s conduct. It observed that, a party approaching a judicial forumshould place on record all the facts that are known to it and it is for the judicialauthority or quasi-judicial authority to decide whether it is material or not material.If the party is going to decide whether it is material or not material, there is nonecessity for the applicant to approach the Controller. The Controller order indicatesthat he had come to the conclusion on the basis of how he had understood thevarious provisions. There was no mention of this, but that did not mean that theparty was absolved of the duty of truth. Further, the mere presence of a publicinterest element in grant of the compulsory license does not absolve the party of theduty to make correct statements in the pleadings and affidavits filed before theCourt. Therefore, the Court directed Natco to pay reasonable costs of Rs. 50,000 infavour of TATA Memorial Cancer Hospital to be used by the trust for poor patients.The grant of compulsory licence is confirmed and the impugned order is modifiedonly to the extent of rate of royalty to be paid to the patentee.



Patent — Grant of — Opposition — Validity of — Sections 25(2)(b)(f), 25(3)(d) and(3)(e) of Patent Act, 1970 — Grant of Patent rights — “Drug Combination”— “ANon-Interacting Drug Combination for Treating Hyperlipidaemia in Mammals” —Appeal against dismissal of opposition to a Patent Application No.113/MUM/2000under “A Non-Interacting Drug Combination for Treating Hyperlipidaemia in

146

I-172013]


Mammals” — Whether grant of patent to Appellant was liable to be set aside —Held, granted patent No.212310 was published on 25th January, 2008. It was filed on4th February, 2000 originally bearing titled “Drug Combination” claiming priorityfrom three U.K. Applications all of year 1999. Post grant opposition was filed. Anopposition Board was constituted and opposition board recommended that groundunder Section 25(2)(b) was established by opponent, ground under Section 25(2)(g)was not established. However, Opposition Board said that Section 25(2)(e) which isobviousness and Section 25(2)(f) was established by opponent. The Controller heldthat present invention was novel since no single document anticipated inventionand person skilled in art would not have found invention obvious and that prior artcannot be used to arrive at present invention. The Controller also held that inventiondid not fall under provisions of Section 25(3)(d) or (3)(e) and therefore objectionrelating to Section 25(2)(f) was not established. In these circumstances, Controllerdid not accept recommendation of Board and rejected opposition. The Controllershowever have to remember in Opposition proceedings that they must deal withOpposition Board’s recommendations in their orders. They are free to agree or todisagree but it is a crucial part of records before Controller. If they are acceptingrecommendations, perhaps they need not deal with it at length. But when theydisagree with it, as in this case, they must explain why and give reasons.Consequently,decision of Controller was confirmed. Appeal dismissed.

Ranbaxy Laboraties Ltd. v. The Controller of Patents & Designs and Anr.OA/15/2011/PT/MUM and Miscellaneous Petition Nos. 18-19/2011 &

65/2012 in OA/15/2011/PT/MUMDecided On: 12.06.2013 at page 0259

MANU/IC/0040/2013

Patent — Grant of compulsory license — Fulfillment of test of Section 84(1) of IndianPatents Act, 1970 — Whether the patentee satisfies the local working requirement —Held, in absence of a definition for “working” of a patent locally in the TRIPS(Trade-related Aspects of Intellectual Property Rights) or Paris Convention, its’meaning must be determined on a case to case basis (in accordance with Article 31of the TRIPS providing that use of patent without authorization of the patent holdermust be dealt with on a case to case basis.) The definition may range from excludingimport from the working requirement on the one hand and being synonymous to iton the other. Therefore, there may be cases where it is proved by giving evidence thatthe patent is worked locally by merely importing the product into the country. Itheld, that the patentee must show as to why it could not be locally manufactured. Amere statement to that effect was not sufficient, there must be evidence. However,Bayer failed to give reasons to this effect, and therefore failed the test of Section 84(1).



Patent — Grant of Compulsory License — Reasonable efforts to obtain same —Natco/Third Respondent filed an application before the Controller of Patents seekinga compulsory license over Patentee/Bayer’s patented kidney cancer drug, Nexavar— Controller granted the license by order — Hence present appeal against order —Whether the Third Respondent made reasonable efforts to obtain a voluntary licensefrom the Patentee ? — Held, from a reading of the two documents, viz., the letter andthe response that the Third Respondent who is the compulsory licence Applicanthad stated what according to it was a reasonable cost. The Third Respondent hadstated that the price at which it would offer the drug was less than Rs.10,000. On

147




these terms, NATCO applied for voluntary license. The letter spells out threeconditions for the grant of licence in paragraph-6 and states that because of theprohibitory high cost, these three conditions are not satisfied, but yet, the offer hadbeen made. The Appellant on its part had understood the tenor of the letter. Accordingto the Appellant it had satisfied all the requirements of law. If there was a veiledthreat, it was met equally by a veiled answer. Moreover if the Appellant thought thatless than Rs.10,000 was not a bargaining point, all that it should have stated wasthat there was some room for negotiation. But the response did not indicate thatinstead it clearly indicated that the Appellant did not consider it appropriate togrant voluntary licence. Therefore, the offer was made and it was rejected.Accordingly, the third Respondent is not required to make another request when itsefforts had failed. The law does not require that. Thus, the requirement of law wasfully met



Patent — Impugned Amendment — Challenge against thereto — Section 126 ofPatent Act, 1970 (Act); Section 67 (a) of Patents (Amendment) Act, 2005 (Act 15of 2005); Article 19(1)(g) of Constitution of India, 1950 — Amendment introduced toSection 126 of Act by Section 67 (a) of Act 15 of 2005 — Prior to the 2005 Amendment,two categories of individuals were eligible to act as patent agents — (i) advocatesand (ii) those who possessed a degree in “science, engineering and technology” andwho had cleared a qualifying exam to become an agent — By the 2005 Amendment,the advocates were disqualified to be patent agents — Petitioner challenged the 2005Amendment as being illegal, unconstitutional, ultra vires and void vide present writPetition — Whether 2005 Amendment was liable to be struck down as being ultra-vires the Constitution — Held, there was no satisfactory reason on the side of theRespondents as to why the term “Advocate” within the meaning of Advocates Act,1961 available under Section 126(1)(c)(i) of the Act was deleted by the 2005Amendment in an unjustifiable manner. Respondents had no legal right to expandtheir authority for curtailing the profession of legal practitioners against theAdvocates Act, 1961 by way of conducting their own examination in law anddrafting. Merely by prescribing qualification as degree holder in science, engineeringor technology and passing a departmental examination on the Act and drafting, theRespondents could not monopolise such category of persons and say that advocateswere not competent to be patent agents. All the citizens of India have right to practiceany profession or carry on any occupation, trade or business, which is a fundamentalright, that cannot be prevented by State by making any law, though the State isempowered to impose reasonable restrictions in the interests of general public. Bythe unreasonable restriction made by the Respondents by way of 2005 Amendment,the advocates practicing in the area of the Act would have to necessarily depend onother patent agents. As a matter of fact, prior to the impugned amendment, theparties/litigants were at liberty to engage any advocate who had registered as patentagents in respect of drafting, preparing, filing and appearing before the authorities.It was the right or privilege of the litigants or parties to engage any patent agenteither an advocate who had registered himself as patent agent or the other categoryby way of amendment, the Respondents could not create a monopoly against theAdvocates Act. Hence, the 2005 Amendment could be construed only anunreasonable class legislation prohibited under Article 14 of the Indian Constitutionon the ground that the same was against equality before law and equal protection of

148

I-192013]


law. Hence, the impugned amendment was against Articles 14, 19 (1) (g) and 21 ofthe Constitution and also against public interest, accordingly, the same was liableto be struck down, as unconstitutional. Therefore, the Court declared the 2005Amendment as unconstitutional and unenforceable. Writ Petition allowed.

S.P. Chockalingam v. Controller of Patents and Union of IndiaW.P. No. 8472 of 2006

Decided On: 15.03.2013 at page 0039MANU/TN/0352/2013

Patent — Infringement — Injunction sought — Plaintiffs in present suit for injunctionrestraining infringement of patent and for other ancillary reliefs, sought interimrelief restraining Defendant from making, using, selling, distributing, advertising,offering for sale and in any other manner dealing in any product infringing Plaintiff’spatent — Whether combination by Defendant in its product of SITAGLIPTIN inwhich Plaintiff undoubtedly has a patent, with phosphate, have a material effectupon way SITAGLIPTIN works — Held, if infringing product are made with sameobject in view which is attained by patented article, then a minor variation does notmean that there is no infringement. Trifling and unessential variations are to beignored. Conversely, a miniscule advancement could be recognized as an invention.— In the present case, Plaintiff Merck as patentee of SITAGLIPTIN was not marketingSITAGLIPTIN alone as a product and was marketing Sitagliptin in combinationwith Phosphate just as Defendant was doing. However as Defendant pointed outthat patent of Plaintiff Merck was not in pharmaceutical composition (as describedon Plaintiff’s product) but only in a part thereof and which fact was not denied bythe Plaintiff. Thus, similarity of pharmaceutical composition of products could notbe a ground for infringement. — It had emerged that Plaintiff Merck itself had inUSA taken an independent patent for Sitagliptin Phosphate and similarly appliedin India and which had been rejected and while applying for independent patent inSitagliptin Phosphate in USA, India and Europe having claimed it to be a newinvention and a different product than SITAGLIPTIN. — Further, Plaintiff in a suitrestraining infringement of patent ought to have known defense which Defendanthad put forth and ought to have met same in plaint. There was not an iota of pleadingon said aspect. It was for Plaintiff to plead circumstances in which its applicationfor a separate patent in Sitagliptin Phosphate was made and to explain awayadmission made therein. Further Plaintiff had not done so. Though it may be openfor Plaintiff to at trial explain so but Plaintiff certainly could not be granted interimrelief on a case not pleaded and in face of its admission of Sitagliptin Phosphatebeing a new invention worthy of patent. — Therefore, this Court did not find Plaintiffsto have made out a case for grant of interim relief. Application was accordinglydismissed but with a direction to Defendant to diligently maintain accounts of themanufacture/production and sales of infringing products and to file the same everyquarter before this Court with advance copy to the counsel for the Plaintiffs. Petitiondisposed of.

Merck Sharp and Dohme Corporation & Anr. v.Glenmark Pharmaceuticals Ltd

CS(OS) 586/2013Decided On: 05.04.2013, at page 0249

MANU/DE/0793/2013

Patent — Infringement of sale of drug — Compulsory license — Grant of — WhetherCipla’s alleged infringing sale of the drug has any bearing on the grant of theCompulsory License? — Held, the IPAB looked into the guiding principles fordetermination of working of patent in Section 83 of the Act and it demonstrated that

149




the working of invention needs to be ascertained from sales of patented invention bythe patentee and licensee and nothing else. An interpretation contrary to this wouldmean that a monopoly is granted to a person who does not make any effort to reachhis invention to the public and would rest his case on the labour of a third partywhom he would drag to Court with an infringement suit. The Board further notedthat Section 84(6)(i) refers to measures taken by the patentee or the licensee to makefull use of the invention in determining reasonable requirement of public. Therefore,for deciding whether the conditions of Section 84 are satisfied, the presence of CIPLAwas not taken into account. Further on the issue of whether the patentee sold theinvention on “commercial scale”, the Board referred to Form 27s submitted by Bayerwherein it found contradictory claims on satisfaction of public requirement. Onperusal of records, it held that that the Appellant had not “worked” the inventionon a commercial scale even if “import” alone would satisfy the working condition.



Patent — Oppourtunity at prima-facie stage — Compulsory licensing — Section 87(1)of Patents Act, 1970 (Act) — Natco filed an application before the Controller ofPatents seeking a compulsory license over Patentee/Bayer’s patented kidney cancerdrug, Nexavar — Controller granted the license by order - Hence present appealagainst order — Whether the patentee had right to be heard at preliminary stages ofthe compulsory application? — Held, it was clear from Section 87(1) of Act thatprima facie satisfaction precedes the direction to issue notice to the patentee or otherpersons. Therefore, it was futile to contend that for arriving at prima facie satisfaction,the other side should be heard. The hearing of the other side arises only after noticeof opposition is filed and Section 87(4) stage is reached. After hearing both theparties, the Controller again has two options. He may reject the application forlicence or he may grant the licence. At the stage of 87(1) no such determination ofrights is contemplated and all that is contemplated at that stage is whether thisapplication deserves to be granted a hearing. Therefore, ground rejected.



Patent — Refusal to grant patent — Section 3(k) of Patent Act, 1970 (Act) — FirstExamination Report(FER) cited lack of novelty and inventive step as objections —Other objections cited ineligibility as per Section 3 (k) of Act — Revised claimssubmitted — Examiner responded that “the official requirement raised in a FER hasnot been met” — No clear objections cited — Whether since the objections were notexactly identified there was no way to rectify the deficiencies in the patent application— Held yes, vague statements like “official requirement raised in a FER have notbeen met” do not indicate what the objections are and thus not fair. In spite ofseveral requests by the Appellant to clearly state what are the objections, theRespondent only repeated the same sentence that “the official requirement raised ina FER has not been met.” In this case, the original claims had been revised. If evenafter that the same objection was raised it begs the question whether the examinerapplied his mind at all. Thus, the matter should be sent back to the Controller for theexamination in accordance with law. The Board had not examined the merits of thepatent at all. They had only seen the procedural flaws. Therefore the Controller wasat liberty to arrive at his decision according to law. The Board also opined that the

150

I-212013]


grounds of appeal should be carefully worded and attributing ulterior motives andwrongful intent to the patent office officials did not appear to be civil drafting ofgrounds. Appeal allowed.

Thomson Reuters Global Resources v. The ControllerGeneral of Patents, Designs & Trade Marks and Ors.

OA/38/2011/PT/KOLDecided on: 08.03.2013 at page 0211

MANU/IC/0018/2013

Patent — Rejection of Application — Invention pertaining to High bias gel tube andprocess for making tube — Whether the Respondent had failed to provide thereasoned order — Held, on perusal of the order of the Respondent it was found thatthe Respondent had clearly analyzed the claimed invention vis-à-vis the cited priorart. This clearly indicated that while comparing the prior art with claimed inventionRespondent arrived at forming of an opinion relating to possibility of situationduring the course of trials on US 3997442 to have come across a situation where inthe first region (40) comprises at least 80 vol. per cent of the gel and stating that “itshall be also obvious to a person skilled in the art to merely mention that the firstregion (40) comprises at least 80 vol. per cent of the gel.” These findings clearlyjustified that the order of the Controller was reasoned one. Therefore, the contentionof the Appellant that Respondents order was not reasoned was baseless.

M/s. Becton Dickinson and Company v. The Controller of Patents & DesignsOA/7/2008/PT/DEL


Patent — Rejection of Application — Invention pertaining to High bias gel tube andprocess for making tube — Whether the mere mention of at least 80 vol. per cent of thegel in the first region shall constitute an inventive step under Section 2(1) J of thePatent Act 1970 or not? — Held, the novel and inventive feature of the claimed inventionwas the gel comprising continuous first and second regions, said first region locatedat or adjacent to the lower end and the second region extending upward from aportion of the first region, wherein the first region comprises an imaginary upperboundary at which the first region exhibits 360ø circumferential contact with the innerwall and that the first region comprises at least 80 vol. per cent of the gel. In the instantcase, the conclusion on obviousness appears to be more applicable. Here too, the priorarts (US’ 290 and US’ 442) while not experimenting with capacity of gel in the firstregion specifically did not exclude it. The person skilled in the art while taking theinitial step in advance of positioning a quantity of thixotropic gel asymmetrically ingeneral would have reasonable hope of success in positioning it in specified quantityin first region including 80 volume per cent of gel. All the claimed paradigms were selfevident in the prior arts. The unpredictability of success could not rule out obviousness.So even if different positions /capacity of gel may lead to different results, theexpectation of success was reasonable especially since it was known that asymmetricaldisposition of gel before centrifugation improved the activity of separation andpartitioning of heavy and light phases of a multiphase liquid. Therefore, selection ofan optical numerical range by experiments from the publicly known art is merely asan exercise of ordinary creativity of a person skilled in the art, and hence it did notqualify to be called as having an inventive step. Appeal dismissed

M/s. Becton Dickinson and Company v. The Controller of Patents & DesignsOA/7/2008/PT/DEL


151




Patent — Terms and conditions of grant of compulsory license — Violation ofSection 90 of Indian Patents Act, 1970 (Act) - Whether the terms and conditions ofthe compulsory license were fixed arbitrarily violating the mandatory requirementsof Section 90 of Act — Held, the Board concurred with the Controller in holding that“royalty shall be paid on the net sale of the drug and not from the margin”, however,in view of the pleadings and evidence before it, increased the royalty fixed by theController by one percent to meet the ends of justice.



Patent — Transfer application for revocation of Patent — Challenge to validity ofPatent — Revocation of a patent granted to Respondent — Respondent was grantedpatent for an intake system for two-stroke engines used in two-wheelers that wouldresult in improved fuel efficiency and reduced emissions — Applicant LML movedBoard in 2007 arguing that claimed invention was not novel, was obvious (did notinvolve an inventive step), and complete specification did not sufficiently describeclaimed invention and was just a minor rearrangement of technology in publicdomain — Whether Applicant had made out a case for revocation of this patent —Held, Respondent explained in detail nature of invention and how it was differentfrom each prior art document cited by Applicant. Notably, Respondent was able toshow that none of documents completely anticipated claimed invention nor theircombinations rendered it obvious: None of cited prior arts disclosed claimed elementsof patent i.e. no prior art disclosed intake system comprising an air filter, a carburetor,carburetor housing, air filter being positioned on said carburetor; carburetor and airfilter being accommodated within carburetor housing and a reed valve being adoptedand positioned between carburetor housing for a two substantially on one side ofsaid vehicle. — Applicant had not cited even a single document which had allclaimed features of invention but rather relied on different documents /specificationsput together in form of mosaic of citations which was not sufficient to proveanticipation. — As regards issue of obviousness / inventive step, Board agreed withRespondent’s reasoning that it was not possible for one of ordinary skilled in artthat to simply adopt known (or off the shelf) shape and structure, mountingarrangement of reed valve. The arrangement rather depended on type of intakesystem, availability of space, result/function expected from reed valve,henceinvention was not obvious to average person skilled in art. Thus, it could notbe said that claimed invention was mere workshop modification and arrangement.— The Board cited case of Buchanan v. Alba Diagnostics Ltd., quoting “if the inventioncontained in a prior patent had been something which was made more useful orconvenient by a subsequent patent, the latter was something which in ordinarylanguage might be considered to be an improvement on the prior patent”. — Asregards grounds of insufficiency (in disclosure), the Board found that thespecification has disclosed invention sufficiently and fairly. There was no evidenceof Applicant to contrary therefore, Board disagreed with argument of Applicant inrespect of insufficiency. This ground therefore also failed



Trade Mark — Application for rectification — Expungement and removal of theTrade Mark Haldiram Bhujiawala with V-shape logo registered under No. 330375

152

I-232013]


in Class 30(said mark) — Whether registration of Trade Mark No. 330375 waswrongly made as it has been made by fraud on a claim of false proprietorship andon a false claim of use since 1958 — Held, in instant case, Mr. R was only a permitteduser and could not be proprietor of said mark. This was because Mr. B who wasproprietor of the mark had out of love and affection only permitted Mr. R his son tocontinue using mark in Kolkata. Therefore, Mr. R being a permissive user could notclaim to be proprietor of mark. It was also noted that Mr. R had knowledge of factthat it was Mr. B who had first coined name “Haldiram Bhujiawala”. Therefore,Mr. R who had admitted that Haldiram is nickname of Mr. B and that Mr. B is onewho adopted and came up with Trade Mark could not claim to be inventor andadopter himself. Thus, he could not claim to be proprietor of the Trade Mark. — Onthe point of date of use, it was held that date of user (1958) claimed by Respondentswas not substantiated by cogent evidence. Also, date mentioned was based on afalse statement as Respondents were aware that Mr. B’s mark, which was identical,claimed use since 1965. — Moreover, Trade Mark was found to be neither distinctive,nor capable of being distinguished as on date of registration and therefore, theregistration was held to be in violation of Trade Mark Act. — On point of registrationof impugned mark, it was observed that Registrar had raised an objection toregistration of the said Trade Mark one ground that an earlier application underNo.285062 i.e., a conflicting mark was already pending. However,Respondentsdeceived Registrar by suppressing information and falsely stating that they wereonly firm that was run under name Haldiram Bhujiawala and no other similarapplication was pending. Application was therefore accepted on false representationand concealment of facts. Consequently, registration of Respondent’s mark wasinvalid. The Registrar of Trade Marks was directed to cancel the Trade MarkNo. 330375 in Class 30. Application for rectification allowed.

M/s. Haldiram (India) Pvt. Ltd. and Ors. v. The Registrar of Trade Marks and Ors.M.P. No. 147 of 2012 and R.P. No. 1 of 2013

in ORA/14/2004/TM/KOL and ORA/14/2004/TM/KOLDecided On: 26.04.2013 at page 0273

MANU/IC/0026/2013

Trade Mark — Cancellation of Trade Mark registration of Gatsby — Locus standi— Section 57(1) of Trade Marks Act,1999 (Act) — Person aggrieved — WhetherApplicant was person aggrieved within meaning of Section 57(1) of Act Trade Mark— Held, both the competing marks and goods were identical. The Applicant wouldbe deprived of his legal rights and would face obvious business harm or injury andlosses by the continued presence of the impugned mark in the register. Naturally hefelt the right to challenge the legality of impugned registered Trade Mark. Thus, itwas apparent that the Applicant was indeed “person aggrieved” going by pastprecedents on such cases and thus had the required locus to seek removal of theimpugned mark.

M/s. Mandom Corporation v. M/s. Fem Care Pharma Limited.ORA/56/2005/TM/MUM

Decided on: 05.04.2013 at page 0201MANU/IC/0022/2013

Trade Mark — Cancellation of Trade Mark registration of Gatsby — Sections 9,11, and 18(1) of the Trade Marks Act, 1999(Act) — Applicant Company claimed tohave adopted Trade Mark Gatsby in 1979 — Respondent an Indian entity adoptedthe same mark for the same goods in 1994 — Was this adoption honest or whetherthe mark was liable for cancellation — Held, the main grounds for cancellationwere based on Sections 9,11 and 18(1) of the Act. Section 18(1) of both old and

153




current Trade Mark Act provides that “any person claiming to be the proprietor ofa Trade Mark” may apply for its registration. To claim proprietorship, theApplicants had to establish that Gatsby was used by them since 15 years before2003. The material question to decide the same was that whether had theRespondent prior knowledge of the Applicant Trade Mark Gatsby in 1994. TheCourt held there was no conclusive evidence to suggest that the Respondents hadprior knowledge in the voluminous averments presented by the Applicants.Moreover Applicants failed to establish their case beyond reasonable doubt.Moreover, the details and exhaustive explanation for adoption of Gatsby by theRespondent appeared to be reasonably justified and convincing to the Court.Applying for a licence with the FDA was an indication of bona fide intention to usethe mark. Court stated that the question of looking into objections under Section 9and 11 only arises if a prima facie case to remove the impugned mark had beenmade out which the Applicants failed at. Further the filing of TM-58 form by theApplicants was also mala fide. The Court also expressed its disapproval of theRegistry’s outdated method of checking similarity of marks. It held that the veracityof claims to the proprietorship of marks must also be checked at the Examinationand Show Cause Stage itself through a proper internet search to eliminatesuspicious of copying someone else Trade Mark not in the register with an objectiveto foster a robust Trade Mark protection regime in India. Petition dismissed.



Trade Mark — Comparative advertising — Impugned advertisement —Disparagement of products - Interim Stay — Entitlement for – Plaintiff alleged thatDefendant in its advertisement disparaged Plaintiff and its brand Dettol — It furtheralleged that in advertisement, Defendant maliciously equated its product to a “HarshAntiseptic” — Defendants denied disparagement of Plaintiff’s product — Whetherimpugned advertisement targets Plaintiffs brand DETTOL and its product DETTOLHEALTHY KITCHEN and that whether advertisements were disparaging — Held,Defendant’s claims did not fall with purview of permissive comparative advertising.It is common knowledge that Plaintiff’s brand Dettol is synonymous with the termantiseptic in FMCG market in India. In the older Delhi High Court decision in ReckittBenckiser (India) Ltd. v. Hindustan Unilever Ltd., it was observed that the public carriedan impression in their minds that all Dettol products are antiseptic. Further usage ofterm “harsh antiseptic” in fact refers to an antiseptic which is harsh wherein term“harsh” is used as an adjective. If Defendant chose to convey to consumers a generalwarning regarding harmful effects of antiseptic products which were concentrated,the term “concentrated antiseptic” would have conveyed it more aptly without anynegative connotation as attached with the word “harsh”. By using the adjective“harsh” along with the indicative word “antiseptic” with respect to cleaning utensilsfrom which food is consumed, the Defendant was trying to connote to the consumersthat the Plaintiffs product, DETTOL HEALTHY KITCHEN, had the same effect asthat of its other product DETTOL ANTISEPTIC LIQUID. Thus, the advertisementmade a direct link between the antiseptic and Kitchen liquid and connoted a similarstrong effect of both liquids. Media reports in print and on social media also suggestedthat consumers drew the above-mentioned inferences. Therefore, the Court passedan interim order restraining the Defendant from publishing the impugnedadvertisement or any other similar advertisement or depiction aimed at disparagingthe goodwill and reputation of the Plaintiffs brand.

154

I-252013]



Reckitt Benckiser (India) Ltd. v. Hindustan Unilever LtdCS (OS) No. 375/2013


Trade Mark — Deceptive Similarity — Removal of Trade Mark — Allied Bendersand Distilleries Pvt. Ltd. (ABD/Appellant) manufactures and markets alcoholicbeverages and has been using and promoting the mark OFFICER’S CHOICE forsome time — Evidences including market survey reports were filed by ABD toprove extensive use and growth of reputation of the mark along with highlikelihood of confusion with the mark ORIGINAL CHOICE used by John DistillersLtd. (JD) — Whether the marks of ABD and JD are both bona fide and valid andwhether there is any likelihood of confusion between the two — Held, withregard to the similarity and likelihood of confusion between OFFICER’S CHOICEand ORIGINAL CHOICE, the question was whether to consider the names as awhole or only the non-disclaimed parts of them (OFFICER’S AND ORIGINAL).Relying on the decision in the case of Registrar of Trade Marks v. Ashok ChandraRakhit Ltd., the Board found out that the disclaimed parts were not within theprotection of the statute and that where a distinctive label was registered as awhole, such registration could not possibly give any exclusive right to theproprietor of the mark to the use of any particular word or name containedtherein apart from a mark as a whole. Therefore, in the present case, OFFICER’SCHOICE, despite being earlier, did not give ABD the exclusive right to the wordCHOICE; however, the consumer may not be aware of such disclaimer and hisconsideration is likely to be based on the entire mark. Had the marks also beenassociated with identical labels, the situation might have been different but theBoard made it clear that it was doing this hypothetical comparison only on thebasis of the words alone. On such consideration, the Board found that there waslittle or no scope of confusion between the two marks. Also, despite the fact thatABD had not challenged the Excise authorities’ decision, it had still filedsubsequent objections against JD’s mark before the Delhi High Court and hencethe Board opined that ABD’s conduct was not that of a party acquiescing in thecontinuance of JD’s mark in the register. The Board also found flaws with theevidence of confusion or lack thereof submitted by the parties in the form ofaffidavits and market surveys. It went on to look at the marks themselves and toconclude that the marks were in no way identical nor was there any likelihoodof confusion and hence both the marks were capable of standing independenton each other. Further with respect to the technical objection of whether theCounter statement filed by JD ought to have been received and whether it is non-est in the eye of law, the Board held that there was no jurisdictional error inreceiving the said Counter Statement. Regarding the tendency to abbreviate themarks, the IPAB held that a mark can be removed on such grounds only on thebasis of strong evidence from the consumers and the retailers of such abbreviationand resulting confusion which has not been presented in this case. With respectof whether ABD had defrauded the Trade Mark Authorities while applying toregister its mark at a time when the ownership lay with Cruickshank & Co., theBoard took into consideration the evidence submitted by ABD and opined thatthere did not appear to have been any intention of defrauding. Thus the Marks“ORIGINAL CHOICE” and “OFFICERS CHOICE” were not deceptively similarto each other and were not likely to confuse the public. Hence the Board rejectedthe contentions of both the parties that the other’s mark ought to be removed andall related applications were dismissed.



Allied Blenders & Distilleries Pvt. Ltd. v. M/s. John Distillers Limited and Registrar of Trade MarksORA/143/2008/TM/CH and M.P. No. 127/2008, M.P. Nos. 249-251/2011 & 75/2012, 193/2012, 376/2012 & 377/2012 in ORA/143/2008/TM/CH and ORA/34/2008/TM/MUM and

M.P. Nos. 231/2012 & 378/2012 in ORA/34/2008/TM/MUMDecided On: 08.03.2013 at page 0054

MANU/IC/0015/2013

Trade Mark — Impugned advertisement — Comparative advertising — Claim fordisparagement — Plaintiff in these two suits for permanent injunction restrainingDefendant from broadcasting, printing and publishing advertisement of its productcooking oil under the brand name FORTUNE — Plaintiff averred that Defendantsproduct was disparaging the goodwill and reputation of Plaintiff’s product, also acooking oil in brand name SAFFOLA — Whether any prima facie case ofdisparagement of product of Plaintiff was made out — Held, there was no actionablecase in favour of the Plaintiff. This was for reason that intent, manner and storylineand message of advertisement of Defendant was of its product containing a higherquantity of Oryzanol (and which follows from being 100 per cent RBO) sufficient tomeet daily requirement of human body of Oryzanol and which other products didnot was better. The storyline and the message conveyed by advertisements ofDefendant was not about comparative cholesterol lowering ability of Oryzanol andwhich was shown to be higher in case of a blend of RBO with Safflower Oil in ratioof 70:30 than 100 per cent RBO rather advertisement/website downloads of Plaintiffhanded over during course of arguments themselves inform said fact to customers.It could not be said that failure of Defendant to highlight or disclaim in itsadvertisement about cholesterol lowering ability of Oryzanol was untruth of a naturewhich came in way of its proclamation in advertisement of 100 per cent RBO beingbetter than a blend of RBO with some other oil. Therefore, no case of disparagementseemed to have been made out. — Further, Courts could not adopt a hyper-technicalview and penalize Defendant for not disclosing each and every detail regardingcholesterol lowering abilities of Oryzanol so long as intent, storyline and messagesought to be conveyed by advertisement was not entirely untrue. Therefore Plaintiffhad failed to have made a prima facie case for grant of interim injunction. Applicationsdismissed.

Marico Limited v. Adani Wilmar Ltd.CS(OS) 246/2013 and CS(OS) 319/2013

Decided On: 18.04.2013, at page 0237MANU/DE/0933/2013

Trade Mark — Impugned Mark — Dishonest adoption of marks — Appeals againstdismissal of two applications of registration of Royal Orchid Hotels Limited bothmarks being word per se in respect of services in Class 42 - Deputy Registrar foundthat marks were not registrable since only registrable feature in marks was word“Orchid”, which was identical to opponent’s Trade Mark and held that opponent’smark was very well known and highly distinctive — Whether adoption of marks byAppellants was dishonest — Held, it was clear from public documents, which wereunder Companies Act that Registrar of Companies had given his approval for namechange to Royal Orchid Hotels Private Limited even in 1996. In case of MontariOverseas Ltd. v. Montari Industries Limited, Division Bench had clearly held that underSection 20 of the Companies Act 1956, a company’s name was held to be undesirableif it was identical or too nearly resembled name by which a company in existencehad been previously registered. In this case, Registrar of Companies had given hisapproval to name change of Universal Resorts to Royal Orchid Hotels Private Limitedand therefore adoption of name could not be said to be mala fide, since adoption of

156

I-272013]


“Royal Orchid Hotels Private Limited” was proposed name and it had taken placeeven before Respondent alleged date of adoption. In Ashok Chandra Rakhit Ltd’scase Hon’ble Supreme Court had clearly held that Registrar gave owner exclusiveright to mark as a whole and it required no repetition that when Courts comparemarks then they should compare marks taking them as a whole and he could notdissect. Here one mark was “Orchid” and other mark was “Royal Orchid” or “RoyalOrchid Hotels Limited”. Moreover individual words were not distinctive bythemselves but Appellant did not claim exclusive right to word “Orchid” or word“Royal”. He sought registration of words “Royal Orchid” and “Royal Orchid Hotels”taken as a whole. The Registrar clearly ignored principle by tearing word “Orchid”out impugned mark as a whole and arrived at conclusion that adoption wasdishonest. Respondent had totally ignored that Appellant had adopted Royal OrchidHotels for his company’s name even before Respondent adopted Trade Mark Orchid.Respondent’s objections had to be rejected since if nothing else, Appellant’s companyname had become Royal Orchid Hotels Limited in 1997 pursuant to a resolutiondated 1996. Respondent, who claimed user only from January, 1997 could not pleadthat Appellant was imitating their name. The class of customers was of high incomegroup and there was no likelihood of confusion where mark related to service.Hence, both marks were directed to proceed to registration. Appeals allowed

Royal Orchid Hotels Limited v. Registrar of Trade Marks and Kamat Hotel (India) LimitedM.P. Nos. 125 & 126/2012 in OA./74 & 75/2009/TM/CH


Trade Mark — Infringement — Injunction sought — Alleged that Defendant wasdeliberately, fraudulently and with mala fide intentions of trading upon reputationand goodwill attached to Plaintiff’s Trade Mark CUTLER-HAMMER, CH Control &CH (label) , was using it without obtaining any consent, permission or valid license— Whether balance of convenience was in favour of Plaintiff — Held, Plaintiffs’Trade Marks CUTLER-HAMMER/CH logos were well known Trade Marks havingextra territorial goodwill and reputation worldwide. Plaintiff No. 1 had trans-borderreputation extending to India. Moreover use of identical/deceptively similar TradeMarks on part of Defendant was bound to confer an undue advantage of reputationand goodwill of Plaintiffs’ well known marks to Defendant and such use would bedetrimental to well known character and reputation thereof. Plaintiffs were registeredproprietor of Trade Mark CUTLER-HAMMER under No. 164435 in Class 09. WhereasDefendant did not have any statutory right in Trade Mark CUTLER-HAMMER/BHARTIA CUTLER-HAMMER and its variants. Plaintiffs had been using TradeMarks worldwide and there was no reason to assume that same were abandoned.Mere fact that registrations of few Trade Marks inadvertently lapsed and then nosteps were taken to reinstate said registration on account of adopting new version ofit, same was no ground to claim that Plaintiffs had abandoned Trade Marks. Thus,Plaintiffs established a prima facie case for grant of an interim injunction. Balance ofconvenience was also in favour of Plaintiffs and against Defendant. Further, Plaintiffsshall suffer an irreparable loss and injury to its hard earned goodwill, reputationand business unless Defendant was restrained from continuing with its illegaltrade activities during pendency of suit. Hence, prayer made in Plaintiffs’ applicationbeing I.A. No. 1204/2012 was allowed. Accordingly, Defendant, its dealers, agentsand representatives on its behalf were restrained from using impugned arrangementand/or mark (s) CUTLER-HAMMER, BHARTIA CUTLER-HAMMER, CH (logo) orCH CONTROL or any other mark as may be identical and/or deceptively similar toPlaintiffs’ registered Trade Mark CUTLER-HAMMER under No. 164435 in Class 9


157



amounting to infringement thereof and also from manufacturing and selling, offeringfor sale, directly or indirectly dealing in goods included in Class 9 and/or any othercognate or allied goods or goods of same description under impugned arrangementand/or mark (s) CUTLER-HAMMER, BHARTIA CUTLER-HAMMER, CH (logo) orCH CONTROL or any other mark as may be identical and/or deceptively similar toPlaintiffs’ Trade Mark CUTLER-HAMMER and CH (label) and from doing anyother act as is likely to cause confusion and deception amounting to passing offtheir goods and/or business as and for goods and/or business of the Plaintiffs.However, Defendant was granted three months’ time to dispose of existing stocklying with it.



Trade Mark — Infringement — Injunction sought — Deceptive similarity — Plaintiffis continuous user of Trade Mark “THE LAZY DOG” for its pub/lounge bar atManali — It alleged that Defendant’s mark was identical to and deceptively similarto Plaintiff’s mark — Whether Defendant’s use of said mark was a flagrantinfringement of registered Trade Mark of Plaintiff and also an attempt to trade upongoodwill of Plaintiff — Held, a perusal of registered mark of Plaintiff discloses that“THE LAZY DOG” is a prominent part of registered Trade Mark of Plaintiff and ismentioned twice, once inside circle and again prominently below it. Reputation ofPlaintiff’s bar was reflected in popular reviews given by various travel guides andalso Indian newspapers including Mumbai edition thereof. Various articles andreviews disclosed that Plaintiffs bar/lounge was highly recommended by variousreputed travel magazines and was very popular. Even popular travel websites carriedappreciative reviews. Material disclosed by Plaintiff in Plaint clearly indicated thatPlaintiff had high goodwill and reputation in services under mark“THE LAZY DOG”. Plaintiff had been carrying on business continuously from 2008at Manali and had now also commenced business in Goa. Plaintiff also has a websiteby name of www.thelazydog.in. Defendants despite service had remained absent.Prima facie, case of Plaintiff was meritorious. Prima facie, mark used by Defendantswas deceptively similar to Plaintiffs mark. Defendants could not be permitted to usemark “THE LAZY DOG” in violation of Plaintiff’s rights. Prima facie, if Defendantswere permitted to continue to use mark “THE LAZY DOG”, serious prejudice wouldbe caused to Plaintiffs reputation and goodwill apart from being in violation of theirrights. Balance of convenience was also in favor of Plaintiff. In these circumstances,ad-interim relief was granted as prayed for in Notice of Motion.

Gopal Kaushik v. Gastro Pub Private Ltd. & Ors.Notice of Motion (Lodging) No. 890 of 2013

in suit (lodging) No. 339 of 2013Decided On: 22.04.2013MANU/MH/0882/2013

Trade Mark — Infringement — Passing off — Injunction sought — WhetherDefendant was infringing registered mark CUTLER-HAMMER and that whetherDefendant was passing off its goods as that of Plaintiff — Held, Defendant wasaware of reputation and proprietorship of Plaintiff No. 1 over Trade Marks “CUTLER-HAMMER”, “CH Control” and “CH” in respect of goods of its manufacture andsale prior to its incorporation and had adopted and used identical and/or deceptivelysimilar Trade Marks with dishonest and mala fide intentions to trade upon reputationand goodwill of Plaintiffs and to earn profits in an illegal manner. By committing

158

I-292013]


such acts, Defendant had not only infringed Plaintiff’s proprietary rights vested intheir registered Trade Mark “CUTLER-HAMMER” and other above mentioned TradeMarks but also committed acts of passing off their inferior quality goods and businessas and for quality products and business of Plaintiff.



Trade Mark — Infringement — Prior user — Whether Defendant being earlierpermissive user of Trademarks were entitled to claim proprietorship rights afterexpiry of period of licence agreement and were entitled to use same Trademarks —Held, Defendant had intentionally and deliberately claimed false user of marksCUTLER-HAMMER/BHARTIA CUTLER-HAMMER and CH from several decades.Defendant had claimed use of Trade Mark CUTLER HAMMER from year 1968 andother marks from year 1977 and had produced on record Sales figures along withCertificate of Chartered Accountant from year 1976-2010 which were wrong andnot substantiated by any documentary evidence. It is admitted position that duringsaid period user of Defendant was permissive user. Claiming user being proprietorduring licensing period was fraudulent and dishonest as per settled law. Even falseclaims made by Defendant as to “advertisement and promotion of products undermarks CUTLER-HAMMER/BHARTIA CUTLER-HAMMER and CH from the year1976-2011”. In most of period, Defendant’s user was permissive user. When lawwith regard to rightful owner of Trade Mark and act of ex-licensee is examined, itemerges that either during licensing period of agreement or after expiry, it is implicitand clear that ex-licensee is not entitled to claim ownership of a Trade Mark nor heis permitted by law to file an application for registration of Trade Mark in his namenor is entitled to file the petition for rectification of same very Trade Marks in whichex-licensee was using Trade Marks as a permissive user, otherwise it would amountto fraud and misrepresentation. Ex-licensee under no circumstances can declarehimself as owner of Trade Mark to claim concurrent user because as per scheme ofAct, benefit of concurrent user can be derived by a party whose user is honest andbona fide.



Trade Mark — Infringement of — Order of injunction — Sustainability —Section 29(9)of Trade Mark Act, 1999 — Plaintiff, owner of Trade Mark ROOHAFZA,one of the most popular Trade Mark in respect of sharbats — Plaintiffs filed instantsuit for infringement of Trade Mark, passing off, commercial disparagement andtarnishment of goodwill and damages — It was grievance of Plaintiffs that Defendantshad recently released a movie which had hit cinema halls and said movie containssome dialogues which somehow showed product of Plaintiff in a manner whichwas detrimental to interests of Plaintiffs as a proprietor — Whether Plaintiffs hadbeen able to make out a case of infringement and hence relief would be granted toPlaintiff — Held, offending dialogues in film were uncalled for, same were in poortaste and these could have been avoided. Same was likely to tarnish Plaintiffs’reputation. Further, as per explicit provisions of Trade Marks Act, infringement ofTrade Mark could be caused by spoken words and visual depiction of same in formof presentation in movie. Therefore, prima facie case was made out by Plaintiffs forinfringement of Trade Mark and also of passing off which may injure reputation of


159



Plaintiffs before public. However, since film had already been put to release intheaters across India and other places, thus High Court was of the view thatprotection which could be accorded to Plaintiffs was to prevent future commissionof said acts by omitting objectionable dialogues in other formats of movie in whichsame should be made available to public at home and no injunction order could bepassed at this stage directing Defendants to make alterations in released movie.Moreover balance of convenience and irreparable loss was not in favour of Plaintiffsas movie was already put to release and thus same would be beyond control ofDefendants to put any kind of disclaimer in already released movie. However,certainly, Defendants could be prevented to release home video version of movie orany version of movie on television which should not contain objectionable dialoguesof plaint which could be done by Defendants by editing the film. Thus High Courtfound that for future balance of convenience was in favour of Plaintiffs to such anextent of limited protection and irreparable loss shall ensue to Plaintiffs if the saidprotection was not granted to the Plaintiffs. Accordingly Defendants were restrainedfrom releasing the home video version of the movie or any other version on cabletelevision or television which contained the objectionable dialogues.

Hamdard National Foundation & Anr. v. Hussain Dalal & OrsCS(OS) No. 1225/2013


Trade Mark — Infringement of domain name — Deceptive similarity — As perPlaintiffs Defendants are using Trade Mark/domain name www.tatainfotech.inwhich is identical with or deceptively similar to Plaintiff’s Trade Marks TATA/TATA INFOTECH — Plaintiffs prayed for an order for transfer of domain namewww.tatainfotech.in to Plaintiffs from register of Registrar, Key-Systems GmBH,and for delivery-up of all infringing materials along with rendition of accounts ofprofit illegally earned as well as damages — Whether Plaintiff had an exclusiveright in said Trade Mark and was thus entitled to exclusive use thereof — Held,position of law regarding issue at hand is well-settled by Apex Court in case ofSatyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., in which Apex Court consideredquestion whether internet domain names are subject to legal norms applicable toother intellectual properties such as Trade Marks and be regarded as trade nameswhich are capable of distinguishing subject of trade or service made available topotential users of internet. It was held that a domain name may have allcharacteristics of a Trade Mark and could found an action for passing off. In instantcase WHOIS search conducted on registry website for domain namewww.tatainfotech.com clearly stated that record of said domain name was createdon January 30, 1998. Plaintiffs had also stated that they had been prior user withrespect to said domain name ever since year 1998. In contrast, WHOIS searchconducted on registry website for impugned domain name www.tatainfotech.inclearly showed that it was created on CS (OS) No. 563/2005 Page 9 of 11 February19, 2005 in name of Defendant No. 1 i.e. Arno Palmen, by sponsoring registrar Key-Systems GmBH, who was Defendant No. 2. Further, email correspondence betweencontesting parties also conclusively demonstrated that Defendant No. 1 not onlyhad the knowledge that Plaintiff No. 2 was legitimate owner and user of Trade MarkTATA INFOTECH but also got impugned domain name registered deliberately inbad faith, in hope of being able to sell domain name to Plaintiffs, or take unfairadvantage of distinctive character and repute of Plaintiff’s Trade Mark. ThusDefendant No.1, its servants, agents and assigns and all others acting on behalf ofDefendant were restrained from conducting any business or dealing in any manner

160

I-312013]


including using domain name www.tatainfotech.in or the word TATA or any namecomprising of same or deceptively/confusingly similar to it regarding any goods,services or domain. Therefore Defendant No. 2, Key-Systems GmBH was directed tocancel registration of impugned domain name in favor of Defendant. With respect todelivery and rendition of accounts, Plaintiff had not placed any evidence on recordto show that Defendant No. 1 had any infringing material or made any business outof impugned Trade Mark/domain name.

Tata Sons Ltd. and Anr. v. Arno Palmen and Anr.CS (OS) No. 563/2005


Trade Mark — Registration — Prior user — Respondents applied for registration ofTrade Mark JAGUAR in Class 14 in respect of “watches and parts thereof butexcluding clocks” — Appellants filed opposition — Dismissal of Appellantsopposition — Quashing of — Whether grant of registration was likely to causeconfusion among consumers and would lead to dilution of distinctiveness ofAppellant’s Trade Mark JAGUAR — Held, the Deputy Registrar had erred when hebased his conclusions on the point that Appellant(Jaguar Cars) had not registeredin India for watches and that Respondent was the prior Applicant with respect towatches. The test, according to the IPAB was registration of the Trade Mark in Indiafor any Class of goods and not for a particular good. Appellant had registered itsTrade Mark with respect to the auto industry in India in 1945. It had earned a brandvalue and reputation in India since then. The mark Jaguar is recognized in India asone of the leading luxury brands. This, not being factored in the Deputy Registrar’sdecision, led to the error. Moreover, in today’s world, the IPAB noted that even if thecompeting goods were dissimilar, there existed many possible avenues for confusionsuch as confusion of sponsorship, confusion of business affiliation, post-saleconfusion etc. Therefore, the IPAB held that even if Respondent was the priorApplicant with respect to watches, this was an artificially constructed and labouredjustification and consequently ruled in favour of Appellants. The IPAB noted thatthe argument that Jaguar was a common dictionary word does not provide anyperson with a free license to abuse it without any regard to the market realities withrespect to that word. Therefore, the IPAB ruled that the Deputy Registrar’s decisionwas wrong and allowed Appellants’ appeal.

M/s. Jaguar Cars Limited v. M/s. ManufactureDes Montres Jaguar S.A. and Deputy Registrar of Trade Marks

M.P. No. 53/2008 IN OA/21/2008/TM/KOLDecided on: 30.04.2013 at page 0187

MANU/IC/0023/2013

Trade Mark — Registration — Right of prior user — Deceptive similarity — Swissmultinational Societe des Produits Nestle S.A (Nestle) made two applications forregistration of “Kit Kat” Trade Mark in India in 1987 — Applications could not beregistered because of opposition by Kit Kat Food products — In 1991, Kit Kat Foodproducts attempted to register Trade Mark “Kit Kat” for their various productsincluding “chanachur” by filing three applications - Applications rejected because ofNestle’s opposition — Whether Nestle or Kit Kat Food Products had the right to usethe Trade Mark “Kit Kat” and consequently whose application could be rightfullyrejected under the Trade Marks Act, 1999 — Held, Nestle had been using the TradeMark “Kit Kat” outside India since 1935. They had got the mark registered in 1942.The applications for registration of “Kit Kat” Trade Mark in India by Nestle had beenfiled in 1987. Applications had been filed with respect to a number of products which


161



included cereals, which were used to make the highly popular wafer chocolate, KitKat. Although registration does not automatically translate to use, the 1987 applicationwas filed such that it could be used since 1987. Nestle had provided evidence in theform of an export sales invoice that they were users since 1st November, 1987. Moreoverit had been conceded by Kit Kat Food Products that they had been using the TradeMark since 1991 only. Therefore, Nestle was the prior user of the Trade Mark. Byestablishing that they were the prior user of the Trade Mark, the Board noted thatNestle had discharged its burden of proving that any confusion or deception wouldbe a result of the use of the mark by Kit Kat Food Products and not by Nestle as Nestlewas the prior user. Thus, the public would identify the Kit Kat Trade Mark with Nestleand not Kit Kat Food Products. — Furthermore, Kit Kat Food Products was unable tosatisfy their burden of proving that they were a prior user of the Trade Mark and thattheir use of the Kit Kat Trade Mark would not cause any confusion or deception of thecommon public. Additionally, as the marks were identical, the goods and tradechannels similar and especially as the class of customers were more or less the samein the form of small children there was every possibility of confusion being causedbecause of the use of the mark by Kit Kat Food Products. Therefore, adoption of theTrade Mark by Kit Kat Food Products was not bona fide and that it was merely anattempt on their part to ride on the goodwill of Nestle. Thus, Nestle’s application wasaccepted as it was the rightful user of the Trade Mark. Appeals dismissed.

M/s. Societe Des Produits Nestle S.A. v. The Registrar of Trade Marks and Ors.TA/304/2004/TM/KOL (TMA No. 3 of 2000),

Miscellaneous Petition Nos. 77/2005 & 233/2011 inOA/58/2005/TM/KOL and Miscellaneous PetitionNos. 3/2007 & 128/2011 in OA/2/2007/TM/KOL


Trade Marks — Infringement — Rectification — Passing off — Applicant the ownerof trade mark “SANGU” and the device of CONCH filed instant application for grantof interim injunction, restraining Respondent / Defendant herself, her servants oragents or any one claiming through her from in any manner infringing Applicants /Plaintiffs registered trademarks and trademark label by using offending trademarklabel shown or any other mark or marks which were in any way identical or colourableimitation of Plaintiffs registered trademark labels pending disposal of the suit —Applicant contended that words SANKYA and CHANGU were similar marks andeven picture of one form or other had been deceptively placed in such a way, that itlooks like CHANGU with intention to pass of their products as that of applicant andbalance of convenience was in favour of Applicant, and he was likely to sufferirreparable loss, if injunction was not granted — Whether Applicant had been able tomake out a case for grant of injunction — Held, the Plaintiff/Applicant had failed toplace on record the resolution of the company authorizing its Managing Director tofile and prosecute the present suit, in absence of resolution or its subsequent ratificationby the Board, it could not be said that the suit was properly instituted. Thus, the suitfiled by the Plaintiff/Applicant suffered from patent defect. The Plaintiff/Applicanthad also not placed on record any copy of assignment, to show the assignment ofTrade mark in favour of Plaintiff/Applicant, though it was pleaded in the application.Further, the Trade mark of Defendant was not deceptively similar to that of Plaintiff/Applicant, as there was no similarity between the photograph of Chank and that ofDefendant/Non-applicant. The word “CHANK” was not even phonetically similarto SANKYA. Merely because the Defendant/Non-applicant was using red backgroundin square could not be said to be infringement of Trade mark. A bare look at both theTrade marks did not leave any manner of doubt, that no customer couldbe misled to

162

I-332013]


take the goods of Defendant/Non-applicant to be that of Plaintiff/Applicant. Asalready noticed above, if the action of Managing Director of Plaintiff was ratified bypassing a board resolution, it could then be said that the suit had been properly filedto entitle the Plaintiff/Applicant to seek injunction. Thus, the Plaintiff/Applicanthad failed to make out prima facie case. Nor balance of convenience was in favour ofPlaintiff/Applicant. The Plaintiff/Applicant was also not likely to suffer irreparableloss, as in the event of success, the Plaintiff/Applicant could always be compensatedby damages. No merits. Petition dismissed.

M/s. Mohamed Aboobacker Chank Lungi Ltd. v.V. Saraswathi, Sole Proprietrix, Trading as Saraswathi Textiles

O.A. Nos. 404 to 406 of 2012 in C.S. No. 317 of 2012Decided On: 21.01.2013 at page 0001

MANU/TN/0526/2013

Ratio Decidendi

Copyright — Authorship in a work is to be determined at the time of completion ofthe work



Copyright — One of surest and safest test to determine whether, or not, there hasbeen a violation of a copyright is to see if reader, spectator or viewer after havingread or seen both the works, is clearly of opinion and gets an unmistakable impressionthat subsequent work appears to be a copy of original. .

Rediff.com India Ltd. v. E-eighteen.com Ltd.C.S. (OS) No.1115/2008


Intelectual Property — Power can be exercised in an appropriate case by the Registrarto extend the time period for filing the application for opposition.



Patent — A mere application of an old contrivance in old way to an analogoussubject without any novelty or invention in mode of applying such old contrivanceto new purpose, is not a valid subject-matter of a patent.



Patent — Appellant must have a fair opportunity to defend his case and for this hemust know what exactly are the objections.

Thomson Reuters Global Resources v. The ControllerGeneral of Patents, Designs & Trade Marks and Ors.

OA/38/2011/PT/KOL, Decided on: 08.03.2013 at page 0211MANU/IC/0018/2013


163



Patent — Fundamental rights guaranteed under the Constitution cannot be takenaway by any legislation though the legislation could impose reasonable restrictionson the exercise of the fundamental right guaranteed as per Article 19 (1) (g) of theConstitution.

S.P. Chockalingam v. Controller of Patents and Union of IndiaW.P. No. 8472 of 2006

Decided On: 15.03.2013 at page 0039MANU/TN/0352/2013

Patent — Non disclosure of an unsuccessful application for patent for same product quawhich injunction was claimed constituted a reason enough for denial of interim relief

Merck Sharp and Dohme Corporation & Anr. v. Glenmark Pharmaceuticals LtdCS(OS) 586/2013

Decided On: 05.04.2013, at page 0249MANU/DE/0793/2013

Trade Mark — Classification is only an administrative tool for the registry forsearch purpose and is not a full proof test to eliminate likely market confusion.

M/s. Jaguar Cars Limited v. M/s. ManufactureDes Montres Jaguar S.A. and Deputy Registrar of Trade Marks

M.P. No. 53/2008 IN OA/21/2008/TM/KOLDecided on: 30.04.2013 at page 0187

MANU/IC/0023/2013

Trade Mark — Each case has to be decided on facts of that case

M/s. Haldiram (India) Pvt. Ltd. and Ors. v. The Registrar of Trade Marks and Ors.M.P. No. 147 of 2012 and R.P. No. 1 of 2013 in

ORA/14/2004/TM/KOL and ORA/14/2004/TM/KOLDecided On: 26.04.2013 at page 0273

MANU/IC/0026/2013

Trade Mark — Infringement of Trade Mark can be caused by the spoken words andvisual depiction of same in form of presentation in the movie.

Hamdard National Foundation & Anr. v. Hussain Dalal & OrsCS(OS) No. 1225/2013


Trade Mark — The mere fact that a mark is registered cannot be evidence of use orbona fide intention to use, it has to be pleaded and if necessary proved.



Trade Mark — The onus is always on the Applicants for registration to prove theircase for the grant of registration and also to show that the Trade Marks if registeredwould not cause any confusion or deception.

M/s. Societe Des Produits Nestle S.A. v. The Registrar of Trade Marks and Ors.TA/304/2004/TM/KOL (TMA No. 3 of 2000),

Miscellaneous Petition Nos. 77/2005 & 233/2011 inOA/58/2005/TM/KOL and Miscellaneous PetitionNos. 3/2007 & 128/2011 in OA/2/2007/TM/KOL


164

I-352013]


Trade Mark — Trade Mark law is not intended to protect a person who deliberatelysets out to take benefit of somebody else’s reputation with reference to goods,especially so when reputation extends worldwide.



Trade Mark — When marks are compared, mark is considered in its entirety and itmust be taken as a whole, it cannot be dissected

Royal Orchid Hotels Limited v. Registrar of Trade Marks and Kamat Hotel (India) LimitedM.P. Nos. 125 & 126/2012 in OA./74 & 75/2009/TM/CH


Trade Mark — Where two marks are not deceptively similar to each other and arenot likely to confuse the public, they ought not to be removed.

Allied Blenders & Distilleries Pvt. Ltd. v. M/s. John Distillers Limited and Registrar of Trade MarksORA/143/2008/TM/CH and M.P. No. 127/2008, M.P. Nos. 249-251/2011 & 75/2012, 193/2012, 376/2012 & 377/2012 in ORA/143/2008/TM/CH and ORA/34/2008/TM/MUM and

M.P. Nos. 231/2012 & 378/2012 in ORA/34/2008/TM/MUMDecided On: 08.03.2013 at page 0054

MANU/IC/0015/2013

Trade Mark — While deciding question of disparagement factors to be kept in mindare intent of advertisement as understood from its storyline and message sought tobe conveyed.

Marico Limited v. Adani Wilmar Ltd.CS(OS) 246/2013 and CS(OS) 319/2013

Decided on: 18.04.2013, at page 0237MANU/DE/0933/2013

Trade Mark — While truthful disparagement is permissible, untruthfuldisparagement is not permissible.

Reckitt Benckiser (India) Ltd. v. Hindustan Unilever LtdCS (OS) No. 375/2013



Copyright — Compulsory license may be terminated for the breach of the terms ofthe license and to allow the Defendant to broadcast songs on the basis of the termsof the compulsory licence which has been validly terminated would amount to aninfringement of the copyright of the Plaintiff.

Radio One Limited v. Phonographic Performance Ltd.Notice of Motion No. 460 of 2013, Cross Objections No. 10 of 2012,

Notice of Motion No. 2190 of 2012 in Cross Objections No. 10 of 2012in Appeal No. 122 of 2013 in Notice of Motion (L) No. 1108 of 2012

in Suit No. 883 of 2012; Decided On: 02.04.2013 at page SNC 10MANU/MH/0306/2013


165



Patent — Non disclosure of an unsuccessful application for patent for the sameproduct qua which injunction was claimed constituted a reason enough for denialof interim relief

Merck Sharp and Dohme Corporation & Anr. v. Glenmark Pharmaceuticals Ltd.CS (OS) 586/2013

Decided On: 05.04.2013 at page SNC 1MANU/DE/0793/2013

Patent— Whenever documents are produced either at proper time or belatedly andthey are received by judicial authority, it is always subject to proof, admissibilityand relevance.

Mylan (Previous Matrix) Laboratories Limited v. Pfizer Inc.,OSI Pharmaceuticals Inc., F. Hoffman-La Roache Ltd. and

The Controller of PatentsMiscellaneous Petition No. 33/2013 in ORA/15/2010/PT/DEL

Decided On: 14.05.2013 at page SNC 16MANU/IC/0031/2013

Trade Mark — A Trade Mark is likely to deceive or cause confusion by its resemblanceto another already on the Register if it is likely to do so in the course of its legitimateuse in a market where the two marks are assumed to be in use by traders in thatmarket.

FMI Limited v. Ashok Jain & Ors.CS (OS) 189/2005

Decided On: 19.03.2013 at page SNC 3MANU/DE/0707/2013

Trade Mark — After having accepted the order passed by the Board and allowingthe order to become final, Appellant could not raise the same issue again.

M/s. Amrutha Aromatics v. M/s. N. Ranga Rao & Sons and The Registrar of Trade MarksOA/33/2009/TM/CH and M.P. No. 112/2013 in OA/33/2009/TM/CH


Trade Mark — An amendment, the effect of which destroys the accrued rights andtakes away the benefit of admission, ought not to be granted.

S. Narendra Kumar & Co. v. Apricot Foods Pvt. Ltd.Chamber summons No. 1319 of 2012 in suit No. 604 of 2010


Trade Mark — Discretion under Section 12(3) can only be exercised when two ormore parties unknown to each other and unaware of the mark used by each otherinnocently adopt and use the same trade mark in respect of their respective goods ofthe same nature.

M/s. Marc Enterprises Pvt. Ltd. v. Shri Gaurav Arya Proprietor andRegistrar of Trade Marks Baudhik Sampada Bhavan

ORA/90/2005/TM/DEL and M.P. 375/2012and 3/2013 in ORA 90/2005/TM/DEL at page SNC 21

Decided On: 18.06.2013MANU/IC/0044/2013

166

I-372013]


Trade Mark — In order to prove prior use, it must be substantiated with evidence forthe claim of use.

T. Varadaraj Pai v. Kiran Kumar and Registrar of Trade MarksORA/40/2010/TM/CH and M.P. Nos. 197/2011 and 25, 320 and 399/2012


Trade Mark — The paramount and/or overriding consideration/yardstick inconsidering applications for grant of leave is avoiding multiplicity of litigation.

Jagdish Gopal Kamath and Others v. Lime & Chilli Hospitality Services P. Ltd.Petition No. 972 of 2012 in Suit No. 2549 of 2012


Trade Mark — The registration cannot be allowed to remain on the registry in thename of a person/entity, which is not the proprietor

Double Coin Holdings Limited v. Trans Tyres (India) Pvt. Ltd. and the Registrar of Trade Marks ORA/110/2011/TM/MUM and Miscellaneous Petition

No. 85/2011 in ORA/110/2011/TM/MUMDecided On: 07.03.2013 at page SNC 4

MANU/IC/0012/2013

Trade Mark — Where the proprietor of a mark gets registration and there is no useby him, in this situation the mark is liable to be removed from the register.

M/s. Lowenbrau Buttenheim v. M/s. Lowenbrau MunchenORA/212 to 215/2008/TM/DEL and M.P. Nos. 173 to 176 of 2008and M.P. Nos. 41 to 44 of 2009 in ORA/212 to 215/2008/TM/DEL

Decided On: 06.05.2013 at page SNC 12MANU/IC/0030/2013

Trade Mark — While invoking the writ jurisdiction under Article 226 of theConstitution, the High court can exercise its discretionary writ jurisdiction fordetermination of disputed questions of facts in order to further the cause of justice.

Ammini Karnan v. IPAB, and Ors.W.P. No. 7981 of 2008

Decided On: 27.03.2013 at page SNC 7MANU/TN/0320/2013


167



Registered with RNI No. DELENG/2008/23906

Printed and Published by Priyanka on behalf of Manupatra Publishing Pvt. Ltd.

from 174, Nilgiri Appartments, Alakhnanda, New Delhi-110019 and Printed from M/s. R-Tech Offset

Printers 1617, A/1, Uldhanpur Naveen Shahdara, Delhi-110032. Editor - Priyanka

Download the Smart Phone Application and point your phone camera at

the graphic for more details