Experts CornerMurali Neelakantan

A previous post[1] discussed the difficulties in criminal prosecution of trade mark infringement in cases involving medicines. It seemed from that discussion that the justice system deterred trade mark owners from being able to successfully prosecute for offences under the Trade Marks Act. That post also contained a few suggestions to reform the law and practice of drug labelling.

 

If the Trade Marks Act is not effective in prosecutions for infringement, is there a remedy elsewhere to prevent fraudsters gambling with peoples’ lives? In a recent discussion with senior police officers, the answer proffered was that there was a better remedy in the Drugs and Cosmetics Act. However, the police officers seemed unaware of these provisions.

 

In the recent case involving the cancer drug, Adcetra, manufactured by Takeda, the police registered an FIR citing the provisions of Sections 420, 336, 483, 486 and 34 IPC, and provisions of the Trade Marks Act and the Copyright Act, but not the Drugs and Cosmetics Act (Drugs Act),[2] and seized counterfeit drugs from a dealer in Mumbai. The only explanation that can be offered for this is the lack of awareness of the provisions of the Drugs and Cosmetics Act among the police and the pharma industry.

 

Here are the various provisions of the Drugs and Cosmetics Act, 1940 that could have been applied to that case and included in the FIR:

Section 17(c) – a drug shall be deemed to be misbranded if its label or container or anything accompanying the drug bears any statement, design or device which makes any false claim for the drug or which is false or misleading in any particular.

Section 17-B – a drug shall be deemed to be spurious if,–

(a) it is manufactured under a name which belongs to another drug; or

(b) it is an imitation of, or is a substitute for, another drug or resembles another drug in a manner likely to deceive or bears upon it or upon its label or container the name of another drug unless it is plainly and conspicuously marked so as to reveal its true character and its lack of identity with such other drug; or

(c) the label or container bears the name of an individual or company purporting to be the manufacturer of the drug, which individual or company is fictitious or does not exist; or

(d) it has been substituted wholly or in part by another drug or substance; or

(e) it purports to be the product of a manufacturer of whom it is not truly a product.

Section 18. Prohibition of manufacture and sale of certain drugs and cosmetics.— No person shall himself or by any other person on his behalf (a) manufacture for sale or for distribution, or sell, or stock or exhibit or offer for sale or distribute (i) any drug which is misbranded, adulterated or spurious.

Would the procedure and the outcome be different if these provisions were used to prosecute the dealer of counterfeit drugs?

 

To begin with, the FIR would have disclosed a more serious offence than just trade mark infringement or fraud under the IPC. The punishment for the offence of dealing in spurious drugs is seven years to life imprisonment[3] and this would make the offence cognizable and non-bailable. It is also likely that the court would be reluctant to grant bail to the accused given the seriousness of the offence and the likely harm caused to public if the accused was allowed to be free on bail.

 

Mens rea of the accused in trade mark infringement and IPC cases would be a burden on the prosecution and that is perhaps one of the reasons for low rates of conviction and the rare case of imprisonment in such cases. However, there is no need to prove mens rea in cases like this thanks to Section 19 of the Drugs Act which states unequivocally that “it shall be no defence in a prosecution under this chapter to prove merely that the accused was ignorant of the nature, substance or quality of the drug in respect of which the offence has been committed or of the circumstances of its manufacture or import”. Therefore all that the prosecution has to state in the charge-sheet is that the dealer did not have a licence for the import and sale of that counterfeit drug and had not acquired it from a licensed distributor. It would then fall on the accused to show that he was duly licensed and had imported the drug in accordance with such licence or that the drug was purchased from a licensed distributor.

 

It should now be evident that the procedure for trial under the Drugs Act is simple, almost a summary trial given how little has to be proved by the prosecution and the limited defences available to the accused. It is a mystery why pharma companies, the State drug regulator and the police are not using the stringent provisions of the Drugs Act more effectively to enforce the law and save lives. Is it because the courts have not been keen to impose the punishment of seven years to life imprisonment[4]? Are the cases of violation of the Drugs Act that have been brought before the courts merely “technical violations” and not the kind that occurs in the case of Adcetra?


† Murali Neelakantan is currently Principal lawyer at Amicus. He is a dual qualified lawyer (India and UK) and among other positions, he was formerly a partner at an international law firm in London, Cipla’s first global general counsel, and Executive Director and Global General Counsel of Glenmark Pharmaceuticals.

[1] Criminal Trade Mark Infringement for Medicines – An Ineffective Remedy. See Here

[2]Mumbai : Women Arrested for selling fake medicines to cancer patients, See HERE .

[3] Drugs and Cosmetics Act, 1940, S. 27.

[4] A search on SCC Online shows that in all the cases before the Supreme Court where punishment under S. 27 was in issue, the punishment was usually a small fine and occasionally simple imprisonment for a few months. There were no cases where imprisonment of more than a year was imposed.

High Court Round UpLegal RoundUp

82 reports on High Court Judgments to read from February 2022.


Allahabad High Court


 Bail

 22-year-old woman, burnt and buried due to demand of dowry: All HC denies bail to accused husband

Noting the brutality with wife a 22-year-old lady and mother of a one year’s infant child in causing her death, beating her cruelly by “her husband” Vikas Kunvar Srivastav, J. held that the said act was not only grave in nature but heinous also.

Read report, here…

Law on S. 311 CrPC

Power to the Court to summon a material witness or to examine a person present in Court or to recall a witness already examined: All HC discusses

Sanjay Kumar Pachori, J., while addressing a matter with regard to recalling of the witnesses expressed that, Section 311 of the Code confers a wide discretion on the Court to act as the exigencies of justice require.

Read report, here…

Law on Recovery of Maintenance

Limitation of 1 year for recovery of maintenance under S. 125(3) of CrPC and the law on enforcement to claim order of maintenance under S. 128 CrPC: All HC explains

Dr Yogendra Kumar Srivastava, J., while addressing a matter regarding recovery of maintenance amount, expressed that,

“Sentencing to jail can only be seen as a means of recovering the amount of arrears and not a mode of discharging liability.”

Read report, here…


Andhra Pradesh High Court


If the de facto complainant feels insulted as he was beaten in front of public and if he takes a hasty decision to commit suicide; will the accused be held responsible in the eyes of law?

Cheekati Manavendranath Roy J. partly allowed the petition by quashing FIR for the offence punishable under Sections 306 r/w 116 IPC.

Read report, here…

Bail

AP HC considered alleged attempt to threatening witness as a vague allegation; Cancellation of bail sought was rejected

“…nothing was brought to the notice of the police or the investigating agency stating that the accused are interfering with course of investigation by way of threatening the witnesses through their men.”

Read report, here…


Bombay High Court


 Law on Voluntarily Causing Grievous Hurt

In a land dispute, a person subjected to grievous injury with the use of ‘Khurpi’: Will he be punished under S. 326 or 325 Penal Code, 1860? Bom HC explains

The Division Bench of S.S. Shinde and N.R. Borkar, JJ., upheld the decision of the Trial Court in a case of causing grievous injury voluntarily.

Read report, here…

Bail

Constant quarrels between husband and wife: Bom HC observes while granting bail to husband accused of dowry and cruelty

Sarang V. Kotwal, J., on noting that the husband and wife cannot live together and there were constant quarrels between them, granted bail to the husband who was accused under the provisions of Dowry Prohibition Act and Penal Code, 1860. 

Read report, here…

Provocation by Wife

Wife subjected husband to humiliation by publicly calling him impotent and abusing him resulting in assault by husband: Husband will be convicted for murder or culpable homicide? Bom HC analyses

The Division Bench of Sadhana S. Jadhav and Prithviraj K. Chavan, JJ., modified the conviction of a husband who in provocation by wife on being subjected to abuses assaulted wife.

Read report, here…

Abetment to Suicide

Employer setting big targets, not granting leave and not accepting resignation would be acts in normal course of business: Bom HC grants anticipatory bail to employer accused of abetting suicide committed by employee

 Sarang V. Kotwal, J., addressed a matter wherein an employer was accused of abetting the suicide of an employee.

Read report, here…

Law on Custody

9-year-old child prefers to stay with mother’s father and his family members and shows animosity towards father: Whether father will get custody of child or not? Bom HC decides 

Addressing a matter wherein a child’s mother was diagnosed with cancer due to which she started living at her parental home with the child, and after the passing of the mother, a custody battle arose between the father of the child and the father and brother of wifeDivision Bench of S.S. Shinde and N.J. Jamdar, JJ., noted animosity of the child towards his father, to which the Court expressed that, the same must have occurred due to ‘parental alienation syndrome’.

Read more, here…

Appeal

Appellate court can reverse the finding and sentence of the trial court ordering re-trial

The Division Bench of S.S. Shinde and Milind N. Jadhav, JJ. allowed an appeal against conviction of the Appellant by the Trial Court. The appellant was convicted of the offence punishable under Section 302 of the Penal Code, 1860, (“IPC”) read with Section 34 IPC. He was sentenced to suffer life imprisonment and to pay a fine of Rs. 15,000.

Read report, here… 

Transparency in Functioning

Disqualification of Sarpanch in suspicion of benefitting her close relations by allotting work under Panchayat’s order, without establishment of direct or indirect involvement as per S. 14(1)(g) of Maharashtra Village Panchayats Act: Is it correct? Bom HC analyses

Quoting a phrase from a story of a Roman Ruler Julius Caesar that, “Caesar’s wife should be above suspicion”, Bharati H. Dangre, J., remarked that,

“…those who are vested with the powers are to be made more accountable and transparent in their functioning and subjected to social audit with a view to minimize their discretionary decisions.”

Read report, here…

COVID-19 

Cinema Halls, Theaters, Malls, Restaurants, etc. permitted to carry on business with 50% capacity but banquet halls/Mangal Karyalaya & lawns not permitted with same capacity: Bom HC issues notice

The Division Bench of Sunil B. Shukre and Anil L. Pansare, JJ., addressed a petition wherein a grievance was filed stating that an unreasonable classification resulting in impermissible discrimination had been made by the respondents as Cinema Halls, Theaters, Malls, Restaurants and also other establishments have been permitted to carry on their business or operations with 50% capacity of the customers or attendees, provided customers or attendees are armed with two doses of vaccination, and whereas, Mangal Karyalaya/ Banquet Halls and Lawns where marriage functions are held and solemnised are not being permitted to carry on their business and operations with the same capacity of persons who have taken both the doses of vaccination. 

Read report, here… 

Consumer Protection

Consumer Protection Act requires State Government to constitute a State Consumer Disputes Redressal Commission and create circumstances to its effective functioning: Bom HC at Goa directs State of Goa to ensure filling up of vacant positions expeditiously

Stating that the State Administration comprises several IAS Officers, the least expected out of them is to find the solution to problems, so that State Consumer Disputes Redressal Commission functions effectively, The Division Bench of M.S. Sonak and R.N. Laddha, JJ., directed the State of Goa to ensure that the post of President and 3 other members of the Commission which are vacant be filled expeditiously.

Read report, here…

Dead Person

Notice to a dead person under S. 148 of Income Tax Act cannot be issued: Bom HC

The Division Bench of K.R. Shriram and N.J. Jamdar, JJ., reiterated that notice under Section 148 of the Income Tax Act, 1961 to a dead person cannot be issued.

Read report, here…

Legal Profession

“Notaries operating from public taxis around vicinity of Court”: Dignity of the profession needs to be maintained and the legal profession cannot be allowed to function from the streets | Bom HC

The Division Bench of S.J. Kathawalla and Milind N. Jadhav, JJ., requested the Department of Legal Affairs to give due consideration to this Court’s Order and the Report dated 9-12-2021 submitted by Nausher Kohli, Advocate whilst enacting the Draft Bill.

Read report, here…

Murder or Culpable Homicide?

Husband killed wife brutally in a heat of passion leaving husband with a wounded pride: Bom HC decides whether the said offence will come under “Murder” or “Culpable Homicide not amounting to Murder

Stating that, in the moment of anger spouses almost forgot about the two children who were hardly three years old at the time of incident, the Division Bench of Sadhana S. Jadhav and Prithiviraj K. Chavan, JJ., found that the case of a husband killing wife with a knife was a case of culpable homicide not amounting to murder.

Read report, here…

Arbitration

Bombay HC rejects argument that a dispute cannot be referred for arbitration on account of fraud: Read why

B.P. Colabawalla, J., addressed an arbitration application filed under Section 11 of the Arbitration and Conciliation Act, 1996

Read report, here…

Gangubai Kathiawadi

Can after certification granted by Board, public exhibition of a film be prohibited? Bom HC answers 

In respect to petitions with regard to the release of movie Gangubai Kathiawadi, Division Bench of Dipankar Datta, CJ and M.S Karnik, J., while expressing that “Once the film is granted a certificate by the competent statutory authority, i.e. the Board, the producer or distributor of the film has every right to exhibit the film in a hall unless, of course, the said certificate is modified/nullified by a superior authority/Court”, held that, there cannot be any kind of obstruction for the exhibition of a film, which is certified, unless the said certificate is challenged and Court stays its operation.

Read report, here…

Divorce 

If husband and wife get their marriage registered under Special Marriage Act & under Parsi Marriage and Divorce Act, 1936 as well, would this require them to get nullity of marriage under both Acts or one? Court decides

G.S. Kulkarni, J., expressed that, there is no provision under legislations, that if a marriage between the same couple is annulled under a competent law as enacted by the Parliament, it can as well be of a legal effect in the corresponding enactment.

Read report, here…


Calcutta High Court


Bail

S. 37 of the NDPS Act mandates a more stricter approach than an application for bail sans the NDPS Act: Cal HC

The Division Bench of Bibhas Ranjan De and Debangsu Basak, JJ., while addressing a bail application in a case under NDPS Act, remarked that,

Section 37 of the NDPS Act mandates a more stricter approach than an application for bail sans the NDPS Act.

Read report, here…

Sexual Assault

14-yr old girl subjected to penetrative sexual assault by man who called her grand daughter: Is girl’s complaint vital to form basis of conviction? Cal HC explains

The Division Bench of Joymalya Bagchi and Bivas Pattanayak, JJ., in a penetrative sexual assault case of a 14-year-old girl, expressed that,

“Crime against woman is increasing as a whole. Such type of crime is a direct insult to the human dignity of the society and therefore imposition of any inadequate sentence not only results in injustice to the victim and the society in general but also stimulates criminal activities.”

Read report, here…

Trademark

Disparagement or mere puffery? Court decides in matter of offending/misleading advertisements [Dabur India v. Baidyanath Ayurved]

Saraf, J. decided on a petition which was filed seeking remedy against impugned advertisements disparaging the goodwill and reputation of the petitioner and its product.

Read report, here…


Chhattisgarh High Court


 Jurisdiction

 Limited jurisdiction has been given to the High Court confined to the substantial question of law only

Anoop Kumar Dhand J. dismissed the appeal as it does not fulfill the requirement mandated under Section 30 of Workmen’s Compensation Act, 1923.

Read report, here…

If the party is able to make out an exceptional case and the court finds irretrievable injustice would occur if writ jurisdiction is not invoked, High Courts do have the power to entertain the writ petition

Sam Koshy J. partly allowed the petition and partly disposed of the petition expressing no opinion on the termination notice issued against the petitioner.

Read report, here…

Child Custody

Due to father’s field job, mother granted custody of child: Did Chh HC also grant contact and visitation right to father? Read

In a child custody battle, the Division Bench of Goutam Bhaduri and Rajani Dubey, JJ., reiterated the position of law in the Supreme Court’s decision of Yashita Sahu v. State of Rajasthan(2020) 3 SCC 67, wherein it was held that the court cannot provide one happy home with two parents to the child then let the child have the benefit of two happy homes with one parent each, further this Court granted visitation and contact right to the father.

Read report, here…

Desertion 

If husband brings home concubine due to which wife leaves house, would that lead to desertion by wife? Chh HC explains

The Division Bench of Goutam Bhaduri and Rajani Dubey, JJ., expressed that,

“If the husband keeps another lady; gives shelter to her; and proceeds to have child with the said lady and for that reason if the first wife has to leave the matrimonial home because of physical and mental torture meted out to her it cannot be presumed as a desertion on the part of wife.”

Read report, here…


Delhi High Court


Trademark Dispute

Baazi v. WinZo | Trademark is used by a manufacturer or service provider to distinguish products from those of competitors: Here’s how Winzo appeared dishonest and unfair in adopting Baazi

“When people are satisfied with the products supplied by a manufacturer or service provider, they buy them on the basis of the trade mark and over time it becomes popular and well known. Thus, the use of a similar or identical trademark by a competitor in the same product would lead unwary customers to believe that it originates from the same source.”

Read report, here…

Deadly Weapons

Whether a ‘blade’ would be covered under S. 397 IPC as a deadly weapon? Del HC explains in view of settled position of law

Mukta Gupta, J., explained under what circumstances would Section 397 of penal Code, 1860 would be attracted.

Read report, here…

Law on Bail

Investigation complete, charge sheet filed, accused in jail since 6 months: Read whether Del HC grants bail

Dhari Singh, J., granted bail while referring to a catena of Supreme Court decisions with regard to the law on bail.

Read report, here…

4 years as undertrial, 2 witnesses examined out of 14, no probability of trial to be concluded in near future: Whether Del HC will grant bail to accused under S. 37(b)(ii) of NDPS Act? Read

Chandra Dhari Singh, J., granted bail to an accused on being satisfied with “reasonable grounds” as per Section 37 (b)(ii) of the NDPS Act, 1985.

Read report, here…

Judicial Separation 

Can judicial separation be granted instead of divorce for which party has approached the Court? Read what Del HC says

Expressing that the Family Court’s decision was based on optimism and hope rather than the actual factual matrix of the case, the Division Bench of Vipin Sanghi and Jasmeet Singh, JJ., while addressing a matter wherein matrimonial dispute occurred between the parties, observed that,

“..a decree of judicial separation can be rescinded by the same court; but a decree of divorce can be reversed only by a judicial order: either in review or in appeal. If it is passed ex parte, it may be recalled on an application being made for that purpose.” 

Read report, here…

Money Laundering

Money laundering offence under PMLA is, layered and multi-fold and includes stages preceding and succeeding offence of laundering money: Del HC

While expressing the object of PMLA Act Chandra Dhari Singh, J., expressed that, offence of money laundering is threefold including the stages of placement, whereby the criminals place the proceeds of crime to the general and genuine financial system, layering, whereby such proceeds of crime are spread into various transactions within the financial system and finally, integration, where the criminals avail the benefits of crime as untainted money.

Read report, here…

Uphaar Case

Manner in which judicial records tampered revealed well-planned & methodical attempt to subvert justice system: Suspending sentence of Ansal brothers would amount eroding faith of public? Read Del HC’s decision

Stating that the manner in which Court records tampered was insidious and revealed a well-planned and methodical attempt to subvert the justice system in order to escape conviction in the Main Uphaar CaseSubramonium Prasad, J., held that since the matter relates to tampering of judicial record, the same has to be decided expeditiously in order to ensure faith of the public in the judicial system.

Read report, here…

Law on Review

Can review be sought wherein Court has to delve into materials, apply its mind afresh after re-evaluating materials? Del HC throws light

Expressing that, Minor mistakes of inconsequential importance are insufficient to seek a review, Asha Menon, J., elaborated that, while seeking review of orders passed in a Civil Suit, the grounds mentioned in Order XLVII Rule 1 of the CPC have to be satisfied, which would not equate the hearing with the original hearing of the case or a hearing in an appeal 

Read report, here… 

Eviction

Group of leading artistes asked to vacate Government allotted premises under Discretionary Quota: Right to continue in public premises infinitely? Detailed report

Expressing that a state of indecision could not have given rise to a legitimate expectation, Yashwant Varma, J., held that, while the petitioners undisputedly were illustrious and pre-eminent exponents in their respective fields of the classical arts, the Court was not shown any material which may justify the continued retention of public premises in Delhi or that they would be unable to propagate the classical arts in any other State or city of the nation.

Read report, here… 

Shared Household

Where the residence is a shared household, would it create any embargo upon owner to claim eviction against his daughter-in-law? Read what Del HC says

Yogesh Khanna, J., held that right of residence under Section 19 of the Domestic Violence Act is not an indefeasible right of residence in a shared household, especially when the daughter-in-law is pitted against aged father-in-law and mother-in-law.

Read report, here…

Section 138 NI Act

Vicarious Liability of Directors of Company for offences committed under S. 138 NI Act: Person claiming to not being able to manage business due to his age, could this be accepted as defence? Del HC answers

Subramonium Prasad, J., addressed a matter pertaining to vicarious liability of directors of the company alleged for offences under Section 138 NI Act.

Read report, here…

Passport

Adoptive Father of a minor girl seeks issuance of her passport with details of adoptive parents so that she could write her TOEFL examination: Here’s what Del HC directed

Kameswar Rao, J., addressed a matter wherein a minor child was not able to apply for a passport either in the name of her biological parents or in the name of her adoptive parents, was unable to pursue her academics in the USA.

Read report, here…

Other

Power under Article 227 of Constitution of India cannot be exercised to upset conclusions, howsoever erroneous they may be, unless there was something grossly wrong or unjust: Del HC

Asha Menon, J., while expressing the scope of power under Article 227 of the Constitution of India dismissed the present petition. 

Read report, here…


Gujarat High Court


Will

Opportunity of being heard needs to be granted; Court decided in matter of the Will of Guru Ranchhoddas

A.P. Thaker, J. decided over a petition wherein the case of the petitioner was that the properties in question were originaly private properties of Guru Keshavdas, and after the death of Guru Keshavdas, Guru Karsandas became the Mahant and succeeded the properties under his Will. On the death of Guru Karsandas his chela Guru Atmaram became Mahant and succeeded to the properties of Guru Karsandas under his Will dated 08.12.1941. Thereafter, Guru Atmaram died leaving his Will dated 06-05-1947, appointing Guru Ranchhodas as Chela.

Read report, here…


Himachal Pradesh High Court


Couples have to make their choice at the threshold between career prospects and family life; HP HC observes in a case where a mother seeks job transfer to be with her daughter

“…mandamus is a public remedy and this remedy lies, when a public authority fails to perform the duty entrusted to it by law.”

Read report, here…


Jammu and Kashmir and Ladakh High Court


Inherent Power

Instead of filing an appeal before the Sessions Court petitioner rushed to this Court invoking its inherent power. Can High Court exercise its inherent power? Read J&K and Ladakh HC’s decision

Mohd. Akram Chowdhury, J., reiterated the settled position of law that if an alternate efficacious remedy is available under the statute, the inherent power of this Court cannot be invoked.

Read report, here…


Jharkhand High Court


Lokayukta 

Does Lokayukta have power to pass directions upon disciplinary authority to take action against erring officials? Jharkhand HC elaborates in light of Jharkhand Lokayukta Act, 2001

Sujit Narayan Prasad, J., addresses a very pertinent question of whether the Jharkhand Lokayukta Act, 2001 provides power for issuance of direction upon the disciplinary authority to take action against erring officials or can it’s order be limited to a recommendation.

Read report, here…


Kerala High Court


Cruelty

Is not taking treatment for mental illness to bring out a peaceful family atmosphere a form of cruelty and thus, a ground for divorce? HC answers

In an interesting case the Division Bench of A.Muhamed Mustaque and C.R. Sophy Thomas, JJ., held that not taking treatment for mental illness in order to bring out a peaceful and harmonious family atmosphere can also be counted as cruelty to the persons at the receiving end.

Read report, here…

If Court finds that marriage failed due to incompatibility, but one of the parties withholds consent for mutual separation, would that be ‘Cruelty’? Kerala HC elaborates

Expressing that, “If the conduct and character of one party causes misery and agony to the other spouse, the element of cruelty to the spouse would surface, justifying grant of divorce”, the Division bench of A. Muhamed Mustaque and Sophy Thomas, JJ., held that, Court cannot leave the life of a spouse to the mercy of the opposite spouse.

Read report, here…

Constitutional & Statutory Obligation

Whether State empowered to reject medical reimbursement for treatment being from unrecognized department of recognized hospital? HC decides

Murali Purushothaman, J., held that there is a Constitutional as well a statutory obligation on the part of the State to bear the expenses for treatment of the government servant and his family.

Read report, here…

Reservation

“Marrying a Christian man would not wipe off the benefit of reservation granted to a scheduled caste persons”, HC reiterates caste of a person is to be decided on the basis of birth

Raja Vijayaraghavan V, J., held that marrying a Christian man would not wipe off the benefit of a reservation granted to scheduled caste persons.

Read report, here…

Corporal Punishment

Teacher administering moderate and reasonable force to enforce discipline in classroom, can be exposed to criminal prosecution? Kerala HC answers 

While explaining that inflicting corporal punishment on a Child by a parent or teacher is forbidden, Dr Kauser Edappagath, J., observed that,

“Hurt of a less serious crime is not forbidden when inflicted in the reasonable chastisement of a child by a parent or by a school teacher.”

Read report, here…

Registration of Marriage

If a foreign embassy doesn’t issue ‘Single Status Certificate’ or NOC of an OCI card holder, can Declarations and Certificates be accepted for registration of marriage in India? Ker HC answers

While addressing a matter wherein an Indian Citizen intended to soleminse and register his marriage with a British Citizen, an OCI card holder, N. Nagaresh, J., held that f a foreign Embassy does not issue a Single Status Certificate or NOC due to the law, rules and regulations prevailing in that country, Declarations or Certificates evidencing the same should be accepted in India for registration of marriage.

Read report, here…

Tobacco at residence

If a person keeps tobacco at residence, would that amount to being an offence? Ker HC answers

While addressing a matter for an offence alleged under Cigarettes and Other Tobacco Products Act, Juvenile Justice Act and Kerala Police Act, Dr Kauser Edappagath, J., expressed that mere keeping tobacco at residence would not amount to being an offence.

Read report, here…

Admin of WhatsApp Group

Can an Admin of a messaging service group be held criminally liable for the offensive content posted by member of a group? Kerala HC addresses

While addressing the question of whether the creator or administrator of a WhatsApp group is criminally liable for offensive content posted by a group member, Dr Kauser Edappagath, J., held that a person can be criminally liable for the acts of another if they are party to the offence.

Read report, here…


Karnataka High Court


 Hijab Case

When Karnataka High Court temporarily restrained students from wearing hijab, religious flags, saffron shawls, etc.: Read Court’s interim order

While expressing that, “Endless agitations and closure of educational institutions indefinitely are not happy things to happen”, the Bench of Ritu Raj Awasthi, CJ and Krishna S Dixit and JM Khazi, JJ., restrained all the students regardless of their religion or faith from wearing saffron shawls (Bhagwa), scarfs, hijab, religious flags or the like within the classroom, until further orders.

Read report, here…

Sentence

Conviction sentence not to affect career and not be treated as a remark for employment; Kar HC confined the sentence to fine only in accordance with Ss. 279 and 337 IPC

Sreenivas Harish Kumar, J., disposed of the petition and modified the judgment of the appellate court.

Read report, here…

GST Exemption 

Whether GST exemption can be claimed for leasing out residential premises as hostel to students and working professionals? Kar HC answers 

The Division Bench of Alok Aradhe and M.I. Arun, JJ., addressed whether GST exemption can be claimed for leasing of residential premises as a hostel to students and working professionals.

Read report, here…


Madras High Court


Negotiable Instruments Act

Whether proceedings under Ss. 138 and 141 of NI Act can be initiated against corporate debtor during moratorium period? Madras HC answers

Sathish Kumar, J., while addressing a matter with regard to the dishonour of cheques under Section 138 of Negotiable Instruments Act, 1881, held that the moratorium provision contained in Section 14 of the Insolvency and Bankruptcy Code, would apply only to corporate debtor, but the natural persons mentioned in Section 141 of Negotiable Instruments Act continue to be statutorily liable under Chapter XVII of the Negotiable Instrument Act.

Read report, here…

Religious Practice

“One of the basic tenets to be followed by every Hindu is tolerance. Tolerance must be his own community or religion and in particular, to also to every other religious practice”: Madras HC

“Fundamental Rights and Duties are sacrosanct and binding on the Courts which adjudicate issues relating to the religion.”

Read report, here…


Madhya Pradesh High Court


 MBBS Seat

CBI’s self-contained note cannot form basis for rejecting application for increase of MBBS Seat; HC directs NMC to consider the application afresh 

The Division Bench of Sujoy Paul and Arun Kumar Sharma, JJ., quashed the National Medical Commission’s decision rejecting L.N. Medical College & Research Centre’s application for increase of MBBS seats.

Read report, here…

Writ of Mandamus

Provision for redressal of grievance in matter of radiation by mobile tower exists; Permission for installation can’t be revoked

Nandita Dubey, J. heard a petition which was filed seeking issuance of the writ of mandamus to the respondents to take appropriate effective steps against the Reliance Telecom Services not to permit them for installation of the mobile tower in the premises of Jai Hind School, V.V. Giri Ward, Pipariya.

Read report, here…

Departmental Inquiry

Desirable to stay the departmental proceedings till conclusion of the criminal case; Court prohibits Department to continue inquiry

Atul Sreedharan, J. decided on a petition which was filed by the petitioner who was aggrieved by the departmental proceedings against him on the identical charges by the CBI in the criminal case. 

Read report, here…

Land Acquisition

What would be an appropriate factor by which market value of land was to be multiplied to assess the compensation in the case where the land was situated in the rural area? [NH- 148N land acquisition] 

The Division Bench of Vivek Rusia and Rajendra Kumar Verma, JJ. took up a bunch of petitions which had similar facts that the petitioners were owners of agricultural land that came under the acquisition for construction of 12 lanes Delhi-Mumbai Expressway i.e. NH-148N under the provisions of the National Highways Act, 1956 (‘the NH Act of 1956’). 

Read report, here…

Acquittal

Unless the acquittal in criminal trial is honourable/clean, the employer has enough discretion to find a candidate to be unfit for employment

The Division Bench of Sheel Nagu and Sunita Yadav, JJ. while hearing a petition under Article 227 against order the Central Administrative Tribunal, Jabalpur Bench., dismissed the petition.

Read report, here…


Meghalaya High Court


Meghalaya Civil Service and the Meghalaya Police Service

There is no question of apples and orange being put in the same basket: Court calls State’s action foolish and justification of such act real tragedy

Sanjib Banerjee, CJ. while deciding in the matter between groups of persons in the Meghalaya Civil Service and the Meghalaya Police Service, pertaining to seniority between or among them, disposed the writ petition in favour of petitioners.

Read report, here…

Rape Case | Confession

Unequivocal confession leads to dismissal of appeal in a Rape case with minor

The Division bench of Sanjib Banerjee, CJ. and W. Diengdoh, J. dismissed the appeal which was filed on behalf of the convict with counsel engaged by the Legal Services Authority.

Read report, here…

Police Service 

“It is elementary that when the law requires a certain thing to be done in a particular manner, it has to be done in such manner or not at all”; Court upholds the dismissal of police official for passing information to outlaws 

“….the appellant had links with the banned outfit and had passed on information about police movements and operations to the outlawed organisation” 

Read report, here…


Orissa High Court


Ever-growing stock of seized vehicles

PIL filed about the ever-growing stock of seized vehicles and other properties in the various police stations in the State of Odisha; Directions issued

Muralidhar, CJ. issued directions regarding the ever-growing stock of seized vehicles and other properties in the various police stations in the State of Odisha

Read report, here…


Punjab and Haryana High Court


 Drug Menace

“Drug menace has become deep rooted and is taking its toll like a slow poison for the young generation”; HC expresses anguish over callously casual approach of officers

In a case exposing callous attitude of authorities while dealing with drug menace in the State of Punjab, Meenakshi I. Mehta, J., observed that in some paras of the Statu sreports/Reply, the police officers concerned had mentioned the tablets, allegedly recovered as ‘CLAVIDOL-100 SR’ whereas in certain other paras the same had been described as ‘CLOVIDOL-100 SR’. Criticizing the lackadaisical attitude of officers, the Bench remarked…

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State of Punjab which was known as one of the prosperous States is now at the brink of drug-trafficking

Expressing that, State of Punjab which was known as one of the prosperous States is now at the brink of drug-trafficking, Harnaresh Singh Gill, J., held that in order to curb the menace of drug trafficking the accused person are to be dealt with stringently even at the stage of granting her/him bail in NDPS Act cases involving commercial quantity.

Read report, here…


Patna High Court


Mental Health 

Mental health of a person and/or treatment of those who are in need, more so during the time of Covid-19, is the least priority of the State Government

The Division Bench of Sanjay Karol, CJ and S. Kumar, J., directed the Chief Secretary, Government of Bihar to take all steps ensuring the establishment of State Mental Health Authority as per Section 45 of the Mental Health Care Act, 2017.

Read report, here…


Rajasthan High Court


 Compensation | Motor Vehicle

Money cannot substitute a life lost but an effort has to be made for grant of just compensation having uniformity in approach; Court observes in a MV accident case demanding higher compensation 

Birendra Kumar J. allowed the appeal and enhanced the award considering the settled guidelines in the subsequent judgments to reach at “just compensation”.

Read report, here…

Customs Act 

DRI officer is not Competent Authority to issue show cause notice and adjudicate the same as “proper officer”; Show cause notice set aside 

A Division Bench of Akil Kumar, CJ and Sameer Kureshi, J. allowed the writ petition and set aside the proceedings issued by show cause notice and subsequent demands confirmed by OIO. 

Read report, here…

Rajasthan Public Service Commission

It would be open for RPSC to conduct written main examination on the rescheduled date, Single Judge bench order stayed

A Division Bench of Akil Kureshi CJ and Sudesh Bansal J. stayed the impugned judgment and left it open for RPSC to conduct a written main examination on the rescheduled date.

Read report, here…

Compassionate Appointment

“…on the ground of delay itself, the heir of the deceased employee shall not be entitled to appointment on compassionate ground.”; Raj HC observes in a case where delay is of almost 13 years 

A Division Bench of Manindra Mohan Srivastava and Anoop Kumar Dhand, JJ. dismissed the petition on the ground that the writ petition filed by the petitioners is without any substance. 

Read report, here…

Transfer

Accepting requests for inter-district transfer can lead to chain reaction and at times considerable administrative difficulties; Raj HC observes while dealing a case related to inter-district transfer

A Division bench of Akil Kureshi CJ and Madan Gopal Vyas J. dismissed the petition stating that nothing would come in the way of the petitioner in seeking inter-district transfer if the Government rules and regulations recognize any such policy.

Read report, here…


 Tripura High Court


 Qualifying Examination

No grievance for non-selection; Court finds criteria fixed by ONGC clear and categorical

Indrajit Mahanty, CJ. dismissed a petition which was filed by the petitioner who was appointed as Junior Security Supervisor at (A-1 Level) in the category of Scheduled Tribe and had appeared for the computer-based test and physical standard test conducted by the ONGC. It was alleged that in the selection process the petitioner was awarded 72 marks but was not selected whereas the candidate (respondent 3) who got only 66.10 marks was wrongly and illegally selected by the respondent 2.

Read report, here…

Conjugal Rights

Whether maintenance granted to the wife under S. 125 CrPC can be cancelled in view of husband’s obtaining a decree for restitution of conjugal rights and wife’s refusal for the same?

S.G. Chattopadhyay, J., decided on a petition which was filed by the petitioner challenging order passed by the Additional Judge, Family Court which stated that the petitioner was not entitled to any maintenance allowance under section 125 Cr.P.C from her husband in view of her refusal to restore conjugal relationship with her husband pursuant to the judgment and decree passed by the District Judge for restitution of conjugal rights.

Read report, here…

Bail

Tests provided under S.37(1)(ii) of the NDPS Act should qualify in order to seek bail; Court rejects application 

S.G. Chattopadhyay, J., rejected a bail application which was filed for releasing the accused on bail who had been undergoing imprisonment since 16-09-2021 under NDPS Act, 1985. Successive applications of the accused for pre-arrest bail were rejected.

Read report, here…

Die-in-Harness Scheme

Exclusion of married daughters from the die-in-harness scheme of the State Government discriminatory? Court discusses

The Division Bench of Indrajit Mahanty, CJ. and S.G. Chattopadhyay, J. decided over a bunch of petitions which had a similar question pertaining to exclusion of married daughters from the die-in-harness scheme of the State Government. 

Read report, here…

Migratory Birds

More than 1000 ‘Rare’ Birds dead, no carcasses found; Court directs committee inspection 

The Division Bench of S.G. Chattopadhyay and Indrajit Mahanty, JJ., took up a PIL which was filed on the basis of press reports that in the Sukhsagar water body of Udaipur, Khilpara, large number of migratory birds of more than 1000 in numbers were found dead. Notices were issued and following the directions of this Court a report had come to be filed by the State wherein the State had taken note of the fact that many migratory birds come and find sanctuary in water bodies in the State of Tripura and they come all the way from Spain, Portugal, South East France, Italy and North Western Africa and have all been listed as “Rare” birds by the European Union, but it seems that the same has been detailed as localized by the State.

Read report, here…


Uttaranchal High Court


Right to Information

Husband seeking personal information such as salary of wife under Right to Information Act, 2005; Whether acceptable or not?

“….The only exception as to the information given under the Act under Section 8 of the RTI Act, is an exemption from disclosure of information.”

Read report, here…

Termination of Pregnancy

Compelling to continue pregnancy, infringement under Art. 21; Rape victim allowed to terminate Intrauterine Fetus of 28 weeks 5 days

Alok Kumar Verma, J., decided on a petition which was filed by the father of the minor petitioner to issue a writ in the nature of mandamus commanding and directing the respondent to ensure immediate medical termination of petitioner’s pregnancy after taking all precautions as required to be taken medically and legally.

Read report, here… 

Bail

Denial of bail on sole ground of apprehension that he may commit crime again, overturned by the Court

R.C. Khulbe, J. granted bail in a criminal revision petition moved against the order of Juvenile Justice Board (JJB), Dehradun as well as a judgment by Addl. Sessions Judge (POCSO)/FTC, Dehradun against the petitioner.

Read report, here…



8 Legal Stories of the Week: From High Courts to District Courts

7 Legal Stories of the Week: From High Courts to District Courts

11 Legal Stories of the Week: From Hijab ban to a Sexual Harassment complaint from an employee in ScoopWhoop & more

8 Legal Stories of the Week: From the release of movie Gangubai Kathiawadi to WhatsApp Admin’s liability if a member of group shares objectionable content on group and many more such stories

Case BriefsHigh Courts

Calcutta High Court: Shekhar B. Saraf, J. decided on a petition which was filed seeking remedy against impugned advertisements disparaging the goodwill and reputation of the petitioner and its product.

Facts:

The plaintiff/petitioner had filed the present suit against an advertising campaign containing five impugned advertisements issued by the defendant/respondent one after the other during October and November 2021 in relation to its product “Baidhyanath Chyawanprash Special”. For seeking remedy against the impugned advertisements the petitioner/plaintiff had moved this application, praying for an order of injunction restraining the respondent from issuing, publishing or uploading the impugned advertisements disparaging the goodwill and reputation of the petitioner and its product ‘Chyawanprash’ being sold under the trademark “DABUR”.

Arguments:

Sudipta Sarkar, Senior Advocate, appearing on behalf of the petitioner made the following arguments:

  1. It is admitted by the defendant/respondents that the impugned advertisements are comparative in nature, thus, such untruthful comparisons are actionable in nature.
  2. a malicious comparison has been made by the respondent in stating that its product is made with ‘100% pure ghee’ whereas petitioners’ product is made with a mixture of ghee plus vegetable oil spreading further misinformation and confusion because Dabur uses a mixture of til oil and pure desi ghee based on ancient ayurvedic texts.
  3. If it is assumed that no direct reference is made to Dabur, there still exists a generic disparagement to the entire class of Chyawanprash thus giving a cause of action to the petitioner as a manufacturer of the product.
  4. The First Schedule to the Drugs and Cosmetics Act, 1940 provides for various ayurvedic texts that may be followed to manufacture Chyawanprash and in none of these texts a Chyawanprash can be made with 42 ingredients. In fact, the minimum number required is 47 ingredients. Ergo, the reference to ‘42’ is false and consequently amounts to disparagement.
  5. The intent and the manner of representation in the impugned advertisements are false and misleading. According to the petitioner unfair or deceptive advertising is not protected under commercial speech as laid down in Article 19 (1) (a) of the Constitution of India but hits Article 19(2). Hence, it is impermissible.

Manish Biala, Counsel appearing for the Defendant/Respondent, made the following arguments:

  1. The defendant’s advertisement and right to commercial speech is a part of freedom of speech and expression guaranteed under Article 19 (1) (a) of the Constitution. It is settled law that any restraint or curtailment of advertisements would affect the fundamental right under Article 19 (1) (a). The purpose of advertising is dissemination of information regarding the product advertised and public at large is benefitted by the information disseminated.
  2. The said implication is natural and allowed, as one consumer may look at the advertisement and conclude that one product is superior while some other consumer may look at it from another point and think that the other product is inferior. This does not constitute disparagement under the law, and the advertisement cannot be restrained.
  3. The plaintiff has attempted to create a monopoly in the market by abusing the process of law. It is settled law that the plaintiff cannot restrain others from advertising on the ground that the plaintiff has major market share for a particular product and thus, it is the obvious target of any advertisement.
  4. The defendant’s advertisements make the public at large aware of the beneficial knowledge for consumers.
  5. It is settled law that comparative advertising is permissible under the law. Furthermore, in the present matter, the defendant’s advertisement is not comparative in the strict sense as the defendant’s advertisement only compares the defendant’s product with an unnamed fictitious product.

Analysis and Judgment:

Sole issue for consideration before this court was that whether the impugned advertisements published by the defendant/respondent amounted to disparagement or not.

The Court discussed the case laws cited by both the parties on the issue of disparagement.

After analyzing the above judgments and plethora of similar ones the Court laid down certain key principles that were required to be kept in the Court’s mind before deciding on whether the offending advertisement is disparaging or is a mere puffery:

a) While deciding the issue of disparagement the court has to apply the reasonable man test, that is, whether a reasonable man would take the claim being made as being a serious claim or not.

b) The impugned advertisement campaign has to be looked into with a broader perspective to decide whether a serious comparison is made by the alleged infringer.

c) The comparison in the nature of “Better or Best” based on truthful claims is permitted, but comparison in the nature of “Good v. Bad” is not.

d) The impact and impression of the impugned advertisements has to be examined and if it gives out an impression that the rival product has a defect or demerit (which is not true) then such impression would make it disparaging.

e) The comparison between rival products is allowed only to the extent of “Puff” and honest trade practice. Any malicious or deliberate depiction of rival product in a bad taste is not permitted.

f) Generic disparagement of a rival product without specifically identifying or pin pointing the rival product is equally objectionable, clever advertising can indeed hit a rival product without specifically referring to it. No one can disparage a class or genre of a product within which a complaining plaintiff falls and raise a defence that the plaintiff has not been specifically identified.

g) The comparative advertising campaign should be ‘comparison positive’. If the advertisements contain valuable information for the consumers and can promote healthy competition in the market, the courts should be resilient and allow the negative derivatives of such comparison. This is because the final outcome is positive. However if it can be gauged that the message broadly demonstrates slanderous or indiscriminate negative comparison or insinuation, Courts should not be slow in ensuring that such messages do not spread.

The Court concluded that the above case squarely applies to the present dispute because the comparison made by the defendant/respondent is specifically pointing towards deficiency of the other rival products including the petitioner’s product. Moreover, the claim made by the defendant/respondent with regard to number of ingredients of the rival product is false and misleading.

It was further noted that when the defendant highlights that other Chyawanprash contain only 42 ingredients, which is an untrue statement, it cannot claim right to free speech as the same is not allowed to communicate untruthful facts about the other rival products.

The Court was of the view that in the present case, direct comparison of number of ingredients between the two products is not in the realm of grey area as it points towards the very composition and data of the generic product available in the market. Furthermore, the comparison with a number of ingredients, that is, 42 ingredients, is malicious and slanderous as the product cannot be complete with 42 ingredients and the product of Chyawanprash in the market are all having at least 47 ingredients as per the Drugs and Cosmetics Act, 1940. Ergo, a comparison with a fictitious number that is lesser than the minimum requirement, insinuates that those products are not in compliance with the Drugs and Cosmetics Act, 1940. Such a comparison is slanderous and mischievous, and accordingly, amounts to disparagement.

However, keeping in mind the various precedents cited by both the parties, and on suggestions that had fallen from the Bar, a modified version of the video advertisement was allowed on the following conditions:

a) The bottle that is shown in the 6th second of the advertisement shall only have the printed words “CHYAWANPRASH” and no other word;

b) The reference to the words “42 nahi” in the 29th to 31st second of advertisement shall also be removed.

[Dabur India Ltd. v. Shree Baidyanath Ayurved Bhawan (P) Ltd., 2022 SCC OnLine Cal 234, decided on 08-02-2022]


For the Plaintiff/Petitioner: Mr Sudipta Sarkar, Senior Advocate, Mr Jawahar Lal, Mr Debnath Ghosh, Mr Anuj Garg, Mr Sudhakar Prasad and Mr Pradipta Bose

For the Defendant/Respondent: Mr Manish Biala, Ms Amrita Panja Moulick, Mr Ashutosh Upadhaya and Mr Devesh Ratan


Suchita Shukla, Editorial Assistant has reported this brief.

Legal RoundUpSupreme Court Roundups

“Merit is not solely of one‘s own making. The rhetoric surrounding merit obscures the way in which family, schooling, fortune and a gift of talents that the society currently values aids in one‘s advancement.”

Neil Aurelio Nunes v. Union of India, 2022 SCC OnLine SC 75


STORY OF THE MONTH


“Reservation is not at odds with merit”; Here’s why SC upheld OBC reservation in NEET PG and UG Admissions in AIQ quota

In a detailed judgment, the bench of Dr. DY Chandrachud and AS Bopanna, JJ has upheld the Constitutional validity of the reservation for OBC candidates in the AIQ seats for PG and UG  medical and dental courses and noticed that while an open competitive exam may ensure formal equality where everyone has an equal opportunity to participate, however, widespread inequalities in the availability of and access to educational facilities will result in the deprivation of certain classes of people who would be unable to effectively compete in such a system.

Read more…


UNMISSABLE STORIES


COVID-19/Omicron surge yet again forces Supreme Court to extend period of limitation for filing of cases

After the Supreme Court Advocates-on-Record Association approached the Court in light of the spread of Omicron, the new variant of the COVID-19 and the drastic surge in the number of COVID cases across the country, the 3-judge bench of NV Ramana, CJ and L. Nageswara Rao and Surya Kant, JJ restored the order dated 23.03.2020 and directed that the period from 15.03.2020 till 28.02.2022 shall stand excluded for the purposes of limitation as may be prescribed under any general or special laws in respect of all judicial or quasi judicial proceedings.

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PM Modi Security Lapse: “War of words no solution”; SC appoints Committee headed by Justice Indu Malhotra to look into the matter

After a massive security lapse that left Prime Minister Narendra Modi stuck on a highway in Punjab for 20 minutes on January 5, 2022, the 3-judge bench of NV Ramana, CJ and Surya Kant and Hima Kohli, JJ has formed a committee to be chaired by Justice Indu Malhotra, former Supreme Court Judge.

Read more…

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NEET 2021-22: Supreme Court allows Counselling with 27% Quota for OBCs and 10% Quota for EWS in All India Quota

 Considering the urgent need to commence the process of Counselling, the bench of Dr. DY Chandrachud* and AS Bopanna, JJ, has directed that counselling on the basis of NEET-PG 2021 and NEET- UG 2021 shall be conducted by giving effect to the reservation as provided by the notice dated 29 July 2021, including the 27 per cent reservation for the OBC category and 10 per cent reservation for EWS category in the All India Quota seats.

Read more…

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Suspension of 12 Maharashtra BJP MLAs for one year “grossly illegal”; worse than expulsion, disqualification or resignation

In a big relief to the 12 BJP MLAs who were suspended by the Maharashtra Legislative Assembly, by resolution dated 05.07.2021, for a period of 1 year due to “indisciplined and unbecoming behavior resulting in maligning the dignity of the House”, the 3-judge bench of AM Khanwilkar*, Dinesh Maheshwari and CT Ravikumar, JJ has held that the said resolution is unconstitutional, grossly illegal and irrational to the extent of period of suspension beyond the remainder of the concerned (ongoing) Session.

Read more…

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“Can’t allow Devas and its shareholders to reap the benefits of their fraudulent action”; SC upholds NCLAT’s order to wind up Devas  

“If the seeds of the commercial relationship between Antrix and Devas were a product of fraud perpetrated by Devas, every part of the plant that grew out of those seeds, such as the Agreement, the disputes, arbitral awards etc., are all infected with the poison of fraud.”

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Arcelor Mittal Nippon Steel India Limited to pay the purchase tax of Rs. 480 Crores as SC sets aside Gujarat HC verdict

In a major blow to Essar Steel Limited, now Arcelor Mittal Nippon Steel India Limited), the bench of MR Shah* and Sanjiv Khanna, JJ has set aside the Gujarat High Court verdict wherein it was held that Essar was entitled to the exemption from payment of purchase tax as per the Notification dated 05.03.1992, which was issued under Section 49(2) of the Gujarat Sales Tax Act, 1969. As a result Essar will now have to pay the purchase tax of Rs.480.99 crores.

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Dowry Death| Woman meting out cruelty to another woman deserves no leniency. Mother-in-law must protect daughter-in-law, not harass her: SC

“Being a lady, the appellant, who was the mother-in-law, ought to have been more sensitive vis-à-vis her daughter-in-law.”

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Can Demand of Money for Construction of a House be Treated as a Dowry Demand? SC answers in a 2002 case where a 5-months pregnant woman set herself on fire

“A push in the right direction is required to accomplish the task of eradicating this evil which has become deeply entrenched in our society.”

Read more…

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Pension is not a bounty; Lack of financial resources no excuse for taking away vested rights by way of retrospective amendments

The bench of Ajay Rastogi and Abhay S. Oka, JJ has held that an amendment having retrospective operation which has the effect of taking away the benefit already available to the employee under the existing rule indeed would divest the employee from his vested or accrued rights and that being so, it would be held to be violative of the rights guaranteed under Articles 14 and 16 of the Constitution.

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Cal HC had no jurisdiction to quash CAT Principle Bench’s transfer order in Alapan Bandhopadhyay Case, holds SC, based on this Constitution Bench Law holding ground since 1997

The 2-judge bench of AM Khanwilkar and CT Ravikumar, JJ has reiterated the position laid down by the Constitution Bench in L. Chandra Kumar v. Union of India, (1997) 3 SCC 261, that any decision of such a Tribunal, including the one passed under Section 25 of the Administrative Tribunals Act, 1985 could be subjected to scrutiny only before a Division Bench of a High Court within whose jurisdiction the Tribunal concerned falls.

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EXPLAINERS



MORE STORIES


“Not a case of lack of promotional opportunities”; No financial upgradation to employee refusing regular promotion for personal reasons

The bench of R. Subhash Reddy and Hrishikesh Roy*, JJ has held that if a regular promotion is offered but is refused by the employee before becoming entitled to a financial upgradation, she/he shall not be entitled to financial upgradation only because she/he has suffered stagnation.

Read more…

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Life cannot be breathed into the stillborn charge memorandum; SC holds where prior approval is the rule the defect cannot be cured by post-facto approval

“What is non-existent in the eye of the law cannot be revived retrospectively.”

Read more…

Cheque gets deposited to the account of account holder with strikingly similar name. Bank blames customer. Read why SC was “surprised” at NCDRC’s ruling

In an interesting case where one SBI account holder was left with a balance of Rs. 59/- only in his account due to the existence of another bank account with strikingly similar name in the same branch, the bench of Sanjiv Khanna and Bela M. Trivedi*, JJ has set aside the “highly erroneous” impugned order passed by the National Consumer Disputes Redressal Commission solely relying upon the suo-moto report called for from SBI during the pendency of the revision application.

Read more…

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Reservation in promotion: The 6 issues settled by Supreme Court on collection of quantifiable data on inadequacy of representation

The 3-judge bench of L. Nageswara Rao*, Sanjiv Khanna and BR Gavai has answered 6 crucial questions in relation to quantifiable data showing inadequacy of representation in promotional posts.

Read more…

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Delinquent employee doesn’t have an absolute right to be represented in departmental proceedings by the agent of his choice

In a case where the Rajasthan High Court had permitted the respondent employee who is facing disciplinary proceedings to represent through ex-employee of the Bank, the bench of MR Shah* and Sanjiv Khanna, JJ has interpreted Regulation 44 of the Rajasthan Marudhara Gramin Bank (Officers and Employees) Service Regulation, 2010 read with clause 8.2 of the Handbook Procedure to hold that the delinquent employee has no absolute right to avail the services by ex-employee of the Bank as his DR in the departmental proceedings.

Read more…

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COVID-19| A Biological Weapon? Most misconceived! SC rules it is for the elected Government to take necessary action if any

While addressing a petition making bizarre claim that virgin Coconut Oil can dissolve Covid-19 virus, the Division Bench of Sanjay Kishan Kaul and M.M. Sundresh, JJ., held that it cannot let every person who believes that he has some solution to the virus, to come up in a petition under Article 32 of the Constitution.

Read more…

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High Court’s Revisional jurisdiction under Section 401 Cr.P.C re power to reverse acquittal. SC answers important questions

“Though the High Court has revisional power to examine whether there is manifest error of law or procedure etc., however, after giving its own findings on the findings recorded by the court acquitting the accused and after setting aside the order of acquittal, the High Court has to remit the matter to the trial Court and/or the first appellate Court, as the case may be.”

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P&H HC directs State to provide sports quota of 3% in Government Medical/Dental Colleges instead of 1% provided in policy decision. Such mandamus impermissible, holds SC

Explaining the scope of writ jurisdiction, the bench of MR Shah* and BV Nagarathna, JJ has held that the State Government’s action taking a policy decision to prescribe a particular percentage of reservation/quota for a particular category of persons, cannot be interfered with by issuance of a writ of mandamus, directing the State Government to provide for a particular percentage of reservation for a particular category of persons other than what has been provided in the policy decision taken by the State Government.

Read more…

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Person with 54% disability pinned to the ground, throttled by neck and consequently killed by strangulation; SC cancels HC order granting bail to the accused

Finding the order of the High Court cryptic and casual, de hors coherent reasoning, the Bench invoked the latin maxim “cessante ratione legis cessat ipsa lex” to hold that “reason is the soul of the law, and when the reason of any particular law ceases, so does the law itself”.

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Civil Court has no jurisdiction in dispute relating to property governed by the Haryana (Control of Rent & Eviction) Act, 1973: SC

The Court was deciding the dispute relating to suit property situated within the municipal limits of Kaithal which is governed by the Haryana (Control of Rent & Eviction) Act, 1973.

Read more…

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Traffic blockage due to agitation, failure to deliver consignment within validity period of e-way bill; SC imposes cost of Rs. 59000 on Sales Tax Officer for illegally imposing penalty

“When the undeniable facts, including the traffic blockage due to agitation, are taken into consideration, the State alone remains responsible for not providing smooth passage of traffic.”

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Whether adoption of parent Government Resolution by an undertaking leads to automatic adoption of subsequent modifying resolutions?

“There are limitations or qualifications to the applicability of the doctrine of ‘equal pay for equal work’.”

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State ‘exclusivity’ for disallowance of certain fee, charge, etc. is to be viewed from the nature, not the number of undertakings on which the levy is imposed

The Division Bench of R. Subhash Reddy* and Hrishikesh Roy, JJ., held that to determine State Monopoly for disallowance of certain fee, charge, etc. in the case of State Government Undertakings the aspect of ‘exclusivity’ has to be viewed from the nature of undertaking on which levy is imposed and not on the number of undertakings on which the levy is imposed.

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Failure to provide occupancy certificate a deficiency in service under the Consumer Protection Act and also a continuing wrong

The bench of Dr. DY Chandrachud* and AS Bopanna, JJ has held that failure on the part of the builder to provide occupancy certificate is a continuing breach under the Maharashtra Ownership Flats (Regulation of the Promotion of Construction, Sale, Management and Transfer) Act 1963 and amounts to a continuing wrong.

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Whether charitable education institutions exempted from levy of electricity duty under Maharashtra Electricity Act, 2016? Supreme Court interprets

The Division Bench comprising of M. R. Shah* and Sanjiv Khanna, JJ., reversed the impugned order of the High Court whereby the High Court had held that education institutions run by charitable societies are exempted from payment of electricity duty.

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Non-consideration for subsequent preference post after being declared ineligible for first post preference: Is it unjust? Supreme Court answers

While addressing the issue as to whether a candidate is entitled to claim appointment on a subsequent post in his preference list after having being considered for his first preference and being declared not suitable for the said post due to non-fulfilment of physical requirements, the Division Bench of Dr Dhananjaya Y Chandrachud and A.S. Bopanna*, JJ., replied in negative.

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“Democratic interests cannot be judicially aborted to preserve unfettered freedom to conduct business, of the few”; Govt. decision to ban MTTs in PPE products ensures adequate PPE in India: SC

“This Court must be circumspect that the rights and freedoms guaranteed under the Constitution do not become a weapon in the arsenal of private businesses to disable regulation enacted in the public interest.”

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Order de hors reasoning cannot result in grant of bail! SC holds informant has a right to assail bail orders bereft of reasons before a higher forum

“It would be only a non speaking order which is an instance of violation of principles of natural justice. In such a case the prosecution or the informant has a right to assail the order before a higher forum.”

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Scrap picker beaten to death; incident recorded in CCTV: State failed to protect victim’s rights by not challenging Guj HC’s order releasing accused on bail; SC cancels bail

In a case where a scrap picker was beaten to death and the Gujarat High Court had released one of the accused on bail despite the entire incident been recorded in the CCTV footages and the mobile phone, the bench of MR Shah and BV Nagarathna, JJ has cancelled the bail and has observed that by not filing the appeals by the State against the impugned judgments and orders releasing the accused on bail in such a serious matter, the State has failed to protect the rights of the victim.

Read more…

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Gift deed by an old illiterate woman: SC approves not legalistic but holistic approach by lower courts to determine validity of deed. HC’s verdict set aside

In an issue relating to the alleged gift deed by an old illiterate woman, the bench of MR Shah and Sanjiv Khanna*, JJ has held that when a person obtains any benefit from another, the court would call upon the person who wishes to maintain the right to gift to discharge the burden of proving that he exerted no influence for the purpose of obtaining the document.

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No more uncertainty over fixation of percentage of reservation for OBC and SC/ST candidates; SC interprets Section 3 Second Proviso of CEI Act, 2006

The bench of L. Nageswara Rao and Hima Kohli, JJ has held that the formulae for fixing the percentage of reservation for the SC and ST candidates and for determining the percentage of seats to be reserved for OBC candidates under the second proviso of Section 3 of the Central Educational Institutions (Reservation in Admission) Act, 2006, ought to be gathered from the same source and any other interpretation would lead to uncertainty.

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3-year old raped and strangulated to death; Read why Supreme Court commuted Death Sentence to life imprisonment

The Fast Track Court, Raigarh had convicted the appellant for the offences punishable under Sections 363, 366, 376(2)(i), 377, 201, 302 read with Section 376A of the Penal Code, 1860 and Section 6 of the POCSO Act, 2012 and vide the same judgment and order, the appellant was sentenced to death for the offence punishable under Section 302 of the IPC. Subsequently, vide the impugned judgment and order, the High Court had confirmed the death penalty.

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Mere recommendation of the SP at the initial stage not sufficient to claim a right for promotion: SC explains Punjab Police Rules, 1934

In a case where a Constable’s name was recommended by the Superintendent of Police but the same was dropped down by the Inspector General of Police for promotion under the 10% quota of outstanding performance for inclusion in the B-I List for promotion to the post of Head Constable in the year 2004, the bench of KM Joseph and PS Narsimha, JJ has held that mere recommendation of the SP at the initial stage is not sufficient to claim a right for promotion.

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No scaling down of sentence to 10 years as per NDPS Act for man sentenced to 26 years in prison by Mauritius SC for being in possession of over 150 gms of heroin

In a case where a man was arrested in Mauritius after being found to be in possession of 152.8 grams of heroin and was sentenced to 26 years in prison by the Supreme Court of Mauritius, the bench of L. Nageswara Rao and BR Gavai has upheld the Central Government’s decision rejecting the request for scaling down the sentence from 26 years to 10 years and has found it to be in accordance with the provisions of the Repatriation of Prisoners Act, 2003 and the agreement entered into between India and Mauritius.

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No Pensionary Benefits To WALMI Employees; Employees Of Autonomous Bodies Can’t Claim Benefits On A Par With Government Employees As Matter Of Right

“… the employees of the autonomous bodies cannot claim, as a matter of right, the same service benefits on par with the Government employees.”

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Whether the term “school children” includes university students while interpreting Government Memo exempting buses carrying school children from Passengers Tax? SC clarifies

While holding that the term “school children” will include college and university as well while interpreting government memo exempting passengers tax in respect of Stage Carriage (buses) owned by educational institution and used for the transportation of children to and from such institutions, the Division Bench of Dinesh Maheshwari and Vikram Nath, JJ., remarked,

“It gets perforce reiterated that the broad expression “children”, obviously, refers to the students taking instructions in educational institutions, irrespective of their class or standard or level.”

Read more…


CASES REPORTED IN SCC


2021 SCC Vol. 9 Part 1

Ranging from Arbitration, Service Law to Family Law, this Volume 9 Part 1 brings in some very carefully and expertly analysed Judgments

2021 SCC Vol. 9 Part 2

In this part read a very interesting decision expertly analysed by our editors. Supreme Court ruled that the trustees are required to

SCC Snippets

Are Clients Or Courts Bound By Lawyer’s Statements Or Admissions As To Matters Of Law Or Legal Conclusions?


Case BriefsHigh Courts

Delhi High Court: Explaining the significance of a trademark, Asha Menon, J., observed that,

When people are satisfied with the products supplied by a manufacturer or service provider, they buy them on the basis of the trade mark and over time it becomes popular and well known. Thus, the use of a similar or identical trademark by a competitor in the same product would lead unwary customers to believe that it originates from the same source.

Present suit was filed to seek a perpetual and mandatory injunction restraining the defendants from infringement of plaintiff’s registered trademarks, passing off, unfair practices, etc.

In the instant matter, the plaintiff claimed to be a part of the “Baazi Group” and a leading and pioneering name in the Indian gaming industry. The said group has attained worldwide popularity and reputation.

Further, the plaintiff claimed that it had honestly and originally adopted “Baazi” as its trademark, registering several variations between 2014 and 2020 which were still valid, and had become the trading identity, corporate name and domain names of the “Baazi Group”.

Plaintiff even filed the registration certificates.

Senior Counsel, Chander M. Lall submitted that being the registered proprietor of the trademarks, Baazi, Baazi Games, PokerBaazi, RummyBaazi, BalleBaazi, etc., the plaintiff had the exclusive right to use the said trademarks in relation to the goods and services it was providing.

Defendant 1 had dishonestly started using “Baazi” in respect of the services that they were providing and thus passing off their services as those of the plaintiff.

Further, it was argued that in view of the success of the plaintiff’s venture defendant 2 began his own business called “WinZo Games” in India. Hence, defendant 1 was the competitor of the plaintiff.

Further, it was contended that under Section 29(3) of the Trade Marks Act, 1999, in view of the identity of the registered trademark of the plaintiff and that copied by defendants, the Court had to presume that confusion would be caused to the public as also within the trade circle. Therefore, the Court had to restrain the defendants from using the word “Baazi” in respect of the services they were providing.

Analysis, Law and Discussion

High Court noted that the plaintiff was the registered proprietor of the trademarked word “BAAZI” under class 41, class 9 and the trademarked word “Baazi Games” under class 28 and other trademarks, both words, devices and domain names in the same classes of gaming services.

Further, not just the combined words such as “POKER BAAZI”, “RUMMY BAAZI”, “BALLE BAAZI” were registered in the name of the plaintiff, in fact the word “BAAZI” was also registered.

On the other hand, it was noted that the defendants did not claim that they too have registered trademarks in their names with the word “BAAZI”, in fact, they did not insist that they were not even using “BAAZI” in the trademark sense. Though, their argument was that righ to use trademarks under Section 28 would be available only if the trademarks were validly registered and which Baazi had not been since it was only a descriptive word.

The word “Baazi” may be used in Hindi/Urdu to mean a test of skill or strength in a game. It may indicate wagering or betting. As observed by Lord Simon , Lord Chancellor in Yorkshire Copperworks Limited , the more apt is a word to describe the goods of a manufacturer the less apt would it be to distinguish them, but surely “Baazi” is not a word apt to describe gaming or wagering services online or as a mobile App. Thus it is a clever and creative use of a common word by the plaintiff for its services. There is nothing on record to indicate that the word “Baazi” is commonly used in the industry. 

The Bench observed that prima facie the plaintiff had disclosed a case for protection of its rights as a registered proprietor which is assured to it under Section 28 of the T.M. Act. Even under Section 29 of the T.M. Act, the plaintiff disclosed a case.

The Court elaborated stating that, even the conjunctive use of “Baazi” with “WinZo” is similar to the use by the plaintiff of “Baazi” with “Poker”, “Rummy”, “Balle”, etc. The services provided are identical and therefore, in the light of such identity under Section 29(2)(c) read with Section 29(3) of the T.M. Act, the court will necessarily presume that confusion would arise in the mind of a player as to the origin of the services and accordingly, injunction would have to be issued.

Delay and Acquiescence

Bench referred to the Supreme Court’s decision in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90,

“5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.”

High Court remarked that if the adoption of the word “Baazi” appeared to be dishonest and intended to take unfair advantage of the reputation of or the distinctive use of the word by the plaintiff, the delay would not come in the way.

Another significant point that was noted was that even after filing the present suit, the defendants copied the word “Team Baazi” from the website of the plaintiff.

Interest of the Consumers

Bench proceeded to make another significant observation that the interests of the consumers cannot be overlooked and would need to be protected, as it is for the benefit of consumers that a trademark is used by a manufacturer or service provider to distinguish his products from those of competitors, so that on the basis of the quality provided the purchaser may make an informed and considered selection of the products in the market.

In the instant case, the online players may be led into believing that “WinZo Baazi” was another service offered by the plaintiff, therefore in order to protect such unwary customers, it would be necessary to protect the plaintiff’s rights to its registered trademark.

Bench held that the defence of delay and acquiescence are defences in equity and in the present case, the defendants do not appear to be fair and honest in adopting “Baazi” along with their registered trademark “WinZo”.

The manner in which “Baazi” was written and projected, and used in a mobile App in 2021, and the adoption of “Team Baazi”, while the suit itself was pending, reinforced the plaintiff’s grievance that the defendants were trying to pass off their services as probably originating from the plaintiff.

Hence, the plaintiff disclosed a prima facie case for interim injunction for infringement of trademark as well as for passing off.

“…the continued use of the word “Baazi” by the defendant 1 would impact the reputation and goodwill of the plaintiff, which clearly cannot be compensated in terms of money.”

 Bench found no reason from the defendants for the adoption of the word “Baazi” except to claim that it is a descriptive word.

After all, the trademark of the defendants is WinZo. Where was the need to borrow the word used by the plaintiff along with its registered trademark, if it was not for benefitting from the goodwill of the plaintiff‟s trademark? There are several words that could have been used to describe the gaming services and App of the defendant instead of “Baazi” and which are indicative of gaming /wagering/competing.

User of a similar word by a competitor coupled with dishonest intention and bad faith would suffice to restrain such user and misuser, to do equitable justice to the plaintiff.

High Court allowed the application and restraining the defendants from using or attempting to use the plaintiff’s well-known brand and registered mark “Baazi”, “Baazi Games”, “PokerBaazi”, “BalleBaazi”, et al., or any other mark or trade indicia, which is confusingly similar to the Plaintiff‟s said trademarks, in any form or manner, whatsoever, including as Winzo Baazi / WinzoBaazi, in respect to any product and service for which the plaintiff has obtained registration including inter alia gaming services, which use amounts to infringement or passing off its products/ services as that of the plaintiff.

Lastly, the defendants were directed to remove/delete/omit or withdraw any and all references or use of the plaintiff’s well-known brand and registered mark “Baazi” in any form which amounts to a violation of the plaintiff’s intellectual property rights. [Moonshine Technology (P) Ltd. v. Tictok Skill Games (P) Ltd., 2022 SCC OnLine Del 296, decided on 31-1-2022]


Advocates before the Court:

For the plaintiff:

Mr. Chander M. Lall, Senior Advocate with Ms. Ananya Chug, Mr. Subhash Bhutoria & Mr. Amit Panigrahi, Advocates

For the defendants:

Mr. Abhishek Malhotra, Ms. Shilpa Gamnani and Ms. Sanya Sehgal Advocates

Case BriefsSupreme Court

Supreme Court: In a Trademark infringement case, the bench of L. Nageswara Rao, BR Gavai* and BV Nagarathna, JJ has ordered in favour of Renaissance Hotel Holdings and has held that the words “RENAISSANCE” and “SAI RENAISSANCE” are phonetically as well as visually similar. 

Factual Background

The Court was deciding the case initiated by the Renaissance Hotel Holdings Inc., a company incorporated under the laws of the State of Delaware, United States of America, which is the holder and proprietor of the trade mark and service mark “RENAISSANCE” in relation to hotel, restaurant, catering, bar, cocktail lounge, fitness club, spa services, etc. The Company discovered that the respondents were operating one hotel in Bangalore and another one in Puttaparthi under the name “SAI RENAISSANCE”, which wholly incorporates the well-known trade mark and service mark “RENAISSANCE”.

The appellant submitted that the trade mark “RENAISSANCE” has been used by it for its hospitality business throughout the world since the year 1981 and that it is one of the world’s largest and leading chains of hotel and has been using the trade mark “RENAISSANCE” in India since 1990.

It was argued that the respondents were copying the trade mark “RENAISSANCE”, its stylized representation, signage and business cards and leaflets in such a manner so as to suggest an affiliation, association, nexus or connection with the business of the appellant.

The trial court restrained the respondents

  • from using the trade mark “SAI RENAISSANCE” or any other trade mark which incorporates the appellant-plaintiff’s trade mark “RENAISSANCE” or is deceptively similar.
  • from opening, operating, managing, franchising, licensing, dealing directly or indirectly in hotels, restaurant, or hospitality services of any manner under the trade mark or service mark “RENAISSANCE” or any deceptively similar mark “RENAISSANCE” or any deceptively similar mark including on the internet as a domain name or in any manner so as to pass off their services as those of or concocted with the appellanf.

The trial court, however, rejected the claim of the appellant for damages.

The Karnataka High Court, however, held that no evidence was produced by the appellant to show that the respondents were taking unfair advantage of its trade mark or that the use of the word   “SAI RENAISSANCE” was detrimental to the distinctive character or reputation of the appellant’s trade mark.

Analysis

The Court noticed that the appellant’s trademark “RENAISSANCE” is registered under Class 16 and Class 42, which deals with hotels and hotel related services and goods. The mark and the business name “SAI RENAISSANCE”, which was being used by the respondents, was also in relation to Class 16 and Class 42.   The Court also observed that that the words “RENAISSANCE” and “SAI RENAISSANCE” are phonetically as well as visually similar.

Hence, the present case stood squarely covered by the provisions of Section 29(2)(c) read with sub-section (3) of Section 29 of the the Trade Marks Act, 1999. The present case also stood covered under sub-sections (5) and (9) of Section 29 of the said Act.

The Court noticed that the High Court erred in taking into consideration clause (c) of sub-section (4) of Section 29 of the said Act in isolation without noticing other parts of the said sub-section (4) of Section 29 of the said Act and the import thereof. The High Court has failed to take into consideration that in order to avail the benefit of Section 30 of the said Act, apart from establishing that the use of the impugned trademark was not such as to take unfair advantage of or is detrimental to the distinctive character or repute of the trade mark, it is also necessary to establish that such a use is in accordance with the honest practices in industrial or commercial matters.

Explaining the rule of interpretation, the Court said,

“It is thus trite law that while interpreting the provisions of a statute, it is necessary that the textual interpretation should be matched with the contextual one.  The Act must be looked at as a whole and it must be discovered what each section, each clause, each phrase and each word is meant and designed to say as to fit into the scheme of the entire Act. No part of a statute and no word of a statute can be construed in isolation.  Statutes have to be construed so that every word has a place and everything is in its place.”

As per Section 30(1), for availing the benefit of Section 30 of the said Act, it is required that the twin conditions, i.e., the use of the impugned trade mark being in accordance with the honest practices in industrial or commercial matters, and that such a use is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark, are required to be fulfilled.  In sub-section (1) of Section 30 of the said Act, after clause (a), the word used is ‘and’, like the one used in sub-section (4) of Section 29 of the said Act, in contradistinction to the word ‘or’ used in sub-section (2) of Section 29 of the said Act. The High Court has referred only to the condition stipulated in clause (b) of sub-section (1) of Section 30 of the said Act ignoring the fact that, to get the benefit of sub-section (1) of Section 30 of the said Act, both the conditions had to be fulfilled.

“Unless it is established that such a use is in accordance with the honest practices in industrial or commercial matters, and is not to take unfair advantage or is not detrimental to the distinctive character or repute of the trade mark, one could not get benefit under Section 30(1) of the said Act.”

Therefore, it was noticed that by picking up a part of the provisions in sub¬section (4) of Section 29 of the said Act and a part of the provision in sub-section (1) of Section 30 of the said Act and giving it a textual meaning without considering the context in which the said provisions have to be construed, was not permissible.

Hence, it was held that the High Court was not justified in interfering with the well-reasoned order of the trial court.

[Renaissance Hotel Holdings Inc. v. B. Vijaya Sai, 2022 SCC OnLine SC 61, decided on 19.01.2022]


*Judgment by: Justice BR Gavai


Counsels:

For appellant: Senior Advocate K.V. Viswanathan

For respondent: Advocate B.C. Sitarama Rao

Case BriefsHigh Courts

Bombay High Court: G.S. Patel, J., granted ‘conditional’ liberty to Phonepe (P) Ltd. to withdraw its suit and an interim application filed against the use of mark POSTPE by Resilient Innovations (P) Ltd. However, before granting leave to withdraw, the Court passed a reasoned order and decided not to delete those reasons “only because an application for withdrawal is being made at this very late stage”.
Present application sought the protection of the plaintiff’s mark PHONEPE and competing mark by the defendant was POSTPE.
It was stated that the defendant’s mark was used in respect of what was said to be the equivalent of a digital credit card rather than the traditional UPI-based debit card system used by the plaintiff.
It was noted that plaintiff attempted to claim some sort of exclusivity or distinctiveness in a part of its mark i.e. “PE”.
Court disagreed with the Senior Advocate Dr Saraf with his stands that i.e. taking PHONEPE as a whole while simultaneously claiming similarities in the use of PE are not mutually contradictory or not inconsistent.
Further, the Bench elaborated stating that plaintiff has no registration of the word mark PE per se.
Plaintiff has a label or device mark with the Devanagari word PE. It claimed that ‘Phone’ is not unique or distinctive, and that the word PE is distinctive, and is a central, leading and memorable feature. It then claimed that the Defendants’ use of PE is an infringement. But if the law is that the ‘mark must be taken as a whole’, then one must look at PHONEPE and set it against POSTPE. Then one would test for visual, structural and phonetic similarity. But except for one line in one paragraph, the plaint only draws a comparison between the rival uses of PE, clearly claiming exclusivity over that expression disconnected from the ‘mark taken as a whole’.
High Court added to its analysis, that it is one thing to say that the defendant’s mark, taken as a whole is too close to the plaintiff’s mark, also taken as a whole. But it is quite another to take an element of each, which cannot possibly be the subject of exclusivity, and then claim injunctions on that basis.
Dr Saraf, Senior Advocate sought leave to withdraw the suit and the IA with liberty to file a fresh suit restricting the claim to the mark PHONEPE taken as a whole.
Bench granted the liberty conditionally, i.e. not only keeping all contentions open on behalf of the defendants but also giving the defendants liberty to rely on the present plaint and the instant order in opposition to any fresh suit or IA inter alia to contend that the plaintiff has taken different stands at different time and in different courts. [Phonepe Pvt Ltd. v. Resilient Innovations Pvt. Ltd., Leave Petition (L) No. 24140 of 2021, decided on 22-10-2021]

Advocates before the Court:
Dr Birendra Saraf, Senior Advocate, with Hiren Kamod, i/b J Sagar Associates, for the Plaintiffs.
Mr Viraag Tulzapurkar, Senior Advocate, with Nishad Nadkani, Shailendra Bhandare, Mohit Goel, Siddhant Goel, Deepankar Mishra, Aditya Goel and Khushboo Jhunjhuwala, i/b M/s. Khaitan & Co, for the Defendants.
Case BriefsHigh Courts

“Principles laid down for Courts to deal with injunction applications, in a pending suit, seeking relief against passing off”

 Karnataka High Court:  A  Division bench of Aravind Kumar and Pradeep Kumar Yerur dismissed the appeal and affirmed the order dated 22-06-2021 passed in O.S.No.177/2021 by LXXXIV Additional City Civil and Sessions Judge (CCH-85) (Commercial Court), Bengaluru.

 The facts of the case are such that the plaintiffs i.e. ITC Limited launched itself into the manufacturing and sales of ‘instant noodles’ in September 2010, under the brand name, ‘Sunfeast YiPPee!’ having different variant of noodles, including ‘Magic Masala’, ‘Mood Masala’, ’Classic Masala’, to name a few. The Plaintiff claimed protection from alleged misrepresentation and copyright infringement in respect of the ‘overall visual appearance’ (wrapper) of ‘Magic Masala’ variant of Sunfeast Yippee noodles by the defendants i.e. CG (India) Private Limited who manufactures and sells in the instant noodles market under the brand name ‘WAI WAI’ and the product under challenge is one of its white-noodles product, ‘WAI WAI Xpress Noodles Majedar Masala”. Plaintiff claims that the action of the defendant has caused damage to its goodwill and reputation in the market and as such defendant has to be restrained from using same and thus the plaintiff has sued defendant and it bases its cause of action in passing off and copyright infringement.

Counsel for the appellant- plaintiff Mr. K.G Raghavan submitted that that extent of similarity is sufficient to ‘deceive’ that class of persons who are likely to buy plaintiff’s goods. It was further submitted that the court below has fallen into error on a matter of principle in so far as it has laid emphasis on the ‘dissimilarities’ between the competing wrappers, instead of estimating the effect of the similarities.

Counsel for the respondent- defendant Mr. Dhyan Chinappa submitted that on an overall consideration of the competing wrappers, after ignoring the descriptive marks and marks common to trade, it is the ‘brand names’ that is really distinctive of the plaintiff and since the brand names are completely dissimilar; there is no likelihood of confusion. If the plaintiff’s case is that the colour scheme has been copied to the extent that it may lead to confusion, the plaintiff will have to show that the ‘orange-red’ colour scheme has acquired such a high level of distinctiveness in the market, that the ordinary purchaser would ignore all other features and rely solely on the colour scheme to identify the products of the plaintiff.

Concept of “passing off”

One of the cause of action upon which the plaintiff relied was passing-off and to establish an arguable case in passing-off action, the plaintiff must show a misrepresentation express or implied that the defendants wrapper is connected with or may be associated with the plaintiffs’ business and that as a consequence damage is likely to result to the plaintiffs.  In passing-off, following points are under consideration:

  1. Distinctiveness of the plaintiffs mark
  2. Deceptive Similarity

 The entire basis of an action for the tort of passing-off lies in the making of a misrepresentation by the defendant which is calculated to cause damage to the business or goodwill of the claimant. The design that a typical form of misrepresentation generally takes is for the defendant to adopt that feature of the plaintiff’s mark which the ordinary purchaser is most likely to associate or use to identify the goods as that of a plaintiff.

Concept of “distinctiveness”

Professor Wadlow claims that term ‘distinctive’ has a meaning of its own, in the legal sense, which does not coincide with the ordinary use of the term in common parlance. In its legal sense, a name, mark or get-up can be said to be distinctive ‘if it denotes the goods of the claimant to the exclusion of all others’. What plaintiff claims to be distinctive may be ‘distinctive in fact’ but the plaintiff cannot have the final say on what is distinctive in law. The concept of ‘distinctiveness’, can be concluded as the features relevant for our analysis, does not include all features (that is, overall get up) as claimed by the plaintiff, but it is those distinguishing features which perform the function of a trade mark – the function of a trade mark being that of ‘source identification’.

The Court observed that even a bare look at the wrapper of the Magic Masala brand would indicate that ‘Yippee’ written in yellow color and relatively, the largest font (in both 12 Rs packs and 48 Rs pack) stands out in contrast to the ‘Sunfeast’ logo which is written in red font against a red background; and with respect to Magic Masala, which is written in dark blue color in a much smaller font size against an orange background. ‘Yellow’ being a light as well as bright colour , coupled with the fact that Yippee bears a stylised script and large font, appears to strike itself to the sensory organs quite easily purely on first impression as well.

The Court further observed that the features which can be said to be ‘distinctive’ in law in the sense that the relevant public would rely on such features to associate the goods as that of the plaintiff or to identify the goods as that of plaintiff or to distinguish the goods of the plaintiff from others would be, essentially, the brand ‘Sunfeast Yippee’ and to a lesser extent, the sub-brand which indicates the various flavours – in this case, ‘Magic Masala’.

The Court thus observed that the misrepresentation must be believed by those to whom it is communicated [through word marks, visual marks, labels or the entire get up as a whole], and such persons must be likely to act in reliance of the supposed misrepresentation. As noted, persons are likely to act in reliance of those features of a plaintiffs product which is said to be ‘distinctive’ of it in the legal sense. Hence the question of distinctiveness and that of misrepresentation are not independent of each other but are strongly interdependent and are always capable of interacting with each other.

Examination of ‘deceptive resemblance’ vis a vis present case

The test to determine ‘deceptive resemblance’ is essentially decided by asking two questions:

  1. Person / Hypothetical purchaser
  2. ‘Rules of Comparison’

 It was observed that in general it would not be an easy task for a plaintiff to establish a case of passing off by “get up” alone, especially at the interlocutory stage, unless the resemblance between the goods is so close that it can hardly have occurred except by deliberate imitation.

The Court observed that on careful analysis of the marks, logos, pictures and how the products are listed on digital platforms and physical stores it is clear that from the perception of the hypothetical purchaser, even after making allowance for imperfect recollection, the point of reference for purchasing the plaintiff’s goods is primarily the brand – Sunfeast Yippee, or the mark – Yippee or the phrase ‘Yippee Magic Masala’. “We find it rather unconceivable, at this stage (without any data or evidence in front of us) to conclude that the hypothetical purchaser would go and ask for ‘red-orange noodles’. Even if he does, it is very unlikely that a shopkeeper would straightaway handout the ‘Yippee Magic Masala’ brand of noodles since it has been show to us that there are other wrappers which may though not have, strictly speaking, an identical colour scheme but have similar colours on their wrappers.”

 Test of Copyright Infringement

 The Court observed that while deciding the question of copyright infringement it is not necessary that the defendants work must be an exact reproduction of the plaintiffs work. What is essential is to see whether there is a reproduction of the substantial part of the plaintiffs work. It was further stated that if the plaintiff cannot demonstrate that substantial features of the plaintiff’s get up has been reproduced in the defendant’s get up, then merely showing similarity or identity in other non-essential features will be of no consequence.

The Court further laid down principles for Courts to deal with injunction applications, in a pending suit, seeking relief against passing off. [Refer judgment]

The Court thus held “that order of learned trial Judge dismissing the applications filed by the plaintiff for grant of temporary injunction deserves to be affirmed.”

[ITC Limited v. CG Foods (India) Private Limited, 2021 SCC OnLine MP 1906, decided on 28-09-2021]

 


Arunima Bose, Editorial Assistant has reported this brief.


Appearances:

For Appellants: Mr. K G Raghavan , Dharmendra Chatur and Sanjanthi Sajan Poovayya and Co.

For Respondents: Mr. Dhyan Chinappa, Lomesh Kiran N, Mr. Abhinay V and Mr. Tejas

Op EdsOP. ED.

Background

As things stand, embroiled in a tug of war are two States—Kerala and Karnataka over the right to use an acronym/abbreviation “KSRTC” trade mark, its emblem and nickname “Aanavandi”, which means an elephant vehicle, for their respective road transportation corporations providing services to the general public for decades now. The Kerala State Road Transport Corporation started using the abbreviation “KSRTC” when they started the services in 1965, while Karnataka State Road Transport Corporation commenced services in 1974 and started using the abbreviation since then. Apparently, they have been using the same area for parking purposes, operations and management and booking counters.

The case got reignited recently when a press release[1] was issued by Kerala that the Trade Marks Registry had given a final verdict to use the abbreviation “KSRTC” in its favour. However, subsequently, Karnataka SRTC issued a statement, saying the reports are factually incorrect as we have not received any such notice or order from the Central Trade Mark Registry as claimed until today”. To my mind, there is no such order granting any exclusive rights over the trade mark “KSRTC” to one State over the other as on date.

The trade mark public search report by the Controller General of Patents, Designs and Trade Marks under the Ministry of Commerce and Industry, which clearly mentions that Kerala and Karnataka have the rights to use “KSRTC”. Furthermore, the rectifications filed by Kerala SRTC against Karnataka SRTC’s registrations are pending before the IPAB (Intellectual Property Appellate Board)(now the Madras High Court, after abolition of the IPAB) without determination. Consequently, till the determination of the same, there is no bar against the use of the acronym by either of the States.[2]

Law of the land 

(i) Abbreviations of descriptive words/trade name

14. McCarthy on Trademarks and Unfair Competition (3rd Edn., Vol. 2) states that:

The names of a product or service itself what it is ― is the very antithesis of a mark. In short, a generic name of a product can never function as a trade mark to indicate origin. The terms “generic” and “trade mark” are mutually exclusive…. The concept of “generic name” and “trade name” are mutually exclusive. Thus, if in fact a given term is “generic”, it can never function as a mark to identify and distinguish the products of only one seller (Para 12.01).

An abbreviation of a generic name which still conveys to the buyer the original generic connotation of the abbreviated name, is still, generic”.

“Acronyms of generic names are often used interchangeably with the full generic name and recognised as equivalent ….”

“If the abbreviation is not recognisable as that original generic term, then the abbreviation is like a fanciful mark and protectable. [Para 12.12(1)]”

“As with misspelling of descriptive terms, a misspelling of a generic name which does not change the generic significance to the buyer, is still ‘generic’. [Para 12.12(2)]”[3]

(ii) Prior use

As both entities have been using the abbreviation KSRTC for a very long time and both have valid and subsisting registrations over the said mark, one of the most important facts of such cases would be priority of use. It has been reported that Kerala trumps Karnataka in this respect, as the use of the abbreviation by Kerala dates back to 1965 whereas Karnataka can establish its use from the mid-1970s only.

In a recent case, namely, Peps Industries (P) Ltd. v. Kurlon Ltd.[4], the Delhi High Court states that:

  1.  … (i) Rights of registered owner of the trade mark though exclusive, are subject to various provisions and thus not absolute.

(ii) The rights of a person alleging passing off the goods of the other party as that of its own, emanate from the common law and not from the provisions of the Trade Marks Act and thus, independent from the rights conferred by the Act.

(iii) The right of the registered owner of the trade mark is not higher in order to right of the person using an identical trade mark or resembling thereto in relation to the similar goods and services if the other party has been continuously using the said trade mark prior to the user of the trade mark by the registered owner. The user by other party has to be continuous, distinct from the user which is separate, isolated or disjointed and requires the commercially continuous use of mark in relation to the same goods or services. A defendant seeking to set up a defence of prior use under Section 34 of the Trade Marks Act has also to prove the volume of sales. Mere issuance of an advertisement would not constitute user of the mark.

Kerala mainly relied on the “first user” principle elaborated in Section 34[5] of the Trade Marks Act. According to the principle, the proprietor of a registered trade mark cannot prevent the use of a similar or identical mark by another party which had commenced the use of the same prior registration.

(iii) Honest concurrent use

Given the emotive regard both States have towards the abbreviation, a reasonable compromise could perhaps be found in Section 12 of the Trade Marks Act, which provides for the Registrar to allow for the coexistence of both trade marks for honest and concurrent use. It has been well explained as below:

  1. Registration in the case of honest concurrent use, etc. In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.

In London Rubber Co. Ltd. v. Durex Products Incorporated[6], it was stated that:

  1. … (2) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.

(3) Where separate implications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other, in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by a competent court.

In Kores (India) Ltd. v. Khoday Eshwarsa & Son[7], the Court laid down in para 11 the following tests for determining the honest concurrent user:

(1) The honesty of the concurrent use.

(2) The quantum of concurrent use shown by the petitioners having regard to the duration, area and volume of trade and to goods concerned.

(3) The degree of confusion likely to follow from the resemblance of the applicant’s mark and the opponent’s marks.

(4) Whether any instance of confusion have in fact been proved.

(5) The relative inconvenience which would be caused to the parties and the amount of inconvenience which would result to the public if the applicant’s mark is registered.

Conclusion

As of today, both States forge ahead using the abbreviation with their respective logos. In the current state of affairs, Karnataka and Kerala could not be more in antipodal directions. While the former is a saffron State, the latter has voted in the communist red. However, despite some ideological differences, the two neighbours share a right neighbourly relationship and tend to resolve their dispute through amicable talks. Therefore, battles over intellectual property rights that bear great historical and cultural significance have the potential to be resolved through the principle of coexistence. This will enable the institutional heirlooms of the past to thrive and prosper for the generations to come.


Intellectual Property Lawyer, Member, FICCI IP Forum; Editor, The Trade Mark Reporter, International Trademark Association (INTA), LLM in Intellectual Property Law, Queen Mary University of London (QMUL). Author can be reached at yash0843@gmail.com.

[1] <https://indianexpress.com/article/explained/how-kerala-won-battle-for-ksrtc-trademark-7344760/>.                  

[2]<https://www.newindianexpress.com/states/kerala/2021/jun/06/ksrtc-not-exclusive-to-kerala-says-union-ministry-report-2312357.html>.      

[3] SBL Ltd. v. Himalaya Drug Co., 1997 SCC OnLine Del 571, para 14.        

[4] 2020 SCC OnLine Del 1882.          

[5] Section 34, Trade Marks Act. <http://www.scconline.com/DocumentLink/X9bqcPzT>.

[6] (1964) 2 SCR 211.

[7] 1984 SCC OnLine Bom 65.      

Case BriefsForeign Courts

Federal Court of Ontario (Canada): In an Intellectual Property battle the Bench of Alan S. Diner,  J., had granted major win to India’s giant dairy producer, Kaira District Co-operative Milk Producers’ Union Ltd. (Kaira), i.e. AMUL Dairy and Gujarat Cooperative Milk Marketing Federation Ltd. The Bench held that,

“The Defendants’ conduct had exceeded the usual case of confusion caused by slight alterations of the mark, similar description of copyrighted material, or modification of a design, rather, they were using, without any colour of right, an exact duplicate of the Plaintiffs’ mark, and an exact copy of their copyrighted material.”

Plaintiff alleged that Defendant-AMUL Canada had been advertising, marketing, offering for sale, selling, and providing goods identical to the Plaintiffs’ goods in Canada with the trademarks and trade names AMUL and Amul Canada Ltd. through LinkedIn. Further, it was alleged that the Defendants, namely AMUL Canada, Mr Mohit Rana, Mr Akash Ghosh, Mr Chandu Das, and Mr Patel were not only using the exact marks and designs belonging to the Plaintiffs, but they were claiming to be the Plaintiffs, through copying the information available on the AMUL websites regarding the Plaintiffs’ background and activities. Defendant also purported to have employees in Canada even though the Plaintiffs had never licensed nor provided consent for either Amul Canada or any of the four individual Defendants to use the Plaintiffs’ trademarks and copyrights in any manner.

The Kaira was established in India in 1946, in the business of the manufacture and marketing of milk products. Its trademark AMUL is India’s largest food brand and a “well-known trademark” in India. The Plaintiffs deposed that Gujarat and Kaira had offered for sale, advertised, sold, and distributed certain AMUL trademarked goods in Canada since 2010. Specifically, Kaira was the registered owner of the Canadian Trademark “AMUL” since 2014, which had been used in Canada since 30-06-2020. Plaintiff also owned the Canadian trademark design having the expression “Amul the Taste of India”, which had been used in Canada, in association with the goods “coffee, tea, cocoa, coffee substitutes, sugar, milk etc. Similarly, Kaira also owned the mark and design having the expression “Amul Pasturized Butter utterly butterly delicious”, used in association with the dairy products, edible oils and fats. Finally, the Plaintiffs owned copyright in the designs associated with these trademarks.

Motion for Default Judgment

Noticing the evasive conduct of the Defendants and that the Plaintiffs had exhausted all reasonable attempts to had the Defendants cease and desist their conduct both prior to and through the commencement of these proceedings, the Bench held that the Plaintiffs had every right to bring the Motion for Default Judgment in ex parte manner to stop the blatant abuse of their intellectual property.

Passing Off under section 7(b) of the Trademarks Act

Passing off has been statutorily codified in section 7(b) of the Trademarks Act, RSC 1985, c T-13 [Trademarks Act]. The elements for establishing passing off are:

  • the existence of goodwill;
  • the deception of the public due to misrepresentations; and
  • actual or potential damages to the plaintiff [Ciba-Geigy Canada Ltd v Apotex Inc, 1992 SCC OnLine Can SC 85]

Holding that the Defendants had engaged in deliberate deceitful conduct and had directed public attention to its business in such a way as to cause confusion in Canada between the goods and business of the Defendants, and those of the Plaintiffs, the Bench stated that there was clearly potential damages that could have related, whether through sales, marketing, distribution, and/or recruiting employees, through the unauthorized guise of Amul Canada. Hence, opining that each of the three elements was met in the instant case, the Bench stated,

Not only has the Amul brand existed for well over 50 years and is advertised globally through online and other channels – and thus acquired distinctiveness over time – and the volumes of milk and cheese distribution illustrate that Amul products have a reputation within at least a certain segment of consumers of its dairy products in Canada.”

Trademark Infringements

The act of falsely advertising their desire to increase butter sales in Canada, so that the Defendants may attract further interest in the company, potentially hoping to attract more purported employees, distributors and/or consumers through social media pages was held by the Court to be unauthorized use of the Amul mark sufficient to infringe right to exclusivity contrary to Sections 19 and 20(1)(a) of the Trademarks Act. Similarly, the Defendants had directed public attention to their business in such a way as to cause or be likely to cause confusion in Canada, at the time they commenced so to direct public attention to them, between their business and the goods and business of the Plaintiffs, contrary to Section 7(b) of the Trademarks Act.

Copyright Infringement

In reproducing the copyrighted Amul design and corporate information, the Defendants had copied not only the mark, but also the Plaintiffs’ literature as prominently displayed on their websites (www.amul.com and www.amuldairy.com). The image and wording used was not simply strikingly similar, as had been found to establish copyright infringement in many other cases. Here, the image and wording used was an exact copy of that owned by the Plaintiffs. Hence, it was held that the Defendants had reproduced the Plaintiffs’ copyrighted material without their consent and infringed the Plaintiffs’ rights to exclusive use of its copyright contrary to Section 27 of the Copyright Act.

Verdict

In the backdrop of the above, the Bench reached the following conclusions:

  1. To permanently enjoin from infringing the trademark and copyright of the Plaintiffs, and directing public attention to the Defendants’ goods, or business in such a way as to cause or be likely to cause confusion in Canada.
  2. To transfer to the Plaintiffs within thirty (30) days, ownership and all rights access, administration, and control for and over the LinkedIn pages/accounts used by them, together with any other LinkedIn pages/accounts, domain names and social media pages registered to or controlled by the Defendants displaying the Plaintiffs’ trademark or copyright.
  3. To provide a listing and contact information for all entities that contacted the Defendants about the Defendants’ business through the LinkedIn pages.
  4. The Plaintiffs were awarded damages in the amount of $10,000 for actions contrary to the Trademarks Act, $5,000 for actions contrary to the Copyright Act and the costs in lump sum of $17,733.

[Kaira District Co-Operative Milk Producers’ Union Limited (Amul) v. Amul Canada, 2021 Fc 636, Decided On 22-06-2021]


Kamini Sharma, Editorial Assistant has reported this brief.

Case BriefsHigh Courts

Telangana High Court: Abhinand Kumar Shavili, J., addressed a matter wherein the name and logo of a company were in dispute.

Instant petition was filed to seek a writ of mandamus.

Petitioner’s contention was that it is a registered company under the Companies Act, 1956. Respondent 3 approached the 2nd respondent under Section 22 of the Companies Act (now Section 16 of the new Companies Act, 2013) disputing the name and logo of the petitioner as the same was resembling with the 3rd respondents’ name and logo.

Analysis and Decision 

GSK – Widely Known

Bench stated that 2nd respondent had rightly passed orders directing the petitioner to change the name suitably by deleting the word ‘GSK’ from its existing name as it was similar to that of 3rd respondent and was widely known as GSK even prior to the incorporation of the petitioner-company.

What had 2nd respondent Ordered?

2nd respondent had ordered the name of the petitioner’s company be changed suitably by deleting the word ‘GSK’ from its existing name within a period of 3 months from the date of that order.

Contention of ‘Limitation’ – Rejected

With regard to the contention of limitation raised by the petitioner that the application filed by respondent 3 before 2nd respondent was barred by limitation, Court noted that the said application was filed under the old Act where the period of limitation was 5 years and the petitioner’s company was incorporated in 2008, whereas the 3rd respondent had filed an application before the 2nd respondent in 2012 which would mean that 3rd respondent has filed well within the period of limitation

Contention with respect to –Orders passed by 2nd respondent contrary to Trade Marks Act, 1999

Petitioner failed to show how Section 35 of the Trade Marks Act, 1999 was being violated, more so, petitioner itself was not registered under the Trade Marks Act, 1999. Hence the said contention was also rejected.

Therefore, in view of the above, Court did not find it appropriate to interfere with the case of the petitioner and the petition was dismissed. [G.S.K. Life Sciences (P) Ltd. v. Union of  India, 2021 SCC OnLine TS 634, decided on 20-04-2021]


Also, Read what Section 35 Trademarks Act, 1999 is?

Section 35:

Saving for use of name, address or description of goods or services, – Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in  business, or the use by any person of any bona fide description of the character or quality of his goods or services.”

Case BriefsHigh Courts

Kerala High Court: N. Nagresh, J., heard the instant petition wherein the petitioner had approached this Court seeking to set aside rejection letter and to direct the respondent-Asst. Registrar of Companies to process his application for incorporation of LLP without raising any dispute on the proposed name “Reef Wellness and Excellence LLP”.

The petitioner submitted that he had proposed to incorporate a Limited Liability Partnership (LLP) for doing business in Recreation and Wellness Centres, in the name and style “Reef Wellness and Excellence LLP”. Though, he had applied for reserving the proposed name and the name was reserved for the petitioner for three months, he could not make an application for registration of LLP within three months. However, the petitioner submitted an application for incorporation of LLP in the said name on 23-01-2020. Defects in the application were noted by the respondents in installments and the petitioner was made to file fresh applications time and again. However, in none of the mails, the respondent did point out that the proposed name of the LLP was not available. Furthermore, in mail pointing out certain defects, the respondents even stated that the proposed name can be given to the petitioner. Thereafter, the respondent pointed out only one defect relating to Subscribers Sheet.

However, in the end the respondent rejected the application stating that the proposed name of LLP could not be allowed as it is an existing trade mark.

It is evident that an LLP with identical or resembling name is not permitted in view of the regulations made in the Trade Marks Act, 1999. Section 28 of the Act grants an exclusive right to use a trade mark to a registered proprietor of a trade mark only in relation to the goods or services in respect of which the trade mark is registered. Noticeably, the word REEF is now included in the names of entities dealing in Class 05 goods in Fourth Schedule to Trade Marks Rules, 2002. The petitioner had proposed to deal in services and his activity may fall under Classes 44, 35 or 41 which was evident from communication of the respondents.

The Supreme Court had considered the issue of registering similar trade name by different entities for difference classes of products, in Nandhini Delux v. Karnataka Co-operative Milk Producers Federation Limited, AIR 2018 SC 3516, wherein it had held that as the products of the appellant and respondents fall in different classes, there is no question of confusion or deception in the matter of Trade Mark. The Supreme Court stated that,

If a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or  manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under the broad classification and by that process preclude the other traders or manufacturers from getting registration of separate and distinct goods which may also be grouped under the broad classification.”

The registration of word mark already granted by the respondents were “REEFLEC’, REEF”, “REEFIT FORTE”, “REEFER (HEMATANIC)” which were all for products falling under Class 05. While the petitioner sought the name “Reef Wellness and Excellence LLP”, not for any product but for a service, and that too which did not fall under Class 05.

Hence, the name proposed by the petitioner could not be said to be identical or deceptively similar. The respondents were not justified in rejecting the application of the petitioner for the reason that the proposed name include the work “REEF” which was existing trade mark under Class 05. Accordingly, the writ petition was allowed and the order of the respondent was set aside. The respondent was directed to incorporate the LLP without raising any dispute on the name proposed by the petitioner.

[Kunhi Muhammed Etayattil v. Registrar of Companies, WP(C). No.3057 of 2021, decided on 07-04-2021]


Kamini Sharma, Editorial Assistant has put this report together 

Appearance before the Court by:

For the Petitioner: Adv. M.P.Shameem Ahamed and Adv. Cyriac Tom

For the Respondents: Adv. P.Vijayakumar and Adv. P. R. Ajith Kumar

Op EdsOP. ED.

I. Background

Recently, a Single Judge Bench of the Delhi High Court comprising of  Mr Justice C. Hari Shankar, dismissed a plea filed by biscuit manufacturer Britannia Industries Limited[1] seeking directions against ITC Limited[2] claiming that the defendants i.e. M/s ITC Ltd. and ors. are manufacturing and selling “Sunfeast Farmlite 5-Seed Digestive[3]” biscuits in adopting a confusingly similar packing which is, according to the plaintiff, deceptively similar to the packing in which the plaintiff sells its “Nutri Choice Digestive[4]” biscuits.

Britannia brought an action for infringement and passing off and had sought an interim injunction[5], restraining the defendants from manufacturing or selling biscuits in the impugned packing, pending disposal of the present suit. Their products in question are depicted as below:

It is pertinent to note here that the plaintiff’s trade mark was registered on 11-9-2020, and has been in use since the year 2014 for its digestive biscuits. However, the plaintiff does not have any registration for the colour combinations “red and yellow” as part of the packaging. While on the other hand, the defendants do not have any registered trade mark, in respect of the impugned pack. The defendants’ “SUNFEAST”, “SUNFEAST FARMLITE” and “5-SEED DIGESTIVE” biscuits were launched, under the impugned pack on 28-9-2020.

II. Arguments

On behalf of the plaintiff

 

1. The overall trade dress, colour combinations, colour scheme, arrangement of features, get-up and layout of the impugned pack of the defendants were deceptively similar to that of the plaintiff. They have highlighted the following similarities:

(i) use of the colour scheme of red and yellow, with yellow on the left side of the pack and red on the right; (ii) depiction of the image of the biscuit on the right side; (iii) embossing of the brand name of the company and of the biscuit on the body of the biscuit in similar font and style; (iv) use of the word “Hi-Fibre”, below the name of the biscuit; (v) depiction of the words “NUTRI CHOICE” in the case of the plaintiff’s pack, and of the words “5-SEED DIGESTIVE” in the defendants’ pack, on a white background; (vi) depiction of two sheaves of wheat below the picture of the biscuit on the right side of the pack along with scattered grains of wheat; (vii) an orange shading at the intersection of the yellow and the red colour on the pack; and (viii) depiction of the word “digestive” in red lettering on the pack.

 

2. Defendants had copied the essential elements of distinction in the plaintiff’s trade mark without any valid reason.

3. Biscuits are normally stocked together in stores — so much so that there is also a clear aspect of “initial interest confusion” which should be taken into consideration.

4. Plaintiff’s and the defendants’ biscuits are both digestive biscuits, the constituents or ingredients of the biscuits are immaterial.

5. Considerable reliance was placed by the plaintiff on the following passage from Parle Products (P) Ltd. v. J.P. & Co.[6]:

 

  1. It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other.

 

III. On behalf of the defendant

 

1. There are any number of distinctive features on the pack of the defendants’ products which make the two packs so dissimilar as to obviate any possibility of confusion or deception — (i) the plaintiff’s pack contained two colours i.e. red and yellow, whereas the defendants’ pack contained red, yellow and saffron; (ii) yellow is the predominant colour in the plaintiff’s pack whereas red is the predominant colour in the defendants’ pack; (iii) the plaintiff’s pack predominantly displays the brand name of the plaintiff’s pack “NUTRI CHOICE” in large green letters, whereas the defendants’ brand name is “FARMLITE” printed in brown letters on the defendants’ pack; (iv) the defendants’ pack contains a vertical curved band towards the centre of the pack, in which the seeds contained in the defendants’ biscuits are reflected from top to bottom under the head “Power Seeds”, with a picture of each seed, indicating, from top to bottom, flax seeds, chia seeds, watermelon seeds, sunflower seeds and pumpkin seeds; and (v) the brand name of the defendants’, “SUNFEAST FARMLITE DIGESTIVE” is predominantly displayed on the impugned package of the biscuits.

2. Etching of the brand name on the body of the biscuits was a common industry practice and that, in fact, this feature would serve to discredit the plaintiff’s allegation of deceptive similarity, as the brand name of the defendant company as well as of defendants’ biscuits are completely different from those of the plaintiff and are quite well known in the Indian market — as also agreed by the Judge.

3. Representing wheat and grains on the pack of digestive biscuits, is also a matter of common practice.

4. Use of the word “Hi Fibre” was, again, a matter of common industry practice the lettering and the colour of the word “Hi Fibre” as contained on the impugned pack of the defendants, is different from that of the plaintiff.

5. A person who is prone to having digestive biscuits and who has bought “NUTRI CHOICE”, would normally recollect the brand name of the biscuit which he has bought. It is unlikely, therefore, that he would confuse another package, which does not contain the brand name “NUTRI CHOICE”, as being the biscuit which he had consumed on an earlier occasion — putting emphasis on the class of consumers that would buy the product.

6. There is no other manufacturer of biscuits, digestive or otherwise, making biscuits containing the 5 seeds which are to be found in the defendants’ biscuits.

 

IV. Settled law

 

1. Infringement is a statutory tort, whereas passing off is a tort relatable to common law.

2. The circumstances in which infringement takes place are to be found in sub-sections (1) to (4) of Section 29[7]. Infringement occurs, under these provisions:

where the defendant’s mark is identical with, or deceptively similar to, the plaintiff’s trade mark and is used in relation to goods or services in respect of which the trade mark is registered;

where the defendant’s trade mark is identical to the plaintiff’s trade mark, and the goods or services of the defendant are so similar to those of the plaintiff, as is likely to cause confusion, or association with the registered trade mark [Section 29(2)(a)];

where the impugned trade mark is similar to the registered trade mark and the goods or services of the defendant are identical to those of the plaintiff, or so similar as is likely to cause confusion, or have an association with the plaintiff’s trade mark [Section 29(2)(b)];

where the registered trade mark and the goods or services of the defendant are identical to those of the plaintiff, as is likely to cause confusion or have an association with the plaintiff’s trade mark [Section 29(2)(c)] [in which case Section 29(3) creates a presumptive fiction of likelihood to cause confusion on the part of the public]; and

where the defendant’s mark, though identical with or similar to the registered trade mark of the plaintiff, is used in relation to goods or services not similar to those of the plaintiff, if the registered trade mark has a reputation in India and use of the defendant’s mark, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the plaintiff’s registered trade mark.

3. “Confusion” refers to the state of mind of the customer who, on seeing the mark, thinks that it differs from the mark on the goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. The question is one of first impression.

4. In assessing deceptive similarity, the class of the customer who would purchase the product is relevant. The look/appearance, and the sound, of the trade marks, as well as the nature of the goods, are all relevant considerations. Surrounding circumstances are also relevant.

5. It has to be examined whether the totality of the trade mark of the defendant is likely to cause deception/confusion or mistake in the minds of the persons accustomed to the existing trade mark of the plaintiff.

6. The matter has to be examined from the point of view of a person of average intelligence and imperfect recollection. It has to be seen as to how such a purchaser would react to the trade mark, the association which he would form and how he would connect the trade marks with the goods he would be purchasing.

 

IV. Key observations of the Court

 

1. The approach should be one of emphasising the similarities, rather than the dissimilarities, between the marks.

2. The perception, whether in the case of infringement or passing off, is to be that of a person of average intelligence and imperfect recollection — not of an idiot, or an amnesiac. The average human mind has not been particularly conditioned to observe only similarities, and overlook dissimilarities.

3. When comparing the rival marks, the points of dissimilarity are so stark that they shade or overweigh the points of similarity, that, irrespective of the points of similarity, no possibility of confusion or deception exists.

4. The most important distinction between the two packs is the brand. The plaintiff’s pack contains the brand “NUTRI CHOICE” in large green prominent letters, on a white background. As against this, the defendants’ pack represents the brand name “FARMLITE” in much more muted brown letters, on a yellow background.

5. The different brands of the biscuit and the different companies manufacturing the biscuits are, therefore, prominently displayed on the pack of both of the plaintiff as well as of the defendants. It is only, therefore, if the mythical gentleman of average intelligence and imperfect recollection does not recollect either the brand of the biscuit or the name of the company manufacturing the biscuit, or even the prominent features. Hence, the allegation of copying of essential features and of possibility of confusion or deception on that score, would not sustain.

6. The defendants have also consciously underscored this aspect of their biscuits by prominently displaying, on the package, the words “5-SEED DIGESTIVE”, apart from a clear pictorial representation of the five seeds contained in the biscuits. The words “5 SEED” are absent on the plaintiff’s pack.

7. The fact that the words “5 SEED”, are in bright red letters on a white background, confers the words additional prominence and render them even more capable of being recollected by the average consumer.

8. In case of passing off, the fact that the “SUNFEAST” logo of the defendant and the “BRITANNIA” logo of the plaintiffs are clearly visible on the face of the rival packs, would also minimise the possibility of a consumer mistakenly purchasing the product of the defendant, assuming it to be that of the plaintiff.

9. The only similarity between that case, and this, is that, to some extent, the colour combination on the packs of the plaintiff and the defendants is the same.

10. The Court, vide the same order, also refused to pass any interim order of injunction with respect to the box packaging of defendant’s “VEDA DIGESTIVE” biscuits in another interim application clubbed in this suit, namely, IA No. 12125 of 2020 in CS (COMM) 554 of 2020[8]. Laying rest to the issue of packaging, the Court opined that:

  1. 50. … in designing the impugned pack of “VEDA DIGESTIVE” biscuits, the defendant may have made a conscious attempt to “copy” the plaintiff’s packing. A conscious attempt at copying, however, by itself does not constitute either infringement or passing off. The matter has, in either case, to be examined from the point of view of the customer of average intelligence and imperfect recollection. Unless such a consumer is liable to get confused or deceived, howsoever, questionable the intentions of the defendants may be, no case of infringement or passing off can be said to exist.

†Yashvardhan Rana, Intellectual Property Lawyer, Esteemed Member, FICCI IP Forum. He can be contacted at  yash0843@gmail.com.

[1] <http://britannia.co.in>.

[2] <https://www.itcportal.com>.

[3]<https://www.bigbasket.com/pd/40201411/sunfeast-farmlite-5-seed-digestive-biscuit-100-g-pouch/>.

[4] <http://britannia.co.in/products/nutri-choice/nutrichoice-digestive>.

[5] Britannia Industries Ltd. v. ITC Ltd., 2021 SCC OnLine Del 1489.

[6] (1972) 1 SCC 618, 622.

[7] <http://www.scconline.com/DocumentLink/3Eu1KDo7>.

[8] Britannia Industries Ltd. v. ITC Ltd., 2021 SCC OnLine Del 1489.

Op EdsOP. ED.

I. Background

Recently, India’s largest online grocery portal BigBasket served a “cease and desist” notice to a Coimbatore-based online grocery delivery startup Daily Basket[1], alleging trade mark infringement and brand name violation over the use of the term “basket”. The said notice dated 17-2-2021[2] (the original notice bears a wrong date 17-2-2020) sent by BigBasket lawyers claims that Daily Basket infringes on its trade mark and brand and in turn alleged that Daily Basket has adopted a name and a mark which is deceptively and/or confusingly similar to BigBasket name and mark and is carrying out an e-commerce business that offers similar products and services through a similar domain name — BigBasket.com.

As per the legal notice, BigBasket had given the other entity 15 days to comply with the legal notice and to intimate BigBasket regarding the request within the next seven days. In addition, BigBasket had also asked the e-commerce company to shell out Rs 2 lakh towards the cost of the legal notice. The notice from BigBasket comes at a time when Tata Group is in talks with the grocery unicorn for a 68% stake for $1.3 billion[3].

II. Cease and desist

A cease and desist letter is a cautionary letter sent to an alleged wrongdoer describing the alleged misconduct and demanding that the alleged misconduct be stopped. A cease and desist letter provides notice that legal action may and will be taken if the conduct in question continues. Such letters are usually written by attorneys and are often sent to stop alleged or actual infringement of intellectual property rights, such as copyrights, trade marks, and patents.[4]

After setting forth the background, I shall throw some light upon the various contentions made on behalf of BigBasket as part of their “cease and desist” letter. They are enlisted below:

  1. Offering identical products and services through the conflicting similar domain name “dailybasket.com“.
  2. Unauthorised and violative use and dishonest adoption of a deceptively and/or confusingly similar name and mark “dailybasket” and related logo.
  3. Mere mention or reference of a name containing “basket” in word or logo form for any e-commerce business and related products conjure in the minds of relevant class of consumers and members of trade as that of being associated with our client.
  4. Deliberately copying the layout and get-up of the website BigBasket.com.
  5. Creation of a similar mobile application for offering services with mala fide intention.
  6. Promotion and advertisement on social media websites referencing the mark dailybasket which is deceptively and/or confusingly similar.
  7. Prior adopter and user of the brand name BigBasket/bigbasket.com in relation to the online sale of all kinds of household products including organic food, fruits, vegetables and other grocery items, meat, dairy products, bakery products, personal care and grooming products, farming and gardening products, kitchenware and appliances and pet products.
  8. Violating and diluting trade mark rights in its trade dress, trade name and mark BigBasket/bigbasket.com and thus, constituting trade mark infringement.
  9. Unauthorised acts are detrimental to the distinctive character and reputation.

In response to the said notice, Daily Basket made the feud with Big Basket public by launching a website, namely, <https://bbisabully.com/>, wherein it attempts to debunk their claims. The said website delineates a point-by-point rebuttal to BigBasket’s cease and desist notice. Some of them are highlighted as below:

  • Comparison of logos— Except the word “basket”, there are no similarities or trade mark violations in the brand logo. Colors are different, font is different, graphics is different and the name itself is different.

  • Comparison of the websites— Overall get-up not copied; entirely different UI — user interface (graphical user interface).
  • Comparison of mobile application screen— Everything is different from features to functionality.

However, in an attempt to resolve the issue amicably, BigBasket issued a clarification through a tweet dated 24-2-2021[5].

III. Definition of trade mark bullying

The United States Patent and Trademark Office (USPTO) defined the amorphous term trade mark bullying or trade mark trolling as the vexatious practice of a “trade mark owner that uses its trade mark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow”. Mirroring the modus operandi exhibited by patent assertion entities and copyright bullies, several creative mark owners have adopted and modified this sue-to-settle paradigm and applied it in the trade mark context. In short, trade mark trolls—businesses both large and small—aggressively assert rights beyond the scope of trade mark protection afforded by the statutes through the issuance of threatening cease and desist letters.[6]

Section 142 of the Trade Marks Act, 1999Groundless threats of legal proceedings (1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trade mark which is registered, or alleged by the first mentioned person to be registered, or with some other like proceeding a person aggrieved may, whether the person making the threats is or is not the registered proprietor or the registered user of the trade mark, bring a suit against the first mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats and may recover such damages (if any) as he has sustained, unless the first mentioned person satisfies the court that the trade mark is registered and that the acts in respect of which the proceedings were threatened, constitute, or, if done would constitute, an infringement of the trade mark.

In a case, namely, Bata India Ltd. v. Vitaflex Mauch GmbH[7], the plaintiff had instituted a case against the defendant for restraining them from making baseless groundless threats of initiating legal proceedings. The main conundrum before the court was to deal with the issue that whether the legal notice sent by the defendant amounted to a legal threat and whether the plaintiff was entitled to an injunction and monetary compensation and damages. The Delhi High Court held that the legal notice amounted to threat and the same was unjustifiable, therefore, the defendants were ordered to restrain themselves from issuing any further baseless threats.

  

IV. Spectrum of distinctiveness

In United States trade mark law[8], Abercrombie & Fitch Co. v. Hunting World Inc. 537 F.2d 4 (2nd Cir. 1976),[9] established the spectrum of trade mark distinctiveness in the US, breaking trade marks into classes which are accorded differing degrees of protection. Courts often speak of marks falling along the following “spectrum of distinctiveness”[10].

V. Law of the land

  • Consumer confusion: As per Section 29(2)(c)[11] of the Trade Marks Act, a registered trade mark is considered to be infringed by a person who uses a mark which is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. In F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. (P) Ltd.[12], it was held as follows:

It is also important that the marks must be compared as a whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of the person accustomed to the existing trade mark.

Thus, in Lavroma case (Tokalon Ltd. v. Davidson & Co.[13]) Lord Johnston said:

… we are not bound to scan the words as we would in a question of comparatioliterarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop.

VI. Deceptive similarity

In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.[14], the Supreme Court observed that in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity, the following factors are to be considered:

    1.  … (a) the nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works;

(b) the degree of [resemblance] between the marks, phonetically similar and hence similar in idea;

(c) the nature of the goods in respect of which they are used as trade marks;

(d) the similarity in the nature, character and performance of the goods of the rival traders;

(e) the class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods;

(f) the mode of purchasing the goods or placing orders for the goods; and

(g) any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

VII. My take

  1. Well, we all can agree that “basket” is a term that is common to trade i.e. publici juris and no person or entity can claim monopoly or exclusive rights in the said term whatsoever and therefore, it is incapable of being monopolised by any trader. Thus, there is no visual or ocular similarity between the two device marks.
  2. Alternatively, the colour scheme, layout, style and overall get-up of the two device marks bearing the terms BigBasket and Daily Basket are different. There is no scope for confusion —logos, websites as well as mobile application user interfaces.
  3. It is pertinent to note here that BigBasket in its reply filed to examination report has overcome Section 11 objection raised by the Registry against a cited mark, for e.g. “Apna Big Basket” by stating that “a mark should be considered and compared as a whole and should not be compared in parts in order to determine a conflict with another mark”. Subsequently, it has also submitted that the cited mark is visually, structurally and phonetically, very different from the subject mark i.e. BigBasket. By this very logic, Daily Basket can also claim their marks to be different when compared as a whole and disclaim their exclusive rights over the term “Basket” as and when directed by the Registry — if the situation arises in the future.
  1. On the other hand, if Big Basket can prove that it has acquired distinctiveness/secondary meaning through long and uninterrupted commercial use and prove that the consumer may associate their brand over others with the goods in question and none other, they can make a strong case during the course of trial, if any. However, in doing so, another closely similar mark i.e. “Godrej Nature’s Basket” may cause an impediment in their pursuit to exclusive use/monopoly over the term “basket”. It is to be noted here that Godrej is the prior user and adopter and is using the mark Nature’s Basket in conjunction with their well-known brand “Godrej” such as since long, hence, the very sole reason it could not oppose their mark in the first place.
  1. Bullying? I do not think so. It has become the modus operandi for intellectual property firms and well-known companies to serve “cease and desist” letters to new entrants/start-ups/small companies/entrepreneurs in India to ward off any potential threat or dilution of one’s brand in order to claim exclusivity in the market. This is a standard protocol adopted by firms by regularly checking trade mark journals every once in a week to check whether there is any similar and/or identical mark in the records of the Trade Marks Registry. However, upon a preliminary internet search it could have missed out to oppose another online grocery store named “Your Daily Basket”[15], which seems to be based in Noida, Uttar Pradesh and other companies/firms alike. The website claims a copyright dating 2017.
  1. It is worth mentioning here that every startup these days are in a hurry to launch their products/company in the market without doing a proper survey and/or consulting a trade mark attorney or conducing a clearance search before adopting a brand and ultimately, cutting on costs. It is imperative these days that one should adopt these methods or one should be ready to bear the brunt.
  1. It is a good strategy on part of Daily Basket that it has launched a dedicated website to debunk various claims made by BigBasket in turn making it public and gaining sympathy and garnering support, however, what one cannot understand is why would you adopt a closely similar and/or identical name of your brand that may become a cause for concern. It is highly improbable/unlikely that they will be able to register their trade mark without any opposition from third parties. There are various “Big” formative marks, marks containing with the suffix “Basket” already existing in the market within the same segment of goods and services.

VIII. Advise to startups

  1. Invest your time in creating a distinctive trade mark before you launch your company — Think Big, Get Creative rather than simply launching your brand hurriedly with no impact or making tweaks to an already existing product in the market, be innovative.
  2. Consult a trade mark attorney or a specialist before you launch a product and conduct a trade mark clearance search.
  3. If you are bootstrapped, there are many organisations providing free legal assistance and pro bono advice. Do a simple online search.
  4. Conduct a due diligence exercise such as this becomes although more necessary when you operate in a competitive market wherein a company is able to foresee any lacunae or legal dispute that may arise in the future.

 

†Yashvardhan Rana, Intellectual Property Lawyer, Esteemed Member, FICCI IP Forum. He can be contacted at  yash0843@gmail.com.

[1] <https://dailybasket.com>.

[2]https://www.scribd.com/document/495188261/Cease-and-Desist-Notice? secret_password=tHnV6KHZHCJvzkRMXXtM#download&from_embed

[3].https://economictimes.indiatimes.com/tech/startups/tata-group-to-take-1-3-billion-stake-in-bigbasket- report/articleshow/80982050.cms .

[4]https://www.law.cornell.edu/wex/cease_and_desist_letter .

[5] https://twitter.com/bigbasket_com/status/1364445472811675652.

[6]https://www.ipwatchdog.com/2015/07/16/trademark-bullying-defending-your-brand-or-vexatious-business-tactics/id=59155/.

[7] 2015 SCC OnLine Del 11505.

[8] https://www.wikiwand.com/en/United_States_trademark_law.

[9] https://cyber.harvard.edu/people/tfisher/IP/1976_Abercrombie_Abridged.pdf

[10] https://www.wikiwand.com/en/Trademark_distinctiveness.

[11] Section 29(2) in The Trade Marks Act, 1999.

[12] (1969) 2 SCC 716.

[13] 32 RPC 133 at 136

[14] (2001) 5 SCC 73

[15] yourdailybasket.com/ .

Case BriefsHigh Courts

Delhi High Court: C. Hari Shankar, J., expressed while addressing a dispute that:

“Where a valid arbitration agreement exists, the decision also underscores the position that, ordinarily, the disputes between the parties ought to be referred to arbitration, and it is only where a clear “chalk and cheese” case of non- arbitrability is found to exist, that the court would refrain from permitting invocation of the arbitration clause.”

The present suit has sought a decree of permanent injunction, restraining the defendants from dealing in electric bikes having a throttle, using “Hero” or any mark deceptively similar as a trademark, brand name or tradename as it infringes the said mark, or result in passing off the defendant’s electric bikes having a throttle as those of the plaintiffs.

Defendants had filed IA 3381/2020 under Section 8 of the Arbitration and Conciliation Act, 1996, seeking reference of the disputes, forming the subject matter of the suit, to arbitration.

Controversy  

Plaintiff 2 claimed to have started its business of electric vehicles and to have launched battery fitted electric cycles and scooters under the well-known trademarks “Hero” and “Hero Electric”.

The said marks were registered under the Trade Marks Rules, 2002. Hero Exports used to be a partnership firm of all the members of the Munjal Group and vide a Family Settlement Agreement, the businesses of the group were divided among 4 family groups designated as – F-1, F-2, F-3 and F-4.

As per the plaintiff Hero Exports along with its business was transferred to F-1 group.

Plaintiffs belong to F-1 Group and defendants to F-4 Group.

Further, it has been submitted that parallelly with the Family Settlement Agreement, a “Trade Mark and Name Agreement” (TMNA), was executed, which assigned the right to use the trademark “Hero”, and its variants, among the Family Groups, in relation to the products and services to which the business of each group catered, to the exclusion of other groups. The plaintiff asserts that the TMNA conferred, on the F-1 group, the exclusive right to use the trademarks “Hero” and “Hero Electric”, and its variants, on all-electric vehicles, including electric bikes.

Partners of Hero Exports incorporated Hero Electric Vehicles (P) Ltd. –Plaintiff 1 to conduct the business of electric vehicles and further it was asserted that Hero Exports gave a license to HEVPL to use the trademarks of Hero Exports in respect of electric vehicles and further to proceed against third parties who sought to infringe the said trademark.

HEVPL has become the single source identifier of electric vehicles sold under the marks “Hero” and “Hero Electric”, and has exclusive statutory and common law rights over the “Hero” and “Hero Electric” trademarks in relation to electric vehicles, which include electric bikes.

Plaint alleged that Lectro was manufacturing and selling electric bikes through Hero Electric under the brand “Hero”.

The plaintiffs espied Lectro selling and promoting throttle assisted electric bikes under the brand name “Hero”. This, according to the plaint, was completely mala fide, as the defendants were aware that the exclusive right to use the trademark “Hero” and “Hero Electric”, for electric vehicles, vested in the plaintiffs, who had built up a reputation in that regard.

Defendants with the above act encroached upon the exclusive contractual statutory and common law rights of the plaintiffs in the trademarks “Hero” and “Hero Electric”.

Analysis

In the Supreme Court decision of Vidya Drolia v. Durga Trading Corpn., (2021) 2 SCC 1,  Court authoritatively expounded on the scope of the jurisdiction of a Court, examining and application under Section 8 of the 1996 Act.

Bench observed that the decision in Vidya Drolia has been followed by this Court as well as by other High Courts.

Further while discussing the principles that emerged from the above decision, Court stressed upon criterion (viii), which as follows:

(viii) The scope of examination by the Court exercising jurisdiction under Section 8 or under Section 11, is prima facie in nature. The Court is not to enter into the merits of the case between the parties. It is only to examine whether the dispute is prima facie arbitrable under a valid arbitration agreement. This prima facie examination is intended to weed out manifestly and ex facie non-existent or invalid arbitration agreements or non-arbitrable disputes, thereby cutting the deadwood and trimming off the side branches, in cases where the litigation cannot be permitted to proceed. The proceedings are preliminary and summary in nature and should not result in a mini-trial. Unless there is a clear case of non-existence of a valid arbitration agreement, or of the dispute being ex facie non-arbitrable, tested on the above parameters, the court should leave these aspects to be decided by a competently constituted arbitral tribunal. Relegation to arbitration should be regarded as a rule, and resolution by the civil court, where a valid arbitration agreement exists and is sought to be invoked by one of the parties, as an exception. The expression “chalk and cheese situation”, as used by this Court has, in this background, been approved by the Supreme Court. “When in doubt,” says Ramana, J., in his concurring opinion, “refer”. (Having said that, the “doubt”, in my view, has to be real and substantial, and not merely an escape route to avoid examining the issue in perspective.) 

Adding to the above, Bench stated that while examining the aspect of arbitrability of the dispute, or the existence of a valid arbitration agreement binding the parties, in exercise of Section 8, Court has to always remain alive to the fact that it is exercising the very same jurisdiction which the Arbitral Tribunal is empowered to exercise.

“…where the Court finds the case to be “chalk and cheese”, and where referring the matter to the arbitral process would be opposed to public interest or public policy, and a futility ex facie, that the Court should nip the request for referring the dispute to arbitration in the bud.”

Bench agreeing with Mr Akhil Sibal stated that the dispute between the plaintiffs and the defendants required a holistic appreciation of the FSA and the TMNA, their various covenants and the interplay, in order to adjudicate on the rights conferred on the various family groups.

Adding to the above, court stated that the disputes between parties are ex-facie arbitrable in nature, seen in the light of the provisions of the FSA and TMNA.

The controversy, in the present case, does not relate to grant, or registration, of trademarks. The trademarks already stood granted, and registered, prior to the FSA and TMNA.

The dispute is regarding the Family Group to which the rights to use the said trademarks, in connection with electric cycles and e-cycles had been assigned, by the FSA and TMNA.

Bench in view of the above stated that the dispute does not fall under any of the categories of disputes excepted by the Supreme Court, from the arbitral umbrella.

The right that the plaintiffs seek to assert, in the plaint, is clearly against the F-4 group, and the F-4 group alone, and not against the whole world.

The dispute is clearly inter-se amongst two Family Groups, pillowed on the rights emanating from the Family Settlement Agreement and Trade Mark and Name Agreement and essentially alleged infraction of the terms of the FSA and TMNA, not of the provisions of the Trade Marks Act.

The right asserted by the plaintiffs is not a right that emanates from the Trade Marks Act, but a right that emanates from the FSA and the TMNA, and is not asserted vis-à-vis the whole world, but is asserted specifically vis-à-vis the F-4 Family Group.

In view of the above discussion, Court decided that it would be more appropriate if the petitioner were to present the present plaint before the Arbitrator and seek any interim or interlocutory relief as it may choose under Section 17 of the 1996 Act.

Hence, the suit shall be referred to Arbitration, parties would be at liberty to appoint the arbitrator/arbitrators in accordance with the covenants of the FSA and TMNA and or approach the Court.[Hero Electric Vehicles (P) Ltd. v. Lectro E-Mobility (P) Ltd., 2021 SCC OnLine Del 1058, decided on 02-03-2021]


Advocates before the Court:

For the plaintiffs: Mr Sudhir Chandra, Sr. Adv. with Mr Ankur Sangal, Mr Sahil Narang, Ms. Pragya Mishra and Ms Richa Bhargava, Advs.

For the Defendants: Mr Akhil Sibal, Sr. Adv. with Mr Vikas Mishra, Ms Malini Sud, Mr Nikhil Chawla, Ms Shriya Mishra, Advs.

Op EdsOP. ED.

Background

Recently, a commercial court in Pune refused to pass an interim injunction order[1] to restrain the Serum Institute of India (SII) (defendant)[2] – the world’s largest vaccine manufacturer, from using the trade mark “COVISHIELD” for its vaccine for the coronavirus pandemic. Cutis Biotech[3] (plaintiff), a Nanded-based pharmaceutical and medicinal products company operating since 2010, had filed the suit in the civil court on 4-1-2021, seeking to restrain the SII from using the trade mark “COVISHIELD” or any other identical and/or similar name for its Covid-19 vaccine.

Some brief facts and the timeline on how the dispute unfolded when the world was grappling with the deadly coronavirus are enlisted below:

  • On 25-4-2020, the plaintiff coined the word “Covishieldand decided to use the same in respect of pharmaceutical and other related products.
  • Thereafter, the plaintiff conducted a trade mark search for “Covishield” in Class 5 category of goods in the trade marks register. Consequently, as there were no pre-existing marks found in the trade marks register, the plaintiff went ahead and applied for the registration of trade mark “Covishield on 29-4-2020, in respect of veterinary, ayurvedic, allopathic, medicinal and pharmaceutical preparations and vitamins and dietary food supplements for humans and animals” bearing Application No. 4493681 in Class 5 on a “proposed to be used basis” in the name of “Mrs Archana Ashish Kabra w/o Mr Ashish Nandkishor Kabra.”
  • The plaintiff also applied for registration of the mark ”COVID SHIELD bearing Application No. 4509144 in Class 5 on 24-5-2020, with regards to “medicinal and pharmaceutical preparations for human purpose” in Class 5 in the name of Mr Bandaru Srinivas.
  • The plaintiff started selling their products in the market from 30-5-2020, to which they submitted evidence in support of their claim of commercial use such as invoices, photographs, e-mails, etc.
  • On 6-6-2020, the defendant applied for the trade mark “Covishieldin the same Class 5 bearing Application No. 4522244 for the product i.e. vaccine for human use.
  • On 20-6-2020, the plaintiff filed another application for the mark “COVID SHIELDbearing Application No. 4538555 in Class 5 covering “hand sanitizers being goods included in Class 5” in the name of Mr Bandaru Srinivas.
  • On 15-8-2020, one of the trade partners of plaintiff i.e. Indo Rama Engineers[4] denied to supply multivitamin injection to the plaintiff under the brand name ”Covishield” as there was a possibility of confusion — as claimed by the plaintiff.
  • On 7-12-2020, the plaintiff came to know through news media channels that the defendant has applied for an identical/similar mark before the Drugs Controller General of India for the approval of a vaccine used for preventing the disease Covid-19, under the brand/trade mark, namely, “Covishield.
  • Thereafter, on 11-12-2020, the plaintiff filed a suit against the defendant before the District Court at Nanded, to which the defendant raised an objection on the ground of jurisdiction. That suit is still pending at Nanded Court. The suit sought the following prayer:

“Pass a decree for a perpetual injunction may kindly be issued restraining and prohibiting the defendants or any other persons claiming through them from passing off medicinal and pharmaceuticals, allopathic, veterinary, ayurvedic preparations or products for human use and animals as well as vitamins and dietary supplements for humans and animals under the trade name ‘COVI SHIELD’ as well as the trade mark ‘COVID SHIELD’ which is identical or similar to the plaintiff’s trade mark ‘COVI SHIELD’.”

  • Following which, the plaintiff applied for the mark “Covishield” on 12-12-2020, in the name of one “Mrs Archana Ashish Kabra w/o Mr Ashish Nandkishor Kabra”, claiming use since 30-5-2020.
  • The plaintiff contended that, a fresh cause of action to file present suit had arisen on 2-1-2021, when the plaintiff came to know through the website, that the Director of the defendant company Mr Poonawalla made an announcement to launch the vaccine to prevent Covid-19 under the brand name “Covishield.
  • The plaintiff approached this Court by filing the present suit on 4-1-2021.

The details of the marks[5] as filed by the plaintiff in the name of “Mrs Archana Ashish Kabra w/o Mr Ashish Nandkishor Kabra” and “Bandaru Srinivas” and the marks filed by the defendant are given below:

 

After setting forth the background and conceptual underpinnings, I shall throw some light upon the various contentions made by both the parties.

Arguments made on behalf of the plaintiff

  • Both the parties trade in a common field of activity i.e. same trade channels.
  • The defendant is using a similar and/or identical trade mark “Covishield”, which has been in use by the plaintiff prior to that of the defendant’s mark. Therefore, plaintiff is the prior user and has prior rights to the mark “Covishield”.
  • The act of the defendant is of misrepresentation and being deceitful to the customers/consumers in the market. Due to this fact, dealers/distributors are not ready to sell/procure their product; thereby plaintiff has suffered irreparable  losses.
  • The defendant has acted in a manner that has caused harm to the reputation and goodwill of the plaintiff; thereby passing off their trade mark “Covishield”.
  • The plaintiff has already manufactured and started using the trade mark ”Covishield” as opposed to the defendant.
  • The plaintiff has no objection with regard to selling of the vaccine by the defendant to provide a cure; but has an objection only as regards the usage of the trade mark “Covishield”.

Arguments made on behalf of the defendant

  • The plaintiff has no prima facie case, as it is not manufacturing any vaccine for human use, so much so that it does not provide a cure to prevent Covid-19.
  • The defendant is engaged in manufacturing a vaccine for preventing Covid-19 for human use and has applied for the registration of trade mark ”Covishield” for the said vaccine. While on the other hand, the products of plaintiff relate to “antiseptic, disinfectant liquid for first aid, medical and personal hygiene, hand and vegetable washing liquid, surface decontaminant, etc.” and has no connection with the “vaccine for human use”, in any manner whatsoever.
  • Though, the goods/items mentioned by the plaintiff and the defendant fall within the same category i.e. Class 5 goods, the visual appearance and the purpose/intent of the plaintiff’s product when compared with the defendant’s product is totally different, thereby, creating no possibility of any confusion in the minds of an ordinary person of average intelligence having imperfect recollection. Hence, there is no deception or misrepresentation on the part of the defendant.
  • The defendant intends to manufacture the vaccine for human use only in order to prevent Covid-19. Therefore, there exists no common nature of activity between the plaintiff and defendant company.
  • The plaintiff entered in the market back in May 2020 and has not achieved substantial goodwill or reputation of such nature as claimed by them that the defendant can take any undue advantage of.
  • The plaintiff concealed a very pertinent/material fact and document that it had applied to the Trade Marks Registry on 12-12-2020 for the registration of trade mark ”Covishield” bearing Application No. 4778455 for “vaccine for human use” as well in addition to other goods, thereby did not approach the court with clean hands amounting to fraud.
  • The defendant company has been in the process of manufacturing a cure to prevent a deadly disease i.e. Covid-19, and is presently in the process of supplying the human vaccine under the trade mark ”Covishield” to the Government of India and has commenced exporting it to many other countries around the world as well.
  • If the restraining order is passed by the Court against the defendant, it would cause immense hardship to the consumers in India and abroad.
  • The defendant strongly relied upon the following case laws wherein the Supreme Court has discussed about the test of deceptiveness and confusion.

(1) Nandhini Deluxe v. Karnataka Coop. Milk Producers Federation Ltd.[6]; and (2) Vishnudas v. Vazir Sultan Tobacco Co. Ltd. [7]

  • “Once a registration of trade mark is granted for a product in a class, it does not mean that, the proprietor of such trade mark gets the monopoly for the entire class.”
  • “When the visual appearance of the trade marks of plaintiff and defendant are different, when the products are for different purposes and it does not create any confusion in the mind of average man of ordinary intelligence, then it is not deception or misrepresentation.”
  • “Mere test of prior user is not sufficient, but since how long the product of the plaintiff is in market is also very important; whether there is injurious fraudulent intention or unfair trade on the part of defendant and whether there is intention to deceive the customer. If no such intention is there on the part of defendant, then merely plaintiff is prior user of the trade mark cannot be the sole basis for grant of injunction. R. Dongre v. Whirlpool Corpn.[8]

Key observations of the Court

  1. Prima facie, visual appearance when compared as a whole — the products are totally different.
  2. No prima facie intention seen on part of the defendant to create confusion or misrepresentation and further, there seems to be no likelihood to cause injury or divert business of the plaintiff, or harming the reputation and goodwill of the plaintiff. Hence, the defendant’s product does not cause confusion or misrepresentation.
  3. The ratio decided in the case laws cited e. Nandhini Deluxe[9] and Vishnudas[10] shall certainly prevail and be recognised as the law of the land as applicable to the facts and circumstances of the case in hand.
  4. The plaintiff cannot have monopoly over the trade mark “COVISHIELD” for the entire class of goods.
  5. Presently the Government of India is the buyer of the product of defendant, in India which indicates that it is being made available through government channels. Therefore, the class of consumers buying the products are totally different and as such the plaintiffs have no buyers or exporting their products abroad. On the contrary, the defendant is exporting the product in foreign countries as it is a vaccine to prevent Covid-19. Therefore, the question of misrepresentation or causing confusion in the minds of an ordinary person of average intelligence having imperfect recollection does not arise.
  6. It is a much desirable and awaited product by people all over the country and around the world. If, at this stage, defendant is restrained from using/distributing/manufacturing the vaccine under the said impugned trade mark “COVISHIELD”, it would cause great hardship to the people. Therefore, comparative hardship and balance of convenience certainly lies in favour of the defendant.
  7. The subsequent application dated 12-12-2020, filed by the plaintiff for registration of the trade mark ”Covishield” for vaccine for human use and other purposes, is of relevance and a fact that should have been pointed out by the plaintiff before this Court. Thus, the plaintiff has not approached this Court with clean hands.

My view

The Pune District Court has done an admirable job in dealing with the case in hand and has opined its view after scrutinising various facts, arguments, evidence, established precedents on the subject with aplomb in turn providing a roadmap with an increased awareness and understanding of the concepts of passing off and striking the right balance in examining the issue at hand which was much needed to reignite the trade mark law consciousness in the country in these troubling times and that too pertaining to the much awaited and talked about vaccine in India and around the world.

In simple words, Cutis Biotech has not gained much significance among the consumers at large or for that matter acquired any secondary meaning in the mark “COVISHIELD” i.e. acquired distinctiveness — when their product/brand name becomes synonymous in the public mind through long, continuous and uninterrupted commercial use in the market.

However, both the companies can co-exist in the trade marks register in Class 5 and attain registration only if they enter into a co-existence agreement, if the need arises, or register with different set of goods as claimed with actual use within the same Class 5 and/or battle it out in the court of law, if one party is adamant in enforcing their right to exclusive use/monopoly of the mark. Any which way, that will be time consuming and an inconsiderate view to take as greater public good is in question which shall always prevail. It is a reminder that we need to never lose sight of the big picture. In summary, the order is a worthy addition to the domain of trade mark law.

*Yashvardhan Rana, Intellectual Property Lawyer, Esteemed Member, FICCI IP Forum. He can be contacted at  yash0843@gmail.com.

[1]  <https://services.ecourts.gov.in/ecourtindia_v4_bilingual/cases/display_pdf.php?filename=/orders/2021/210100000012021_1.pdf&caseno=Commercial%20Suit/1/2021&cCode=1&appFlag=web&normal_v=1>.

[2] https://www.seruminstitute.com

[3] http://www.cutisbiotech.com

[4] https://www.indoramapharma.com

[5] https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx

[6] (2018) 9 SCC 183.

[7] (1997) 4 SCC 201.

[8] (1996) 5 SCC 714.

[9] (2018) 9 SCC 183.

[10] (1997) 4 SCC 201.

Case BriefsHigh Courts

Delhi High Court: Mukta Gupta, J., grants ad-interim injunction while restraining defendant from posting, publishing, sharing any content which is defamatory, derogatory or deprecatory in nature to the plaintiff, its management or employees.

The instant suit was filed by the plaintiff Whitehat Education Technology (P) Limited impleading Aniruddha Malpani as the defendant, inter alia, seeking permanent injunction restraining the defendant from defamation, infringement of trademark, dilution and tarnishing of trademarks, disparagement, damages, unfair competition etc.

Plaintiff claimed to be a start-up company teaching children the Coding, helping them build Games, Animation Apps. Further, the plaintiff submitted that it has developed a Proprietary Coding Curriculum focused on product creation and imparts lessons through live, interactive online classes.

According to the plaintiff, free classes are given to the students and on satisfaction, the students can then enrol themselves where there is no time-limit for the classes and even after availing few classes, if the students want to opt-out, the balance fee is refunded on the same day.

Plaintiff owns and operates a website under its domain name www. whitehatjr.com registered on 23-05-2018 and claims a strong presence on social media. Plaintiff has registered trademarks ‘WHITE HAT JR’ both as a wordmark and device marks.

Adding to the above, plaintiff submitted that in late September 2020, the plaintiff came across the defendant’s posts on Twitter referring to the registered trademarks of the plaintiff ‘WHITE HAT JR’ and issuing statements/posts amounting to defamation/disparagement/trademarks’ infringements, dilution and tarnishment of its trademarks.

Defendant submitted that the instant suit was not maintainable for want of territorial jurisdiction and added that it has not caused any defamation, derogation or its statements being deprecatory, for which the defendant needs to file his affidavit to present the correct facts.

Bench held that since some of the facts are alleged in the plaint are disputed and the same is required to be adjudicated, therefore at the present stage, a limited ad-interim injunction is required to be passed on plaintiff’s prima facie case resulting in an irreparable loss to the plaintiff as also keeping in view the balance of convenience lying in favour of the plaintiff.

Hence, the defendant is restrained from posting, publishing, sharing any content which is defamatory, derogatory or deprecatory in nature to the plaintiff, its management or employees.Defendant was also directed to take down the tweets.[Whitehat Education Technology (P) Ltd. v. Aniruddha Malpani, 2020 SCC OnLine Del 1616, decided on 24-11-2020]

Case BriefsTribunals/Commissions/Regulatory Bodies

Intellectual Property Appellate Board (IPAB): The Bench of Justice Manmohan Singh (Chairman) and Lakshmidevi Somanath (Technical Member, Trademarks) and Makyam Vijay Kumar (Technical Member, Trademarks), barred the registration of “N 95” as a trade mark under Section 9(1)(b) of the Trade Marks Act,1999.

The rectification application was filed under Section 57 of the Trademarks Act, 1999 for removal of “N95” in class 10 registered in favor of respondent 1. Along with the main rectification application the present miscellaneous petition for stay of operation of registration of Respondent 1 for impugned mark pending disposal for the main Rectification Application had been filed.

Instant petition was filed seeking stay of operation of registration until the Rectification Application finally decided. 

It was further stated that N 95 is prima facie generic term that is used to provide the quality of the masks hence it is hit by Section 9 of the Act.

Petitioner submitted that it is a company incorporated under Indian Companies Act, 1913 and was engaged in the business of manufacture and sale of a variety of goods including towels, bath linen, bed sheets, carpets, etc. ever since then under its well-known and well established trade mark SASSOON which was earlier adopted by  Surinder Prakash Gupta, earlier in 1998 for the said business under his proprietorship firm.

Later, the petitioner on expanding its business started using the well-known trade mark SASSOON in relation to several kinds of masks, thermometers, PPE Kits, etc.

For effective marketing of its respiratory masks, the petitioner bonafidely started to describe its respiratory masks with the established term to describe such masks i.e. N95 masks by mentioning the same on its packaging and the product for denoting the genus, and/or type of the products.

Further the petitioner submitted that the said generic term N95 is being used since then in relation to the respiratory mask under the trade mark SASSOON.

On 20-11-2020, the petitioner received an email from www.amazon.in informing that the petitioner’s listing of its N95 masks under ASIN No. B0898N72RN had been removed by the platform apparently on the complaint filed on behalf of Respondent 1.

In the said email it was mentioned that the trade mark no. 4487559 was being infringed.

Petitioner also submitted that on enquiry it was found that respondent 1 had frivolously and fraudulently obtained an unlawful registration of the generic term N95 in class 10.

On being contacted, respondent 1 claimed that he shall only allow those business houses to use N95 as a term on their products who share their profits with him. He further claimed that he was in the process to totally block the business of the Petitioner and other manufacturers/traders and threatened the petitioner’s representatives that they should advise the directors of the petitioner to contact him for a “business deal” within 2 days, else he will totally destroy the business of the petitioner.

Decision

Bench on perusal of the submissions and material placed on record stated that:

“It is the established principle that a generic expression can never be granted registration and/or protection as a trade mark under the trade mark laws.”

In Nestles’s Products (India) Ltd. v. P. Thankaraja, 1977 SCC OnLine Mad 72 , it was opined by the Madras High Court that “…”INSTEA” has the tendency to monopolise all manufactured tea which goes by the generic description of ‘instant tea’ or ‘instantaneous tea’. To grant registration to this word-mark, would therefore make its owner a monopolist of a part of the ordinary vocabulary in which traders transact business with themselves and their customers.”

In Cadilla Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd., 2009 (41) PTC 336 (Del.) (DB), it was discussed that generic term is only entitled to protection on the ground that it had acquired a distinctive character in the minds of customers and had acquired a well known status, same will be depending upon case to case. And thus in general the generic mark is not entitled to protection.

In Jain Riceland (P) Ltd. v. Sagar Overseas, CS(COMM) 796/2016, the Delhi High Court was clear when laying down the dictum that that the generic word cannot acquire distinctiveness.

In the decision of  ITC Ltd v. Nestle India Ltd., Madras High Court  stated that the mark ‘Magic Masala’ was not a descriptor of the product but rather a laudatory expression, and the same cannot be given monopoly or protection. Further the Court had observed that the terms ‘Magic’ and ‘Masala’ are commonly used terms by different manufacturers in the packaged food industry and it would be unfair to confer monopoly over the same expression.

Board in view of the above, expressed that,

the term N95 is a generic term in the mask industry, the same is not capable of being neither registered or protected as trade mark nor the same can be appropriated by any one entity.

Term N95 serves as an indicator in the trade to designate the kind, quality, intended purpose and other characteristics of the particular product which is non-proprietary in nature. The registration of the impugned mark was thus barred under the absolute grounds of refusal under Section 9 (1) (b) of the Trade Marks Act, 1999.

In the present case, wording of N 95 in the registered mark is descriptive of a characteristic of the masks, specifically that they filter at least 95% of airborne particles and are not strongly resistant to oil is a standard and is a class of respiratory devices and thus is a generic term.

Hence, the board held that respondent 1 cannot monopolize the N 95 mark in commerce as it is a generic term that refers to the genus of which the particular product is a species.

Can generic terms be registered?

Generic terms cannot be registered under trademark law and no protection to proprietor is provided.

The governing principle in cancellation/Rectification of registration Applications, “what is the primary significance of the registered mark to the relevant public” shall be the test for determining whether the registered mark has become the generic name of goods or services and in the present case not just the relevant public but various government authorities and institutions to refer to a particular type/standard of the respiratory mask as N95 and thus it is generic to the goods.

Further it was observed that  the Respondent does not have any bona fide intent to lawfully use the applied-for mark in commerce.

During the Pandemic COVID-19 crisis the shameless acts of the Respondent 1 in restricting the sales of the N95 Standard masks based on the Registration obtained by him would deprive the general public from accessing the N95 Masks that are declared as essential commodity by the Government.

Hence, it was held that:

“…given current public sentiment during this global public health crisis and since the dishonesty factor holds the cardinal principle until the Rectification Petition is finally decided the operation of the registration No. 4487559 in class 10 Registered under Certificate No. 1633656 shall remain stayed.”

Matter to be listed on 5-03-2021[Sassoon Fab International (P) Ltd. v. Sanjay Garg, 2020 SCC OnLine IPAB 170, decided on 04-12-2020]

Case BriefsHigh Courts

Bombay High Court: S.C. Gupte, J., granted an interim injunction to Hindustan Unilever Limited while restraining “Emami” from the use of trademark “Glow & Handsome” till the final disposal of hearing.

Hindustan Unilever Limited by the present interim application claimed to be a proprietor and prior user of the mark “Glow and Handsome” for its well-known skin cream, thus far marketed under the trademark “Fair & Lovely”. HUL sought to restrain the defendant, who is a rival manufacturer and trader of goods, from using the mark “Glow & Handsome” for its rival product.

Premise based on which the present application has been moved by HUL

Sometime in September 2018, the Plaintiff applied for registration of the new trademark “Glow & Handsome”.

The Plaintiff also proceeded to obtain permission from the Food and Drugs Administration (‘FDA’) of its trademark “Fair & Lovely” to the new mark “Glow & Handsome”. That permission appears to have come about on 2-08-2020. By a press release dated 3-07-2020, the Plaintiff announced its proposed use of the trademark “Glow & Handsome” for the product hitherto marketed under the trademark “Fair & Lovely”.

On 27-07-2020, the Defendant purported to announce what it describes as a process of launching products under the trademark “Glow And Handsome”.

Present interim application seeking an interim injunction against Emami’s use of the trademark “Glow and Handsome” has been moved in view of the above.

Court’s Analysis and Decision

Bench observed that plaintiff prima facie appears to be a prior adopter and user of the mark “Glow and Handsome”.

HUL has already launched its gods in the market with the said trademark and so far as the defendant is concerned, it is admittedly at the stage of adopting “a process of launching” its goods under the trademark “Glow and Handsome”.

Hence the HUL is entitled to an ad-interim injunction at the present stage.

Court restrained Emami, who has not yet brought its own goods into the market under the proposed trademark “Glow & Handsome” till the time both the parties complete their respective pleadings and final disposal of the matter is completed.

Bench clarified that he present order in no way shall obstruct the defendant’s claim in its own suit in Calcutta High Court regarding a restraint order against the plaintiff’s use of trademark “Glow & Handsome”, also, the Plaintiff cannot claim any equities so far as its use of the mark “Glow & Handsome” hereafter is concerned. [HUL v. Emami Ltd., 2020 SCC OnLine Bom 872, decided on 17-08-2020]


Also Read:

[Glow & Handsome] | Trademark Suit | Bom HC dismisses Emami’s appeal against Single Judge’s ad-interim order

[Glow & Handsome] HUL v. Emami | Trademark Suit | Bom HC | Emami cannot initiate any legal proceedings without giving 7 days prior notice to HUL

Case BriefsHigh Courts

Bombay High Court: B.P. Colabawalla, J., held that,

“Trade Mark ISKCON has come to enjoy a personality that is beyond the mere products/services rendered thereunder and the recognition, reputation and goodwill of the said trade mark ISKCON is no longer restricted to any particular class of goods or services.”

Permanent Injunction

Plaintiff had sought permanent injunction to restrain the defendants from infringing the plaintiff’s registered trademarks, passing off and other reliefs.

A decree of declaration has also been sought that the plaintiff’s trademark ISKCON is a ‘well-known trade mark’ in India.

Director of Defendant 2 has give an undertaking that the defendants will not use the trad mark / name ISKCON by itself or as a part of the trade mark / name or in any manner whatsoever including the impugned expression “Formerly known as ISKCON”.

Advocate for the plaintiff submitted that apart from the above-stated declaration, plaintiff is also entitled to a declaration that its trademark ISKCON is a well-known trademark in India.

Plaintiff has made applications/secured registrations in respect of the trade mark ISKCON and/or marks containing ISKCON as one its leading, essential, distinctive and prominent feature in respect of various goods/services/classes.

Plaintiff has been regularly, openly, continuously, uninterruptedly and extensively using the said mark ISKCON in respect of various goods and services since at least the year 1971 with a view to distinguish the goods/services bearing the said mark ISKCON from those of others.

Further the Counsel for the petitioner also submitted that parameter required to be taken into consideration for a well-known trademark as per Sections 11(6) and 11(7) of the Trade Marks Act, 1999 are fulfilled in the present case.

Decision

It is clear that ISKCON is a coined trade mark of the Plaintiff, that is to say that the said term ISKCON did not exists prior to the Plaintiff’s adoption and use of the same and thus it deserves the highest degree of protection.

Plaintiff has been diligently safeguarding and protecting its rights in the said trade mark ISKCON and has initiated proceedings before various forums against the misuse of its trade mark ISKCON and been successful in enforcing its rights in its mark ISKCON.

Hence in Court’s opinion, plaintiff’s trade mark ISKCON satisfies the requirements and tests of a well-known trade mark as contained in Sections 11(6), 11(7) and other provisions of Trade Marks Act.

Therefore, Court held that trade mark ISKCON is a well-known trade mark in India within the meaning of Section 2(1) (zg)of the Trade Marks Act, 1999. [International Society for Krishna Consciousness (ISKCON) v. Iskcon Appaeral (P) Ltd., 2020 SCC OnLine Bom 729 , decided on 26-06-2020]