Case BriefsHigh Courts

Delhi High Court: C. Hari Shankar, J., addressed a matter regarding passing off and granted interim relief.

Plaint alleged that defendant 1 was passing off its products as those of the plaintiffs by using the label which was confusingly and deceptively similar to that of the plaintiffs.

The product sold and manufactured by the plaintiff is “KESRI MARHAM” and the plaintiff claimed to have adopted the same in 1998.

Plaint asserted that the label of the plaintiffs reflected a unique trade dress with individual components being placed at specific locations.

Defendant is engaged in manufacturing and marketing of ayurvedic product including pain relief balms, dant manjan, creams etc. The said balm was sold under the name “Paharhi Garhwali Balm”.

Identical 

Prima facie on a bare glance of the labels of the defendant and plaintiffs, it was indicated that there had been a conscious effort to copy the plaintiff’s labels, to the extent that the colours used by the defendant, placing of various features on the label and the photographs representing the ailments which the balm was expected to alleviate are also identically placed.

Therefore, in view of the above discussion and finding, prima facie it appeared that defendant was passing off its products as those of the plaintiffs.

High Court opined that plaintiffs made out a good prima facie case for grant of ex-parte ad interim relief.

Bench also added that in case the relief was not granted and the market was permitted to be flooded with defendant’s product, prejudice to the plaintiffs would be irreparable.

Plaintiffs are directed to comply with the provision of Order XXXIX Rule 3 CPC within the time stipulated in that regard. [B C Hasaram and Sons Ayurvedic Pharmacy v. Pahari Garhwali Ayurvedic Pharmacy, 2021 SCC OnLine Del 3057, decided on 17-05-2021]


Advocates before the Court:

For the Plaintiffs: Ms. Tusha Malhotra & Ms. Yamini Jaiswal, Advs

Case BriefsHigh Courts

Bombay High Court: G.S. Patel, J.,  while addressing a matter wherein the offence of defamation has been alleged, expressed:

Simply using another’s image, and most especially a private image, without consent is prima facie impermissible, unlawful and entirely illegal. In a given case, it may also be defamatory, depending on the type of use.

Instant suit was with regard to an action for damages in defamation and for a permanent injunction.

Plaintiff is a model and an actor.

Dispute that needs to be addressed is with regard to the 1st and 2nd defendants utterly illicit use of a still image of the plaintiff in their 2020 Telugu film entitled ‘V’. The said film was is available on Amazon Prime.

Plaintiff, as a part of her professional work, commissioned a photographer to prepare a photo portfolio, 5 years ago. Photographer had shared the images with the plaintiff via a Google link or on Instagram, after which the plaintiff uploaded at least part of this photo portfolio to her Instagram account.

The grievance is that, a photograph from the above mentioned privately commissioned portfolio has been used in that portion of 1st and 2nd Defendants’ film where there is a reference to a female escort or a commercial sex worker. Further, it has been added that, What is depicted in the film is a message on a mobile screen with an image; and the image used is one of those from the Plaintiff’s portfolio, apparently lifted from her Instagram account.

Counsel for the plaintiff has hence submitted that the plaintiff’s image has been used unauthorizedly to depict her in the motion picture as an escort or commercial sex worker.

Hence the plaintiff submitted that all of the above amounts to defamation.

High Court on perusal of the above prima facie believed the above averments of plaintiff’s counsel to be correct, and added that:

“…I do not believe there is any other way of looking at it.” 

Adding to the above, Bench stated that any right-thinking motion picture producer would have insisted on seeing an approval or consent by the model or person who is featured or to be featured.

“…it is not possible to use the image of any person for a commercial purpose without express written consent. If images are to be used without such express consent, they must be covered by some sort of legally enforceable and tenable licensing regime, whether with or without royalty.”

Bench directed defendant 3 to take down the telecast of the film in all versions, irrespective of language and sub-titles, until such time as the 1st and 2nd defendants have completely deleted all images of the Plaintiff from their work.

To merely pixelate or blur the images, won’t be acceptable. The entire sequence which has the plaintiff’s image is to be removed immediately.

Court added, If the 1st and 2nd Defendants wish to replace the deleted segments, they are free to do so but without using any of the Plaintiff’s images in any shape, fashion or form without her express written consent.

Additionally, the Bench added in its list of instructions, the 1st and 2nd Defendants are restrained from releasing their film on any media platform or through any medium or in any version until the deletions that have been indicated above are effected.

Correspondingly, the 3rd Defendant is not to release any re-edited version of the film without a specific order of this Court following the deletion of the offending portion. The 1st and 2nd Defendants will have to show Mr Kirpekar and his client the altered portion before the Court will permit the 3rd Defendant to re-release this film.

Matter to be listed on 08-03-2021. [Sakshi Malik v. Venkateshwara Creations (P) Ltd.,  2021 SCC OnLine Bom 352, decided on 02-03-2021]


Advocates who appeared for the matter:

Mr Alankar Kirpekar, with Saveena T Bedi, i/b Lawhive Associates, for the Plaintiff

Mr Akash Menon, with Bency Ramakrishnan, i/b Akash Menon, for Defendants Nosf 1 and 2f

Mr Thomas George, with Nikhil Sonker, i/b Saikrishna & Associates, for Defendant Nof 3f

Op EdsOP. ED.

Introduction

“We live in a world measured by piracy because, piracy means access.”[1]

The internet came into existence in the early 1980’s, and since its inception everything around has become easily accessible. The experience of watching a film has changed dramatically over the last 100 years. Earlier, people would frequent their local film theatre and watch films, but with the evolution of the internet this has decreased tremendously. There are various online film service platforms which upload the films within a few weeks or even within a few days of its release and people can watch them in the comfort of their homes saving them the trouble of going to the theatre. The over-the-top media services (OTT) platforms have become very popular these days.  With the digital platforms like Netflix, Amazon Prime, Hotstar gaining popularity, people now stream films and download them at a minimal amount or sometimes for no cost at all. These platforms obtain a requisite licence in advance from the distributors. However, there are other online film platforms too, where a film is uploaded without obtaining any licence, these are called pirated films.

A recent example of a pirated film that was circulating was of Angrezi Medium (2020). The film was running in the theatres when the corona virus lockdown was announced by the Hon’ble Prime Minister. At the beginning of the lockdown there were number of pirated copies of the film that was circulated in various platforms. But, recently Hotstar bought the licence of the film and it is been view legally by a number of people since then. John Doe orders are based on the principle, “if litigating finger is directed at unknown defendants, the inability to identify him by name is a mere misnomer”. The underlying principle behind this being that the enigma of defendant’s identity should not be an impediment in implementation of justice.

According to the Dictionary, piracy is “the unauthorised use or reproduction of other’s work”.[2] Piracy is an infringement of copyright and one of the civil remedies that are given in such situations is the John Doe order. This article will discuss the future of John Doe jurisprudence in India, focusing on copyright infringement and Bollywood.

The Ascent of Copyright Piracy in Bollywood

Mukesh Bhatt, a well-known Bollywood producer in an interview said –“Digital piracy is the biggest menace, which the producers face and the amount of revenue that the filmmaker loses is huge.”[3] The Bollywood industry is one of the worst victims of piracy in the world.[4] Statistically, India is ranked amongst the top five countries worldwide for piracy.[5] In a study conducted, it was found that Indians are the largest users of the torrent sites.[6] A large section of people upload films illegally i.e. without having any authorisation or licence, catering to an equally large section of viewers who download and stream these films on illegal platforms. This makes us the culprits and the victims at the same time.

Despite stringent security checks at movie theatres, there is still a reported 91% leakage through camcording[7] i.e. camera recording in the theatres. Films releasing overseas before the Indian market can also be a contributing factor to piracy.

Movie producers and filmmakers end up paying a heavy price at the end of it all. As per data, each time a link is opened with a pirated film, there is a loss of INR 25, which later totals to an amount of INR 3 crores lost against the producer.[8] Due to the rampant mushrooming of platforms hosting pirated films, the Indian Government along with internet service providers (ISPs) has taken the necessary steps to curb piracy, by banning several websites and uniform resource locators (URLs).

Despite putting a ban, thereby making it a punishable offence to download copyrighted products illegally, the practice of illegal streaming and downloading has not completely stopped. In 2017, there was a very interesting online consumer survey on India by Irdeto, the world leader in digital platform security. It was found that 71% of consumers are well acquainted with the fact that sharing or producing pirated video is felonious, and 64% are aware that streaming or downloading pirated content is felonious and nevertheless, 66% still choose to watch the pirated content.[9]  Keeping supply and demand in mind, piracy is still rampant only because there is a readily available mass of viewers for whom this medium is economical and easily accessible.

Piracy is an infringement of copyright. It is to be noted that all piracy is copyright infringement but all copyright infringement is not piracy. Infringement of copyright has been mentioned in Section 51 of the Copyright Act, 1957. It includes acts of a person, when he does anything in absence of a licence from the owner or Registrar of the copyright, and the exclusive right of which is conferred upon the copyright owner under the Act.[10] An unauthorised person, allowing a place to be used for public infringing communication of work is also sectioned under infringement of copyright.[11] The Act also provides the owner of copyright exclusive rights of communication of a film.[12] Therefore, piracy of a film is illegal as the film is being uploaded without obtaining any licence or without the permission of the filmmaker and hence is an infringement of copyright.

The Act provides various remedies for infringement of copyright to the copyright owners.[13] Section 55 of the Act gives the owners whose copyright has been infringed (including exclusive licensees)[14] to obtain all civil remedies, through injunctions, damages and disgorgement.[15] In the context of Bollywood, the civil remedy that is popularly used is the John Doe order, also known as Rolling Anton Pillar order[16] or Ashok Kumar orders[17]. John Doe orders are granted under Order 39 Rules 1, 2 and read with Section 151 CPC.[18] Thus, the same principles are applied for John Doe orders as applied under Order 39 for interim injunctions.

The Arrival of the Hero: John Doe Order

John Doe is the common classification of persons who are unknown to the world at large. John Doe orders in simple terms are, temporary ex parte injunctions used by the copyright owners as an impediment to the unknown infringers.[19] These orders proscribe infringing activities by unknown people and along with that it also averts any probable infringing activities. It is used when the producer or the filmmaker anticipates that there is going to be piracy of their film, but, they do not know who may cause the piracy or is the infringer. These orders arise out of quia timet actions, which are actions by a party looking for the court’s help to avert an injury to the party’s rights or interest in the future.[20] The order acts as armour and grants pre-emptive and quick remedy to the copyright owners.[21] As per Order 7 CPC, identification of the defendant’s name and address is required[22], but, in cases where the identification is not possible, the courts have allowed John Doe orders. A “John Doe” in Bollywood productions copyright, case is initiated under Order 39 Rule 1 and 2 read with Section 161 CPC.[23]

The US Supreme Court case of Roe v. Wade[24] was where the anonymous entity to a criminal suit was referred to as Doe for the first time. The jurisprudence of the John Doe order in India goes way back to 2003 in Taj Television v. Rajan Mandal[25] where the court restrained the transmission of FIFA World Cup by unlicensed cable operators and the plaintiff was allowed to search and seize devices of unknown defendants. In recent times, we see that the amount of cases where John Doe was granted has increased tremendously, especially when it comes to piracy of new films. This can be attributed to the digital age and the internet. There has been a shift of the physical sale of films to the availability of movies from the online portals where the film can be easily streamed or downloaded from. With respect to Bollywood, the first case to use John Doe orders was for the movie Singham (2011).[26] In this case, the Delhi High Court included the term “internet” for the first time.

In the case of the movie Great Grand Masti (2016), the Bombay High Court allowed implementation of the John Doe order against the ISPs.  The court provided “sufficient service” to the defendants and allowed them to apply against the grant of injunction in a period of four days.[27]

The banning of the whole website because of an infringing content is archaic and with this the piracy rate increases rather than decreasing, as violators find other means for infringement. With the High Court order in case of the film Dishoom (2016) this has changed too. Justice Patel in this case extended the guidelines given in the case of Great Grand Masti. He instructed that blocking of the whole website is not allowed, unless it can be proved that the whole website contains only pirated or illicit content.[28] Thus, with the case of Dishoom it was seen that the court maintained a balance between the protection of constitutional rights and the freedom of ISPs.  This way one could check the legitimacy of the plaintiff’s claims and ISPs could be protected.

Year 2018 saw many instances in Bollywood where John Doe order was granted. The biggest movie of the year i.e. Padmaavat directed by Mr Sanjay Leela Bhansali sought a John Doe order from Madras High Court to avert any copyright infringement and piracy. To prevent any further losses, keeping in mind the controversies surrounding it, the makers of the movie sought a John Doe order. The other movies of the past year that got a John Doe order were, Hichki, Pad Man, Pari, Qarib Qarib Singlle, Soorma, Don 2 and Masaan.

The Good, Bad and Ugly of the John Doe Order

There is a lot of debate surrounding the John Doe jurisprudence in India. There are many issues and arguments relating to the “Ashok Kumar orders” as they call it in India. As we have already discussed, the order overrides Order 7 of the Civil Procedure Code, 1908 that specifies identification of the defendant’s name and address and failure to do so results in rejecting the plaint. Another reason is that the order takes no notice of the principle of inherent powers that the Supreme Court has expressed in times only to as an enhancement or to monitor the mechanism adopted by courts, without any connection to the litigant’s substantive rights for which courts have to be specially empowered.[29] The order is very ambiguous in nature. Its ambiguous nature aggravated in the case of the movie Singham (2011) when it included the word “internet” in context of the John Doe orders. The irony when we talk about John Doe orders increasing with the new internet age is that there is no substantial information available related to success of John Doe jurisprudence anywhere else except for the internet. Another issue with the John Doe order is in regards to the ISPs i.e. there is no standardised set of laws which determine blocking of websites and blocking of the same. As a result ISPs are blocking the websites without the sanction and in absence of any directives from the Department of Information Technology.[30] In the film Bodyguard (2011) the police were asked to assist the copyright owners by the court to curb piracy without any guidelines thereby giving them redundant discretion power which may further lead to constitutional scrutiny.[31] The courts also grant injunctions in the form of John Doe orders to curb piracy. The John Doe orders as a measure should be kept in check and be used during exceptional conditions where the injury of the copyright owner is superior to the compromise of the larger public goal of defending and protecting the internet freedom and constitutional rights of ISPs.[32]

There is a conflict between the copyright protection and public consumption of cultural goods. In this context we can look into Article 27 of the Universal Declaration of Human Rights, which states that everyone has the right to participate in the cultural life of the community and enjoy the arts. Also, it states that the interests of the author of a literary or artistic work should be protected. Therefore, we see that there is a conflict between the public consumption of cultural goods and the interest of the copyright owner. Some scholars argue that through piracy the cultural goods are made affordable and it ensures a larger access.[33] Whereas, on the other hand people believe in the protection of interest of the copyright owners in this context the filmmakers and the producers who incur financial loss due to piracy.

After the order issued with the film Dishoom, it has been noted that the entire website cannot be banned, as they also contain a sizeable portion of legitimate content. In order to overcome issues relating to the John Doe jurisprudence, there should be a distinction made between the websites that incidentally commit copyright infringement and those that intend to commit the same.  It should be noted that despite the intention, the Ashok Kumar order cannot be enforced unless there is an actual act of infringement.

Nowadays, long before the release of a film the makers release the teaser and the trailer online. There is also that one song of the film that is released by them online and people download it and share it across everywhere. But, as the date of the release of the same film comes near, the same makers procure a John Doe order to prohibit their film to be available on various mediums. This is the double standard of the filmmakers.[34] In a bid to contest the unbridled piracy, there has been a mounting craze among Bollywood producers to obtain John Doe orders before the release of their films. The rationale behind this is that since films have a limited shelf life, the producers of these films cannot wait until the identity of infringer is determined.

Conclusion

The extent of piracy has only increased in the recent times with the availability of links on various platforms. Despite the measures taken by the courts, this issue still persists.  With films being available on digital platforms such as Netflix, Amazon Prime, Hotstar, etc., one can stream films at a nominal cost at the comfort of their homes. It is believed by some that the level of piracy has decreased due to these platforms. Having said that, these platforms do not stream new films, as a result people find illegal platforms to view movies.

The jurisprudence of John Doe orders is still at a nascent stage in India. With piracy increasing, the numbers of John Doe orders that are granted have also increased. As has been mentioned, the courts are trying their best to curb the problem of piracy. However, the courts have to take stricter actions to determine and to take necessary measures in cases of internet blocking. There is still a high number of people who enjoy going to the theatres and watching films. As long as there are people willing to go to the theatre and watch the film, the producers and filmmakers will continue to earn profits piracy cannot diminish overnight; it will have to be a gradual process. With no piracy, the need for John Doe orders can decrease along with unnecessary removal and blocking of websites.

The future of the John Doe order will be determined by the way in which these orders are granted and at the same time by ensuring that there is no over blocking. It should also be important to protect the rights of those whose intellectual property has been infringed.


* BA LLB (Hons.), National Law University and Judicial Academy, Assam, e-mail: shristitalukdar541@gmail.com.

[1] Dr Kalyan C. Kankanala, Pirates of Bollywood  (2015).

[2] Oxford Dictionary of English (3rd Edn. Angus Stevenson, 2010).

[3] Indo-Asian News Service, Muklesh Bhatt: Digital Piracy is the Biggest Menace, NDTV Movies (28-12-2019, 3:31 P.M.), <http://movies.ndtv.com/bollywood/mukesh-bhatt-digital-piracy-is-the-biggest-menace-613985>.

[4] Aadya Chawla, John Doe Orders: Prevention of Copyright Infringement of Cinematograph Films, 2 ILILR 64, 65 (2017).

[5] Ibid.

[6] Arul George Scaria, Online Piracy of Indian Movies: Is the Film Industry Firing at the Wrong Target, 21:3 MSILR 647, 649 (2013).

[7] Maryam Farooqui, YRF Files John Doe to Protect Hichki from Piracy; A Menace that Made Film Industry Lose 30% Revenue in 2017, Money Control (11-1-2020, 12:00 P.M.), <https://www.moneycontrol.com/news/trends/entertainment/yrf-files-john-doe-to-protect-hichki-from-piracy-a-menace-that-made-film-industry-lose-30-revenue-in-2017-2532925.html>.

[8] R.K. Productions (P) Ltd. v. BSNL, 2012 SCC OnLine Mad 4184

[9] Irdeto, Building a Secure Future, Irdeto Research: Despite High Levels of Awareness in India that Piracy is Illegal, 66% of Consumers Polled still Access Pirated  Content (2017), <https://irdeto.com/news/irdeto-research-despite-high-levels-of-awareness-in-india-that-piracy-is-illegal-66-of-consumers-polled-still-access-pirated-content/>.

[10] S. 51(a)(i), Copyright Act, 1957 .

[11] S. 51(a)(ii), Copyright Act, 1957 .

[12] S. 14(d), Copyright Act, 1957

[13] Ch. XII, Copyright Act,  1957.

[14] S. 54, Copyright Act,  1957

[15] S. 55, Copyright Act,  1957 .

[16] David Barron, Roving Anton Piller Orders: Yet to be Born, Dead or Alive, 18 EIPR 183 (1996).

[17] ESPN Software India Pvt. Ltd. v. Tudu Enterprise, 2011 SCC OnLine Del 5710 

[18] Civil Procedure Code, 1908.

[19] Quentin  Cregan, Roving Injunctions and John Doe Orders against Unidentifiable Defendants in IP Infringement Proceedings,  6(9) JIPLP, 623-631 (2011).

[20] Juhi Gupta, John Doe Copyright Injunctions in India, 18 JIPR 351, 351(2013).

[21] Ibid.

[22] Civil Procedure Code, 1908.

[23] Ibid.

[24] 35 L Ed 2d 147 :  410 US 113 (1973)

[25] (2003) FSR 22.

[26] Reliance Big Entertainment Pvt. Ltd. v. Jyoti Cable Network, 2011 SCC OnLine Del 5709 

[27] Balaji Motion Pictures Ltd. v. BSNL, 2016 SCC OnLine Bom 4636

[28] Eros International v. BSNL, 2016 SCC OnLine Bom 10315

[29] Gupta, supra note  21, 352.

[30] Ibid.

[31] Reliance Big Entertainment Pvt. Ltd. v. Jyoti Cable Network, 2011 SCC OnLine Del 5709

[32] Chawla, supra note 5, 70.

[33] Pradip Thomas, Copyright and Emerging Knowledge Economy in India, 36(4) Economic & Political Weekly, 2147 (2011).

[34] Achal Prabhala and Lawrence Liang, A

Ludicrous Ban, The Open Magazine (27-1-2020, 1:30 P.M.), <http://www.openthemagazine.com/article/nation/a-ludicrous-ban>.

Case Briefs

Calcutta High Court: A Division Bench of Harish Tandon and Hiranmay Bhattacharyya JJ., while allowing the present appeal, discusses upon the essentials of granting an injunction order in light of the settled precedents.

Background

The defendant in a suit for infringement of copyright has preferred the instant first miscellaneous appeal challenging the order dated 20-08-2020, passed by the District Judge at Alipore in Title Suit No. 6 of 2020. The facts leading to the present appeal are categorically mentioned hereunder;

  1. The author who is the appellant herein entered into a publishing and copyright agreement with the publisher being the respondent on 24-11-2017.
  2. The respondent filed a suit alleging illegal termination of the aforesaid agreement by the appellant through an e-mail dated 01-06-2020. It was further alleged that the appellant herein through her advocate’s letter dated 20-07-2020, threatened to institute legal proceedings against the respondent before the appropriate forum.
  3. The respondent further claims that the appellant herein threatened to publish the books through other publishers which compelled the respondent to pray for an order of injunction restraining the appellant from giving any effect to the e-mail dated 01-06-2020 and the letter dated 20-06-2020 by filing an application under Order 39 Rule 1 and 2 read with Section 151 of the Code of Civil Procedure.
  4. The Trial Judge, by the order impugned, restrained the defendant/appellant from taking any steps pursuant to the letter dated 01-06-2020 as well as the letter dated 20-07-2020 till 25-09-2020.
  5. Being aggrieved against the aforesaid order, the instant appeal has been preferred.

 Contentions

Saptansu Basu, Senior Advocate appearing for the appellant assails the impugned order on the following grounds. Firstly, the principles laid down by Supreme Court in the case of Shiv Kumar Chadha v. Municipal Corporation of Delhi, (1993) 3 SCC 161, has not been followed by the court below while passing the ex-parte order of injunction. Secondly, no order of injunction can be passed restraining a person from instituting a proceeding before a court of law. Lastly, the respondent may, at best, be entitled to damages in the event the court finds that the notice period as mentioned in the termination letter falls short of the required notice period as per the agreement in question. Reliance was further placed on Indian Oil Corporation Ltd. v. Amritsar Gas Service, (1991) 1 SCC 533 in support of such submission.

Aritra Basu, Advocate for the respondent submitted that the agreement dated 24-11- 2017 contains a termination clause which provides that 90 days notice is mandatory before terminating the agreement by the appellant herein. It was further submitted that since the termination letter has been issued by the appellant, in violation of the said agreement, the same cannot be given effect to and the court below was perfectly justified in passing an order of injunction. Furthermore, Section 42 of the Specific Relief Act, 1963, empowers the court to grant an injunction directing the appellant to perform the negative agreement by issuing a 90 clear days notice for termination of the agreement in the instant case even if the court is unable to compel the specific performance of the agreement. Reliance was placed on the judgment of KSL Industries v. National Textiles Corporation Limited, OMP 581 of 2010 decided on 14-08-2012 and Madras High Court judgment in Base International Holdings v. Pallava Hotels Corpn. Ltd., 1998 SCC OnLine Mad 614, so to emphasize that an order of injunction can still be passed in case the notice period mentioned in the termination notice is in violation of the termination clause mentioned in the agreement.

 Observation

The Court, identifying the crux of the matter, said that the agreement shall remain in existence, unless terminated by a specific notice of termination. The bench further remarked that, since the contract is determinable in nature therefore it cannot be specifically enforced in view of Section 14(1) of the Specific Relief Act, 1963.

 “Section 41 of the Specific Relief Act provides that an injunction cannot be granted to prevent the breach of a contract, the performance of which would not be specifically enforced. Since we are of the view that the contract in question is one, the performance of which could not be specifically enforced, the learned judge of the court below erred in law by passing an order of injunction in the instant case which would in effect amount to directing specific performance of the said agreement. Furthermore, no injunction can be passed restraining a party from instituting any proceeding in a court of law. The resultant effect of the order of injunction passed by the learned court below is a restraint upon the appellant from initiating any legal proceedings before a court of law which is not permissible in law.”

Rejecting the submission of the respondent, the Court said, “Section 42 of the Specific Relief Act operates in a totally different field and cannot be applied to the facts of the instant case. In the event the court at the time of trial is of the view that the respondent has suffered any injury due to short notice period, the respondent may be entitled to reliefs in accordance with law but that cannot be a ground for passing an order of injunction.”

With respect to the cases referred by the counsel for the Appellant, the Court agreed that the principles laid down by the Supreme Court in the case of Shiv Kumar Chadha has not been followed as the Trial Court judge did not record reasons for its opinion while passing the order of injunction. Further, it was observed that the ratio of the other two cases, namely, KSL and Base International cannot be applied in the present factual matrix as the circumstances essentially vary.

 Decision

Allowing the present appeal, the Court held that the Trial Judge below erred in law by passing an order of injunction.[Debarati Mukhopadhyay v. Book Farm, FMAT 369 of 2020 with IA No. CAN 1 of 2020 with IA No. CAN 2 of 2020]


Sakshi Shukla, Editorial Assistant ha sput this story together

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

Andhra Pradesh High Court: R. Raghunandan Rao, J., addressed a matter wherein the law relating to Trade Mark and Passing off was highlighted wherein the trademarks of the parties are similar or identical.

Permanent Injunction was sought by the respondent to restrain the appellant from infringing on the trademarks or passing off trademarks held by the respondent and further sought for damages, rendition of accounts under the Trademarks Act, 1999 and infringement of Copy Rights Act, 1957 against the appellant.

Background

Plaintiff had been carrying on the business of manufacture of white lime wash and distributing and selling the same under the flagship brand name Surya and the device mark of “Rising Sun”.

Plaintiff had been using the mark “Surya” in collocation with various other words and in a combination with the device “Rising Sun with seven rays”.

Unique, uncommon and distinctive features of the trademarks “SURYA” and logo “SUN” are an inventive combination.

Plaintiff submitted that under the common law and as a result of extensive prior usage since 1985, vested rights in the Trademark “SUN” as a logo and “SURYA” as a word and to protect the same have already filed Trademark Applications and the same is pending.

Plantiff’s case was that the plaintiff’s mark came to obtain recognition among the general public relating to the standard and quality of the products of the plaintiff and is recognized all over the country.

Hence, plaintiff claimed that its mark “Surya” which is recognized all over the country would be treated as a well known mark defined under Section 2 (zg) of the Trademarks Act, 1999.

Plaintiff filed a criminal complaint against the defendant on knowing that he was indulging in illegal activity by selling its products by adopting the name “Surya Magica White”.

But the stated criminal complaint was not acted upon, which compelled the plaintiff to file a private complaint which again came to be pending, therefore plaintiff approached the Court.

Defendants’ use of the essential features of the plaintiff mark demonstrates that his instent was to utilise the goodwill of the plaintiff by deceiving the general public.

Analysis, Law and Decision

Bench reviewed the law relating to Trade Marks.

While reviewing the same, Court stated that the Act regulates the recognition of trade marks, their registration and protection.

Protection of Trade Marks is defined in Section 2(1)(zb):

“Trade Mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and 

(i) in relation to ChapterXII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and

(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted use, to use the mark whether with or without any indications of the identity of that person, and includes a certification trade mark or collective mark.

The primary purpose of the a trade mark is to indicate the source of the goods/services that are sold in the market.

Whenever and wherever if there is an attempt to deceive buyers about the source of goods/services with usage of an identical or similar Trade Mark the law would assist the proprietor of the trade mark to protect his identity as the only supplier of the said goods/services.

Section 29. Infringement of registered trademarks:

Bench added to its analysis that there could be a case of infringement where there is similarity in the trade mark or where trademarks are identical, leading to confusion in the mind of the buyer that the goods being purchased by him under the offending trade mark are the goods being produced or sold by the proprietor of the original trade mark.

Test of the likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing of actions.

Question that generally needs to be answered by the Court in a Trade Mark case, filed as an action of passing off or an action for infringement:

Whether a buyer would get confused between the goods of the Defendant and the plaintiff because of the usage of the offending trademark by the defendant?

In regard to the instant case, Bench noted that an action for infringement and passing off, both have been sought.

For passing off action, plaintiff failed to produce any evidence of the quantum and length of sales, reputation or goodwill built, therefore no action for passing off can be looked into.

Action for infringement

For the said action, plaintiff has to demonstrate that his trademark is registered and the defendant’s trademark is similar enough to the plaintiff’s trademark which would in result create confusion in the minds of the buyers.

In the present case, the trademark of the plaintiff is registered, both the parties are selling goods which are falling in the same category.

In view of the above, the only question that remains is:

Whether they are creating confusion in the minds of the buyers?

Court stated that the plaintiff has claimed that he has a trade mark in the name “Surya”, which is a generic word which connotes “Sun”.

In the above-stated circumstances, plaintiff/respondent cannot contend that he has a trademark on the name “Surya”.

In the present case, however, the plaintiff submitted that the mark is “Surya” written in a specific style with a specific foreground and background.

Even though, there cannot be a trade mark in the name “Surya” there could always be a trade mark in a particular stylistic way of using the word “Surya”.

Since the trademarks exhibited by plaintiff had been the words “Surya Cem or Surya Agrilline” etc., the trademark would have to be construed as a collocation of both the words Surya and Cem or Surya Lime or mortar etc.

Perusal fo the above discussion would depict that the trade mark of the defendant would show that there are differences in the manner in which the word “Surya” is depicted.

Hence, it can’t be said that the trademarks of the plaintiff and the defendant are identical or totally similar.

Supreme Court’s decision in Ruston & Hornsby Ltd. v. Zamindara Engineering Company, (1969) 2 SCC 727, it was held that in any action for infringement where the defendant’s trade mark is not the exact mark on the register but something similar to it, the test of infringement is the same as in an action for passing off.

Bench added to its observations that in the instant case, there is a possibility of a buyer going to the shop and asking for Surya cem and get confused by the mark of the defendant and accept the product of the defendant as it would be sold as Surya Blue or Surya ujala.

In light of the Delhi High Court decision of Surya Agro Oils Ltd. v. Surya Coconut Oil Industries, 1994 SCC OnLine Del 266, it will be held that there is every likelihood that buyers would tend to get confused and plaintiff would be entitled to an injunction as granted by trial court.

In view of the above, CMA was dismissed. [Gaurav Polymers v. Delight Chemicals (P) Ltd., 2020 SCC OnLine AP 1484, decided on 20-11-2020]


Advocates for the Parties:

Advocate for the petitioner: Advocate, K V Raghu Veer

Advocate for the respondent: Advocate, Ashok Ram Kumar

Case BriefsForeign Courts

Supreme Court of the United Kingdom: While deciding the instant appeal raising questions important to the international market in telecommunications such as –

  1. Whether a court in the United Kingdom has jurisdiction and may properly exercise a power, without the agreement of both parties to grant an injunction to restrain the infringement of a UK patent where the patented invention is an essential component in an international standard of telecommunications equipment, which is marketed, sold and used worldwide, unless the implementer of the patented invention enters into a global licence of a multinational patent portfolio.
  2. Whether a UK Court can determine royalty rates and other disputed terms of such a global licence
  3. The circumstances in which it is appropriate for English court to grant a prohibitory injunction or to award damages.

 Answering the aforesaid questions, the Full Bench of Lord Reed, Lord Hodge, Lady Black, Lord Briggs and Lord Sales, JJ., unanimously held that English courts have the power to require telecoms companies and smartphone makers to take out a global patents licence or face a UK Court injunction. It was further observed that the contractual arrangements European Telecommunications Standards Institute (ETSI) has created under its IPR Policy give the English courts jurisdiction to determine the terms of a global license of a multi-national patent portfolio.

The instant matter consisted of 2 appeals which concern actions for infringement of UK patents said to be essential to the implementation of international standards for mobile telephony, such that it is not possible to make, sell, use or operate mobile phones and other equipment that is compliant with the standards without infringing the patents. Patents of this kind are called Standard Essential Patents (SEPs). The international standards in question are those set by the ETSI for 2G (GSM), 3G (UMTS) and 4G (LTE). Under its IPR Policy, ETSI requires the SEP owner to give an irrevocable undertaking to license their patented technology on terms that are “fair, reasonable and non-discriminatory” (FRAND). The first appeal concerns an action brought by Unwired against Huawei for infringement of five UK patents which Unwired claimed to be SEPs. The second appeal concerns an action brought by Conversant against Huawei and ZTE for infringement of four of its UK patents.

Acknowledging the importance of the issues raised in the instant appeal vis-à-vis international market in telecommunications, the Full Court meticulously addressed the questions-

  • Regarding Jurisdiction and Forum Conveniens – It was contended that properly construed, ETSI’s IPR Policy only permits the English courts to determine the terms of a license of UK SEPs. Dismissing the contention, the Bench held that English courts have jurisdiction and may properly exercise their powers of granting injunctions etc. Questions as to the validity and infringement of a national patent fall to be determined by the courts of the state which has granted the patent. It was observed that the IPR Policy envisages 2 things namely- the courts may decide whether or not the terms of an offered licence are FRAND and that the courts should look to and draw on commercial practice in the real world while making this assessment. Regarding the issue of proper Forum, the Court noted that Chinese courts currently do not have the jurisdiction needed to determine the terms of a global FRAND licence, unless all parties agree that they should do so.
  • Regarding Royalty- upon perusing the contention that Unwired should have offered Huawei a licence with a worldwide royalty rate because non-discrimination limb of the FRAND undertaking means that ‘like situations must be treated alike and different situations differently’, the Court observed that non-discriminatory part of the undertaking indicates that, to qualify as FRAND, a single royalty price list should be available to all market participants. This must be based on the market value of the patent portfolio, without adjustment for the characteristics of individual licensees.
  • Regarding Injunctions and Damages- it was contended by Huawei that, even if it is infringing Unwired and Conversant’s SEPs, the more appropriate and proportionate remedy would be for the Court to award the claimants damages. Rejecting the argument, the Bench held that an award of damages would not be an adequate substitute for an injunction. It was observed that there is no risk that Unwired or Conversant could use the threat of an injunction as a means of charging exorbitant fees, since they cannot enforce their rights unless they have offered to license their SEPs on terms which the Court is satisfied are FRAND.

[Unwired Planet International Ltd. v. Huawei Technologies (UK) Co Ltd., 2020 Bus LR 2422, decided on 26-08-2020]


Sucheta Sarkar, Editorial Assistant has put this story together

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]

Case BriefsHigh Courts

Kerala High Court: Shaji P. Chaly, J. heard a petition that sought relief due to the infringement of the right to vote as the petitioner’s name was named was removed from the voter’s list. The Court stated that the relief sought by the petitioner had become infructuous. However, the Court stated that deletion of name from voter’s list is a serious matter and it must be dealt with proper care.

The petitioner, a resident of Thiruvananthapuram, had an electoral identity card issued by the Election Commission of India. Despite having voting rights, in the Lok Sabha elections 2019, his name was omitted from the voter’s list. The petitioner always had voting rights but his name was removed from the list on the grounds that he had ceased to be an ordinary resident of the said constituency. However, his family members continued to have their names in the voter list. He requested the respondent authority to restore his voting rights so that he could exercise his voting rights. But when no action was initiated by the respondent, he approached this Court for relief by way of filing the present petition.

Petitioner appeared in person and contended that he was residing in the same building ever since he had voting rights. He submitted that although he and his family had shifted to a temporary residence till the time repair was carried out in his original residence, his family members still had their name in the voter’s list while his name was omitted from the list.

Counsel for the respondent, Murali Purushothaman, contended that according to Sections 22 and 23 of Representation of the People Act, 1951 (hereinafter referred to as “the Act”) any new name could not be included in the electoral list after nominations had been filed in the respective constituencies. He contended that petitioner’s name was deleted on the ground that he shifted to a different residence. Moreover, the Election Commission had also published a draft electoral roll and asked for objections if any, but the petitioner did not submit his objection for deletion of his name.

The Court held that voting rights of a person are valuable rights and it cannot be taken away by any means. Section 22 of the Act stated that before removing any name from the voter’s list, it was the duty of Electoral Registration Officer to hear that person in respect of any action being taken. Court stated these provisions are based on principles of natural justice and must be strictly followed.

The Court directed the respondent to conduct a detailed enquiry in the matter and if necessary, take appropriate actions against the officers who removed the name of the petitioner from voters list. It was also directed that in the event of petitioner making an application, his name be restored in the voter’s list.

The writ petition was disposed of in the above terms.[A. Subair v. Chief Election Commissioner of Kerala, 2019 SCC OnLine Ker 1914, decided on 10-06-2019]

Case BriefsHigh Courts

Delhi High Court: In what may probably go down as the first of its kind decision in India on the subject of anti-piracy and intellectual property law, Manmohan, J. passed a decree of permanent injunction against “rogue websites” from infringing, in any manner, the plaintiff’s copyrighted work. Internet Service Providers (“ISPs”) and the Government departments concerned were also directed to block access to such rogue websites and “hydra headed websites”.

The Court was deciding a bunch of suits brought by UTV Software Communications Ltd., Twentieth Century Fox Film Corpn. and others, all of which are companies engaged in the business of creating content, producing and distributing cinematographic films around the world including in India. They primarily sought injunction restraining infringement of copyright on account of defendants communicating to the public the plaintiffs’ original content/cinematographic works without authorization. The defendants that were impleaded can be categorised in four classes — (i) Certain identifiable websites that were unauthorisedly communicating the plaintiffs’ copyrighted work; (ii) John Doe defendants who were hitherto unknown parties engaged in the unauthorised communication of the plaintiffs’ copyrighted works, including the registrants of the defendant-websites, uploaders, creators of redirect/mirror/alphanumeric websites; (iii) ISPs that provide internet access, enabling users to visit any website online, including the defendant-websites; and (iv) Department of Telecommunication (“DoT”) and Ministry of Electronics and Information Technology (“MEITY“).

This was a rare occasion where in an ex-parte matter, questions of law of general public importance arose for consideration. The Court was of the view that the general industry evidence appears consistent with a hypothesis that digital piracy has hurt the movie industry. In fact, online piracy has had a very real and tangible impact on the film industry and the rights of the owners. The Copyright Act, 1957 confers a bundle of exclusive rights on the owner of a “work” and provides for remedies in case the copyright is infringed. The Court was of the opinion that it had ample powers to mould the relief to ensure that the plaintiff’s rights are adequately protected.

The Court discussed the relevant law on the subject including Sections 2(y),(f) and (ff), 14(d), 51(a)(i) and (ii), 52(1)(c) and 55 of the Copyright Act; and Sections 2(1)(w), 69-A and 79 of the Information Technology Act, 2000; along with relevant case laws, both domestic and foreign. The seminal points and the Court’s conclusion after due consideration is, in seriatim, delineated below:

(a) Infringer of copyright on the internet not to be treated differently from an infringer in the physical world — If the view of the “Internet exceptionalists school of thought” is accepted, then all infringers would shift to the e-world and claim immunity! A world without law is a lawless world. There is no logical reason why crime in the physical world is not a crime in the digital world especially when the Copyright Act does not make any such distinction.

(b) Seeking blocking of a website dedicated to piracy does not make one an opponent of free speech and open internet — Advocating limits on accessing illegal content online does not violate open internet principles. The key issue about Internet freedom is not whether the Internet is and should be completely free or whether Governments should have unlimited censorship authority, but rather where the appropriate lines should be drawn, how they are drawn and how they are implemented.

(c) What is a “rogue website” — Music and film piracy are primarily facilitated on the net by Flagrantly Infringing Online Locations (“FIOLs“) or Rogue Websites. They are those websites which primarily and predominantly share infringing/pirated content or illegal work. The registrant details of these websites are unknown and any or all contact information is masked/blocked. In Para 59 of its judgment, the Court also chalked down some illustrative factors to be considered for determining whether the website complained of is a FIOL/rogue website. It was clarified that such factors do not apply to intermediaries as they are governed by IT Act, having statutory immunity and function in a wholly different manner.

(d) Test for determining a rogue website is qualitative — If the test to declare a website as a rogue website is that it should contain only illicit or infringing material, then each and every rogue website would add a small percentage of legitimate content and pray that it be not declared an infringing website! Consequently, the real test for examining whether a website is a rogue website is a qualitative approach and not a quantitative one.

(e) Defendant-websites were rogue websites — The Court gave a list of reasons to conclude that the defendant-websites satisfied the “qualitative test” and therefore were rogue websites. The reasons include that they do not provide any legitimate contact details and hide behind the veil of secrecy, they encourage users to circumvent detection or blocking orders, etc.

(f) Court is justified to pass directions to block the rogue websites — Website blocking in the case of rogue websites, like the defendant-websites, strikes a balance between preserving the benefits of a free and open Internet and efforts to stop crimes such as digital piracy. The Court was also of the opinion that it has the power to order ISPs and DoT as well as MEITY to take measures to stop current infringements as well as if justified by the circumstances prevent future ones.

(g) Dealing with the “hydra headed” rogue websites — The question that arose for consideration was how should courts deal with hydra headed websites, who on being blocked, actually multiply and resurface as alphanumeric or mirror websites. In the present batch of matters though the Court had injuncted the main website by way of the initial injunction order, yet the mirror/alphanumeric/redirect websites had been created subsequently to circumvent the injunction orders.

Though there is no similar procedure for issuing a “dynamic injunction” as is issued by courts in Singapore and elsewhere, yet in order to meet the ends of justice and to address the menace of piracy, the court in the exercise of its inherent power under Section 151 CPC permitted the plaintiffs to implead the mirror/redirect/alphanumeric websites under Order 1 Rule 10 CPC as these websites merely provide access to the same websites which were the subject of the main injunction. On being satisfied that the impugned website is indeed a mirror/redirect/alphanumeric website of the injuncted rogue website(s) and merely provides new means of accessing the same primary infringing website, the Joint Registrar shall issue directions to ISPs to disable access in India to such mirror/redirect/alphanumeric websites in terms of the orders passed.

Relief

(i) Keeping in view the aforesaid findings, a decree of permanent injunction was passed restraining the defendant-websites, tehir owners, partners, proprietors officers, servants, employees, and all others in capacity of principal or agent acting for and on their behalf, or anyone claiming through, by or under it, from, in any manner hosting, streaming, reproducing, distributing, making available to the public and/or communicating to the public, or facilitating the same, on their websites, through the internet in any manner whatsover, any cinematograph work/content/programme/show in relation to which plaintiffs have copyright.

(ii) A decree was also passed directing the ISPs to block access to the defendant-websites.

(iii) DoT and MEITY were directed to issue a notification calling upon the various internet and telecom service providers registered under it to block access to the defendant-websites.

(iv) The plaintiffs were permitted to implead the mirror/redirect/alphanumeric websites under Order 1 Rule 10 CPC in the event they merely provide new means of accessing the same primary infringing websites that have been injuncted.

(v)Plaintiffs were held entitled to actual cost of litigation.

Suggestion

As a measure for curbing pirated content and the dark-net for promoting legal content and accelerating the pace of Digital India, the court suggested that since website blocking is a cumbersome exercise and majority of the viewers/subscribers who access, view and download infringing content are youngsters who do not have knowledge that the said content is infringing and/or pirated, the MEITY/DOT should explore the possibility of framing a policy under which a warning is issued to the viewers of the infringing content, if technologically feasible in the form of e-mails, or pop-ups or such other modes cautioning the viewers to cease viewing/downloading the infringing material. In the event, the warning is not heeded to and the viewers/subscribers continue to view, access or download the infringing/pirated content, then a fine could be levied on the viewers/subscribers.

Words of appreciation

The court also appreciated the services rendered by Hemant Singh, Amicus Curiae as well as Saikrishna Rajagopal and the team of Advocates assisting them. They not only handed over innumerable notes, charts and articles but explained with great patience certain technologies that the Court was not familiar with. [UTV Software Communication Ltd. v. 1337X.to, 2019 SCC OnLine Del 8002, dated 10-04-2019]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Jayant Nath, J. passed a permanent injunction decree against the defendants, restraining them from using the trademark “AAJ TAK AAMNE SAAMNE”; “AAJ TAK”; “aajtakaamnesaamne.com” or any other trademark deceptively or phonetically similar to registered trademark “AAJ TAK”.

In the present case, the plaintiffs filed the suit for permanent injunction against the defendants for infringement and passing off trademark “AAJ TAK” or any other trademark deceptively similar to plaintiffs registered trademark “AAJ TAK” in relation to magazine, newspaper, journal etc.

The contentions as placed upon by the plaintiffs were that they were the registered owner of immensely popular trademark “AAJ TAK” which has been licensed to Plaintiff 2 for running a 24 hour Hindi news channel. Defendant 1 was an individual who claimed to own, print and publish fortnightly magazine “AAJ TAK AAMNE SAAMNE”. Plaintiffs came to know recently of the infringement and violation of their trademark by the defendants when they received an email through defendant’s employee.

Further, the plaintiff submitted that the act of the defendant was not only dishonest, illegal and malafide but clearly infringed upon the intellectual property rights of the plaintiffs. Plaintiff 1 was the registered proprietor of the trademark “AAJ TAK” along with various other composites in various classes which were mentioned in the plaint within the meaning of Section 2(zg) of Trade Marks Act, 1999. The said trademark “AAJ TAK” had earned the status of a “Well-Known Trademark”. Defendants were clearly trying to ride and encash the goodwill earned by the plaintiffs over a long period of use.

Therefore, the High Court was of the view that the averments made in the plaint and the unrebutted evidence filed by the plaintiffs established that they were the registered proprietor of the said trademark “AAJ TAK”, thus they had a statutory right to the exclusive use of the same. A decree of permanent injunction was passed in favour of the plaintiffs due to the clear violation of their rights and lacking bonafide on the part of the defendants. [Living Media India Ltd. v. Mandeep Kaur, CS (COMM) 990 of 2016, decided on 16-11-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Pratibha M. Singh, J. decreed a suit in terms of granting a permanent injunction restraining the defendants from selling plaintiff’s counterfeit products.

The plaintiff—Giorgio Armani SpA—is an Italian company that owns various ARMANI marks that makes it one of the leading fashion brands worldwide. The defendants were in the business of organising exhibitions of various high-end designer products including those of the plaintiff. The plaintiff alleged that its products were being sold without authenticity cards or nay price tag and hence the defendant’s activities were likely to cause huge damage to plaintiff’s marks and business. It was also pleaded that since the products did not bear price tags, which could not have been the case if the products were original, they could be easily inferred as being counterfeit.

The High Court perused the record and held that the fact that the defendants were offering for sale products under the various ARMANI marks and holding exhibitions in respect thereof showed that they were well aware of the value of the said marks. Legal position was noted to be that under Sections 29 and 30 of the Trade Marks Act, 1999, causing infringement to a product would also constitute infringement. It was noted that the defendants neither argued nor pleaded that the products were genuine. The fact of missing price tags added credence to the plaintiff’s claim that the products were counterfeit. The activities of the defendant were held to be an infringement of plaintiff’s marks. Therefore, the suit was decreed in terms of granting permanent injunction against the defendants. [Giorgio Armani v. Yogesh Mordani,2018 SCC OnLine Del 12078, dated 03-10-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Manmohan, J. decreed a suit for grant of a permanent injunction against the defendant for infringement of plaintiff ’s trademarks.

It was an admitted fact that the plaintiff was a registered owner of the trademarks SUMEET and SUMEET TRADITIONAL for their power operated kitchen mixies for domestic use. The mark was used by the mother of the director of plaintiff company since 1963. Registration of trademark under Class 7 of the Trade and Merchandise Marks Act, 1958 was granted in 1970 and assigned to the company in 1981. The defendant company was alleged to unauthorisedly sell identical mixies with same trademarks. The parties had earlier entered into an Agreement for Subcontract for manufacture of 2 specific models of mixies. Since the defendant was violating the Agreement by selling goods under the plaintiff’s trademark, the Agreement was terminated. Plaintiff submitted that the use of the said marks by the defendant post-termination of the Agreement was likely to cause confusion and deception amongst the purchasing public.

The High Court perused the record and on appreciation of evidence, the Court was of the view that the suit of the appellant deserved to be decreed. In the opinion of the Court, the triple identity test was satisfied. The test being —

  • Firstly, use of identical or deceptively similar trademark.
  • Secondly, use of trademark in relation to identical goods.
  • Lastly, use of trademark in relation to identical goods having identical trade channels (products sold via same trading channels).

From the evidence on record, according to the Court, it was apparent that despite termination of the Agreement, the defendant malafidely continued to affix plaintiff’s trademark on their product which amounted to infringement of the same. Accordingly, the suit was decreed in favour of the plaintiff with actual costs. [Sumeet Research and Holdings (P) Ltd. v. Sipra Appliances,2018 SCC OnLine Del 11341, dated 14-09-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Pratibha M. Singh,  J. allowed a suit filed by Disney Enterprises Inc. Against the defendants-chocolate maker for permanently restraining infringement of its copyright in the character Lightning McQueen from the movie Cars.

The plaintiff held copyright in the character Lightning McQueen, an animated race car from the movie named above, in the United States. The defendants were manufacturing chocolates by the name of Choco Car, consisting of an artistic work/character which was a complete imitation of Lightning McQueen. The plaintiff, therefore, filed the present writ suit seeking permanent injunction against the defendants and damages for infringement.

The High Court termed the case as a “classic case of character merchandising”. It was noted as well settled that characters can acquire the status of trademarks and can also be protected under copyright law. It was observed that the importance of preventing well-known characters from being misused for commercial products lies in the fact that the creation of fictional characters requires great amount of creativity and innovation. It was further observed that the plaintiff’s copyright was liable to be protected in India in view of the International Copyright Order as also India being a party to Berne Convention for Protection of Literary and Artistic Works and the Universal Copyright Convention. Holding thus, the suit filed by the plaintiff was allowed and a decree of permanent injunction was passed against the defendants. The defendants were further ordered to pay Rs 5 lakhs as damages to the plaintiff. [Disney Enterprises Inc. v. Pankaj Aggarwal,2018 SCC OnLine Del 10166, dated 10-07-2018]

Case BriefsSupreme Court

Supreme Court: The Bench comprising of A.K. Sikri and Ashok Bhushan, JJ., allowed a civil appeal filed against the judgment of Karnataka High Court, whereby the decision of Intellectual Property Appellate Board cancelling the registration of appellant’s trademark was upheld.

Respondent was a cooperative of milk producers who sold milk and milk products under the mark NANDINI. It has registration of the mark under Classes 29 and 30 of Schedule IV to the Trade Mark Rules, 2002. The appellant, on the other hand, adopted the mark ‘NANDHINI’ for its restaurants and applied for registration of the said mark in respect of various foodstuff sold by it. Registration of the mark was allowed in favour of the appellant by the Deputy Registrar of Trade Marks. Respondent objected that the mark was deceptively similar to that of the respondent’s, and was likely to deceive the public or cause confusion. According to the respondent, it had exclusive right to use the said mark and any imitation thereof by the appellant would lead the public to believe that the foodstuff sold by the appellant were, in fact, that of the respondent. The respondent appealed to the IPAB against the decision of Deputy Registrar, which was allowed. Subsequently, the writ petition filed by the appellant thereagainst was dismissed by the High Court.

The Supreme Court proceeded in the matter on the presumption that NANDINI trademark of the respondent had acquired distinctiveness. The fulcrum of the dispute was whether the registration of mark ‘NANDHINI’ in favour of the appellant would infringe the rights of the respondent. The Court, after considering the facts, found it difficult to sustain the order, as it did not find the two marks deceptively similar. Applying the principles laid down in National Sewing Thread Co. v. James Chadwick and Bros., AIR 1953 SC 357, to the instant case, the Court found that the visual appearance of the two marks was different and they relate to different products. Further, looking at the manner in which they were traded, it was difficult to imagine that an average man of ordinary intelligence would associate the goods of the appellant to that of the respondent. The Court held that the use of the mark ‘NANDHINI’ by the appellant in respect of its different goods would not be detrimental to the purported distinctive character or repute of the trademark of the respondent. Therefore, the impugned order was held to be unsustainable in the law which was accordingly set aside. The appeal was, thus, allowed and order of the Deputy Registrar granting registration in favour of the appellant was restored. [Nandhini Deluxe v. Karnataka Coop. Milk Producers Federation Ltd., 2018 SCC OnLine SC 741, dated 26-07-2018]

Case BriefsSupreme Court

Supreme Court: R. Banumathi, J. while delivering the Judgment for herself and Ranjan Gogoi, J. dismissed an appeal filed against the Judgment of Calcutta High Court wherein the respondents were allowed to use the word MALABAR in conjunction with the word ‘BAROMA’ for selling basmati rice.

Appellant claimed to use the mark ‘MALABAR’ to sell biryani rice since 2001. Appellant filed a suit for infringement and passing off against the respondents who were using the mark ‘MALABAR GOLD’ which was being used to sell the same product, i.e., biryani rice. An interim injunction was granted against the respondents restraining them from using the said mark. In course of the proceedings, the respondents submitted the modified mark that they proposed to use, having the word BAROMA in conjunction with the word MALABAR, and with changed get up. Consequently, the interim injunction was vacated. Aggrieved, this appeal was filed by the appellant.

The Supreme Court found that the appellant had their label mark registered under Class 30 which had a disclaimer (limitation) that there was no exclusive right in the word ‘MALABAR’. Accordingly, the appellant could not claim to use the word MALABAR to the exclusion of everyone else. Other marks registered under the same class using the word MALABAR in conjunction with other words were brought to the notice of the Court. In Court’s view that High Court was right in holding that appellant did not have exclusive right over the word MALABAR. On comparison, the Court held that the marks of both the parties seem different. The proposed mark of the respondents was different in get up as well as the word BAROMA used in conjunction made it distinct. Holding that there was no deceptive similarity between the two marks, the Court found no infirmity with the impugned order. The appeal was dismissed. [Parakh Vanijya (P) Ltd. v. Baroma Agro Product,  2018 SCC OnLine SC 686, decided on 12-07-2018]

Case BriefsHigh Courts

Calcutta High Court: A Single Judge Bench comprising of Soumen Sen, J., addressed the grievance of the petitioner who has prayed for the passing of “John Doe” order against the respondents who are responsible for the infringement of petitioner’s copyright and trademark.

The brief facts of the case are that the petitioner is involved in the business of  B2B e-commerce portal and since its inception in the year 1996, he had coined and adopted a unique mark known as “INDIAMART” for use in connection with the goods and services falling under various categories. He also claims that he has been using the said mark regularly and also got it registered in various forms as a wordmark, logo mark, label mark, and device mark. The petitioner has furnished all the details for the said registrations.

In regard to the copyright and trademark infringement, petitioner became aware of respondent’s having slavishly imitated the petitioner’s unique mark “INDIAMART” in one form or the other. For the said claim, petitioner’s have successfully disclosed all the copies which show that the petitioner’s mark is being infringed. One of the claims being put forward by the petitioner is that clearly the respondent’s have tried to confuse and deceive the public over the reputation of the plaintiff’s mark. Further, it has been stated by the petitioner that the respondents have infringed the copyright of the petitioner by using the proprietary information/data including such information, etc. which comes under the literary works of the petitioner.

Therefore, the petitioner has demanded the blocking of such websites which clearly are constituting to piracy and violation of the copyright and trademark use of the petitioner and on that note, he has prayed for John Doe orders of injunction.

The Hon’ble High Court, by recording the documents furnished by the petitioner and the fact that respondents have slavishly imitated the trademark of the petitioner which brings the Court to the claim of the petitioner about its goodwill and thereby allowing the relief to the petitioner as prayed for and concluding by giving direction to the petitioner to communicate this order to all the defendants. [Indiamart Intermesh Ltd. v. Ankit; 2018 SCC OnLine Cal 2379; dated 16-05-2018]

Case BriefsHigh Courts

Karnataka High Court: A Single Judge Bench comprising of L. Narayana Swamy, J. dismissed a miscellaneous first appeal while vacating the injunction passed against the respondent prohibiting him from using the trademark ‘PATIL FRAGRANCES’.

The appellant filed a suit against the respondent for infringement and passing off its trademark and trade name ‘PATIL AND PATIL PARIMALA WORKS’ by using identical and deceptively similar trade name. An application for interim injunction was also filed to restrain the respondent from using the name ‘PATIL FRAGRANCES’ during pendency of the suit, which was granted. Thereafter, the respondent too filed an IA for vacating the injunction which was allowed and thereby the injunction was vacated. The appellant filed the instant appeal impugning the order passed by the XVII Additional City Civil Judge vacating the injunction granted initially against the respondent.

The High Court, in order to decide the appeal, weighed the matter to find out in whose favour lies the balance of probabilities. The Court found that the appellant and the respondent belonged to the same family; they used the same surname; the respondent was a former employee and the brother of the appellant; various members of the family use the surname ‘PATIL’ for conduct of their business. The credential of the respondent having the same name was verified by various government documentary proofs. Relying on Section 35 of the Trade Marks Act, the Court held that even a registered user or a registered trademark proprietor cannot interfere with the bona fide use by a person of his own name. Accordingly, the Court held that it was not a case of infringement of trade mark, but it was a clear case of bona fide use of his name by the respondent. In such circumstances, the Court dismissed the appeal and upheld the impugned judgment vacating the injunction passed against the respondent. [Somashekar P. Patil v. D.V.G. Patil,2018 SCC OnLine Kar 637, dated 08-05-2018]

Op EdsOP. ED.

“Property is not the bastion of egoism but rather the vehicle of social exchange.”

— Joseph Kohler, German scholar[1]

One cannot negate the steady escalation of technology or dispute its benefits, but the recent trend of protection sought under intellectual property rights, spurred by this monstrous growth is a distress signal. The trend can be labelled in just one term-hashtags. For those who are fortunately (or not) unaware of the hashtag culture, it is a tool to characterise content into groups; by placing a “#” character, also known as the hash symbol, in front of a word or a phrase, the author makes it easier for the reader to locate a work when searched by the specific word or phrase.

Hashtags are all around us. They are online, offline and the term was also announced by Oxford University Press as “Children’s Word of the Year” in 2015.[2] No more a mere symbol on the keypad of a phone, hashtags are serving as investment points for companies wanting to carve a brand niche. It is interesting to learn that popular brand campaigns #HowDoYouKFC and #McDstories, belonging to food giants KFC and McDonald, respectively, the soft drink specialist Coca-Cola company’s #smilewithacoke, the viral fundraiser #IceBucketChallenge and the global phenomenon of #TBT popularised by Instagram, are protected as trade marks. Surprisingly so, by the end of 2015 more than two hundred hashtags were registered as trade marks in the United States of America, while thousands more awaited their chance. An article published in WIPO Magazine last year[3], cites a survey establishing 64% hike in hashtag trade mark applications in 2016 as compared to previous year. Is this not a cause for concern? By according such protection, we may have diluted the concept of IPR rather than expanding it.

In 2013, the United States Patent and Trade marks Office (USPTO) addressed “Hashtag Trade marks” in the Trade mark Manual of Examining Procedure.[4] It recognised that a term containing the hash symbol or the term hashtag may be registered as a trade mark, but “only if it functions as an identifier of the source of the applicant’s goods or services”. It states further, “Generally, the hash symbol and the wording Hashtag do not provide any source-indicating function because they merely facilitate categorisation and searching within online social media … if a mark consists of the hash symbol or the term Hashtag combined with wording that is merely descriptive or generic for the goods or services, the entire mark must be refused as merely descriptive or generic.”

What was a modest beginning in the year 2007, a decade later, hashtag has earned a remarkable status. And with an unprecedented growth in social media, hashtags have managed a mind boggling feat. Safe to say, hashtags have engulfed humanity, with not a life remaining untouched (except of course, lives in the remotest parts of the earth). Addressing the concern mentioned in the previous paragraph, it is worrisome to imply gullibility in the IPR regime and the regime needs to be strengthened at a faster pace in order to maintain its sanctity.

Intellectual property rights—A social contract

IPR protection is commonly placed under two major theories—(i) Utilitarian (ii) Natural; the former recognising a creation or an invention thereby incentivising to create or invent further, the latter backing the idea that an individual must be able to protect the result of their creative, inventive or commercial labour. Society has a need for intellectual productions in order to ensure its development and cultural, economic, technological and social progress and therefore grants the creator a reward in the form of an intellectual property right, which enables him to exploit his work and to draw benefits from it. In return, the creator, by rendering his creation accessible to the public, enriches the community. Intellectual property law is thus the product of a type of “social contract” between the author and society.[5]

Apart from the justifications, intellectual property rights too are attached with a social function. The social function which is inherent to any legal rule allows for the rights of the individuals to be weighed against competing rights.[6] Being part of a broader legal system, these rights must always be put in context with other rights of equal value and with collective interests. Thus, works protected as intellectual property are equally important for the society as for the creator and both parties must benefit from works of the intellect. However, looking into the recent trend of according trade mark protection to hashtags, it must occur to the legal minds, to shape the social function of IP in moderation. Where necessary, checks and balances must to be placed on the human expansionist behaviour, under which law is being subjected to unnecessary widening in accordance with technology.

Globally, economies are advancing at a swift rate based on “knowledge products and intangibles”, resulting in rapid expansion of IPRs. Author Christophe Geiger[7] cites the implications of widening the ambit of IPRs, in it that such multiplication is mindless, the consequences of which are not “thought through in advance”.

The ever-growing trade mark unit

Putting in perspective a wide understanding, a trade mark may be one or more words, devices or symbols—or composite of both-that is used to distinguish goods or services of one from others. Most scholars and courts agree that trade marks serve two purposes: to protect consumers from deception and confusion, and to protect the infringed mark as property. Traditionally, courts while deciding whether a trade mark is distinctive or not, will usually place a mark under any of the four categories:

(i) Generic,

(ii) Descriptive,

(iii) Suggestive, or

(iv) Arbitrary/Fanciful.

Such adjudication is based on the relationship between the mark and the good/service it is associated with. Moving further, the trade mark regime was widened to include unconventional categories such as shapes, smells, colours, sounds and so on. Currently, companies also seek to register slogans as trade mark, however, the spectrum of generic-to-arbitrary/fanciful is applicable in this case as to the usual marks.

With reference to the given background, the question that arises is whether hashtags fit in the traditional legal framework for trade mark? When companies can register words, phrases or slogans as trade marks, what difference does a hashtag make?

Outlook at trials

History is witness to the fact that a major shift in provisions of a law calls for the judiciary to decide the fate for the same. So has been the case with hashtag trade marks, however, the judiciary has been divided on whether trade mark protection granted to hashtags is valid. The outcomes have been inconsistent.

In Vahan Eksouzian v. Brett Albanese[8], the Court was to analyse whether the use of a hashtag (#cloudpen) was a violation of a settlement agreement clause that prohibited the use of the terms “cloud” and “pen” in close proximity as a unitary trade mark. The defendant owned the trade marks “Cloud PENS” and “Cloud PENZ” and the agreement prohibited the plaintiff from using “the words Cloud, Cloud V, and/or Cloud Vapes in close association with the words “pen”, “penz”, “fuel”, “pad”… in association with the plaintiff’s products as a unitary trade mark.” The Court held that there was no breach “because hashtags are merely descriptive devices, not trade marks, unitary or otherwise, in and of themselves”. It found that even though the hashtag used the registered mark, “using the hashtag in this manner was not an infringing act likely to cause confusion”.

This decision was further supported in AOP Ventures Inc. v. Steam Distribution LLC[9], where the plaintiffs alleged that the defendants caused infringement of its registered mark DRIP CLUB by using the hashtag #Dripclub in atleast five social media posts. The Court stated that merely using a trade mark as a hashtag does not cause infringement of that mark.[10]

Despite these two cases, there are courts that have looked at hashtag use as supporting a trade mark infringement claim. In TWTB Inc. v. Rampick[11], the Court found the use of hashtags to be relevant to a trade mark claim and considered the use of the hashtags as evidence of a former licensee holding itself out to be the same business as a current licensee. Interestingly, in Fraternity Collection LLC v. Fargnoli[12], the Court refused to dismiss a trade mark claim against a competitor’s use of a trade mark as a hashtag and noted that the use of a competitor’s name or product as a hashtag “could, in certain circumstances, deceive consumers.”

Also supporting the enforceability of trade mark rights against hashtag use is Coca-Cola Co. v. Whois Privacy Protection Service Inc./Thien Le Trieu, Le Trieu Thien[13], where WIPO noted that once a mark was determined to be protectable (or by extension, not protectable) there was no reason to analyse the hashtag version of that same term or mark. It stated, however, that a hashtag mark not based on an existing mark would be treated the same as a non-hashtag mark in analysis, and whether the mark had acquired secondary meaning would determine if it were protectable.

Conclusion

The debate goes on with equal amount of support and dissent for hashtags as trade marks. Not leaning towards procedural aspects, my argument sticks to a singular reservation i.e. the social function of IPR, which is to be beneficial to the individual creator and serve the community, at the same time. A single person or company’s rights must be weighed in harmony with the rights of the society as a whole. If the right is to be used in accordance with its function, it must not be used “anti-socially” i.e. disregarding certain fundamental values and competing rights.[14] To insist on the social functions of IPRs is thus to identify a need for moderation and balance in the conception and implementation of these rights.[15]

With the meteoric percolation of social media into daily lives of people, it becomes increasingly important to limit the philosophical basis of IPR, to not bring in any and everything under the sun within an overcrowded umbrella of IP protection. In doing so, it is necessary that the underline idea behind IP protection is remembered, to give necessary protection to the creator, not a monopoly, thus giving others a chance to create further basing on what is already present. Thus, it is the need of the hour to restrict the tendency of excessiveness and harness the IPR regime to its function in order to maintain the flow of creativity in its purest sense.

The foundational philosophy of intellectual property is not to provide monopoly but competitive property rights; to promote healthy competition and lend help to creativity. However, the flurry with which private corporations take over social media with tools like hashtags, can have a cascading effect on rise in litigations. While lawmakers and judiciary must look into easing the chaos on trade mark registers, to restore strength in the IPR regime, a unanimous global decision on the parameters of IPR protection will certainly aid the situation.

 

*Hetvi Trivedi is Research Associate, GNLU-GUJCOST Research Centre of Excellence in IP Laws, Policies & Practices

[1]  Christophe Geiger, The Social Function of Intellectual Property Rights, Max Planck Institute for Intellectual Property and Competition Law Research Paper No. 13-06 (2013).

[2]  David Sillito, Hashtag is “children’s word of year”, available at <http://www.bbc.com/news/entertainment-arts-32902170>.

[3] Claire Jones, Hashtag Trademarks: what can be protected? WIPO Magazine, October 2017 available at <http://www.wipo.int/wipo_magazine/en/2017/05/article_0009.html>.

[4]USPTO, TMEP §1202.18, available at <https://tmep.uspto.gov/RDMS/TMEP/print?version=Jan2015&href=ch1200_d1ff5e_1b5ad_3bc.html>.

[5] Christophe Geiger, The Social Function of Intellectual Property Rights, Max Planck Institute for Intellectual Property and Competition Law Research Paper No. 13-06 (2013).

[6]  Ibid.

[7]  Id., at 5.

[8]  2015 WL 4720478 (CD Cal 7-8-2015).

[9]  2016 WL 7336730 (CD Cal 11-10-2016).

[10] Prashant Dayal, #Trade marked: Why Hashtag Trade marks should stay, available at <https://www.wisbar.org/aboutus/forlawstudents/Documents/Prashant%20Dayal%20-%20Submission.pdf>.

[11]  152 F Supp 3d 549 (ED La 2016).

[12]  2015 WL 1486375 (SD Miss 31-3-2015).

[13]  2016 WL 692866, Case No. D2015-2078.

[14]  Christophe Geiger, The Social Function of Intellectual Property Rights, Max Planck Institute for Intellectual Property and Competition Law Research Paper No. 13-06 (2013).

[15]  Ibid.

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Jayant Nath, JJ., disposed of a suit before it. The suit was filed seeking a decree of permanent injunction to restrain the defendant, it’s partners, employees etc from using the offending trademark KWALTY and/or the offending bottle shape as represented in the plaint and/or any other mark which is deceptively or confusingly similar to the registered trade mark KINLEY and DANUBE BOTTLE shape of Plaintiff 1 as a trade mark or part of a trademark or any other mark to infringe the plaintiff’s trade mark.

The Court noted that Plaintiff 1 is the registered proprietor of the trademarks DANUBE BOTTLE shape, KINLEY and KINLEY (label). The trademark shape was first adopted in 2006 in Turkey and has seen use since 2008 in India. The shape is associated with considerable goodwill and reputation. It was pleaded that the plaintiffs have invested enormous amounts of money towards protection, promotion and advertising of the trade mark KINLEY. The defendant had, apart from copying the shape of the bottle, also adopted a label virtually identical to the KINLEY (label) of the plaintiff.

The defendant was served through publication but had refused to accept service. The defendants were proceeded against “ex-parte”. No one appeared for the defendant and also no written statement was filed. The defendant continued to flout the interim orders passed by the Court and hence, the plaintiffs were declared to be free to pursue any action as per law against the defendant. [The Coca-Cola Company v. Mr. Dwarkanath, 2018 SCC OnLine Del 7406, decided on 15.02.2018]