Case BriefsHigh Courts

Himachal Pradesh High Court: Ajay Mohan Goel, J. entertained a writ petition filed under Article 227 of the Constitution of India, where the petitioner had challenged the order passed by the Civil Judge, where the application for appointment of a Revenue Officer as a Local Commissioner under Order 26 Rule 9 CPC was allowed.

Brief facts necessary for the adjudication of the case were, that the respondent/plaintiff had filed a suit against the petitioners/defendants for a decree of an injunction for restraining the defendants from raising any construction, dispossessing, interfering, cutting, felling and removing the trees standing upon the suit land. In an alternative suit, the plaintiff had also prayed for possession of the said suit property. Subsequently, during the pendency of the said suit, the plaintiff had filed an application under Order 26 Rule 9 of the Code for appointment of any Revenue Officer as Local Commissioner for locating the exact nature and extent of encroachment by the defendants and fixing boundaries of the suit land.

The counsel for the plaintiff averred in the application that the parties had strained relation with each other; despite a status quo order was passed, the defendants interfered in the suit land, and they also encroached upon the suit land, hence appointment of a Local Commissioner was necessary for locating the exact nature and extent of encroachment by the defendants.

On the contrary, the counsel for the defendants resisted the application and submitted that it was always open to the plaintiff to have had approached the Revenue Authorities for getting the land demarcated and the Court was not to create evidence for either of the parties. It was further the case of the defendants that they were not interfering in the suit land nor they had any intention to do so and they were in possession of their property pursuant to the recent partition having entered into between the parties and the plaintiff was stopped from filing the application. It was denied by the defendants that they were encroaching upon the suit land, as alleged.

Trial Court allowed the application and held, that as issues were not yet framed in the main suit and as proceedings in the case were at a preliminary stage, therefore, if a Local Commissioner in the case was appointed, no prejudice was to be caused to the defendants, rather it was a help in the proper and final adjudication of the dispute between the parties.

But the defendant was not satisfied by the order of the Trial Court, hence, filed the instant petition, it was argued that the order was not sustainable in the eyes of law as was passed in hot haste as the issues were not framed. It was further argued that there was no necessity of such an application being entertained by the learned Trial Court because it was just a mere allegation of the plaintiff that the suit land stood encroached upon by the defendants, onus was upon him to prove the same and it was not for the Court to create evidence in favour of the plaintiff.

The Court contemplated the arguments of the parties and thus, observed that Order 26 Rule 9 of the Code, inter alia, provided that in any suit in which the Court deems a local investigation to be requisite or proper for the purpose of elucidating any matter in dispute, the Court may issue a commission to such person as it thinks fit directing him to, make such investigation and to report thereon to the Court. Meaning thereby that it has to be the satisfaction of the Court that a local investigation is necessary or proper for the purpose of elucidating any matter in dispute. Hence the Court held that, “This provision is not a tool which is to be permitted to be used by the parties concerned to create evidence in their favour. This important aspect of the matter has also been lost sight of by the learned Trial Court while passing the impugned order.” Hence the order for appointing a Local Commissioner was set aside.[Naseeb Deen v. Harnek Singh, 2019 SCC OnLine HP 1034, decided on 19-07-2019]

Case BriefsHigh Courts

Madras High Court: M. Govindaraj, J. disposed of a civil miscellaneous appeal, giving the appellant liberty to approach the trial court with appropriate application to vacate the injunction.

The present appeal was filed against the order of Principal District Judge granting an ex-parte injunction, wherein the appellant was directed not to supply the subject material other than to the respondent till the disposal of the suit. After receipt of the order, without approaching the trial court, the appellant preferred the present appeal directly.

The High Court was of the view that the appeal did not disclose any extraordinary circumstance or irreparable loss warranting interference. It was observed: “Normally this Court does not interfere with the discretionary power exercised by the Court unless it is fainted with the arbitrary exercise of such power, patently illegal or capricious. The appellant cannot approach this Court without exhausting the effective remedy available to him.”

Therefore, without going into merits, the Court disposed of the appeal by giving liberty to the appellant to approach the trial court with appropriate application to vacate the injunction.[Selva Spinners (P) Ltd. v. Liberty Clothing Co., 2019 SCC OnLine Mad 1515, decided on 16-04-2019]

Case BriefsHigh Courts

Delhi High Court: Pratibha Singh, J., while allowing the suit brought by Sun Pharma Laboratories Ltd., passed an order injuncting Ajanta Pharma Ltd. from selling any medicinal preparations, nutritional food supplements or any other preparations for human consumption for treating any illnesses or diseases under the trademark GLOTAB or any other mark identical or deceptively similar to the Sun Pharma’s mark GLOEYE.

The dispute between the plaintiff and the defendant was is in respect of two products used by patients of the age-related dimness of vision and diabetic retinopathy. They are sold under the trademarks GLOEYE and GLOTAB, respectively. Both are ocular medicines. Since they contain plant extracts, they are termed as “nutraceuticals” under Section 22 of the Food Safety and Standards Act, 2006.

Plaintiff’s case was that it commenced use of the mark GLOEYE in July 2005 and it was their registered mark. The defendant was also using the mark GLOTAB for the same purpose, i.e. medicine used by patients for the age-related dimness of vision and diabetic retinopathy. Incidentally, defendants mark was also a registered mark. The defendant was using the said trade mark since 2013. The plaintiff filed the present suit for an interim injunction.

Since both the trademarks were registered, the case for infringement of trademark could have been maintainable; thus,  the suit proceeded on the principles of “passing off”, as recognised under Section 27(2) of the Trade Marks Act, 1999. The High Court considered the question — is the test for infringement and passing off for nutraceutical products the same as the test applicable for pharmaceuticals?

Kapil Wadhwa, Devyati Nath and Deepika Pokharia, Advocates representing Sun Pharma, submitted that it was a clear prior user of the said mark by atleast 8 years. Mr Wadhwa submitted that the fact that the composition of two products is different enhances the chances of confusion, especially in products that are consumed for the same ailments. Per contra, Senior Advocate Sandeep Sethi, Jayant Mehta, Afzal B. Khan and Suhrita Majundar, Advocates appearing for Ajanta Pharma, resisted the suit. Mr Mehta submitted that both the products are prescription drugs, and the prefix ‘GLO’ is common to the trade. In addition, Mr Sethi submitted that since there had been no confusion for the last 6 years, this was not a case for grant of interim injunction.

The High Court found that nutritional food supplements and nutraceuticals are akin to medicines and pharmaceutical preparations. Reliance was placed on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 for the proposition that — “in respect of medicines and pharmaceuticals deception and confusion need to be avoided.”

Holding that the tests laid down in Cadila case were fully applicable to the present case, the Court observed: “the mere fact that these products are nutritional food supplements or nutraceuticals and are not pharmaceuticals in the strict sense is not convincing enough for adoption of a less stringent test … The mere fact nutraceuticals are termed so, as they contain ingredients derived from plants, does not mean that a lenient test needs to be adopted in respect of these products. The effects of the products and the consumers of the products all being similar in nature, the test applicable to pharmaceutical products would be applicable even to nutraceuticals. The Court, thus, rejected the defendant’s contention that the decision in Cadila case was not applicable.

Comparing the two products, the Court found that while both products are used for similar medical conditions and are anti-oxidant retinopathy drugs, there are marked differences between the two products. The Court was of the view that the two products were used for treating similar medical conditions, and it was not possible to accept the defendant’s explanation that it was a bona fide adopted of the mark GLOTAB. Moreover, the following were the factors which persuaded the Court to hold that the defendant’s mark was deceptively similar to that of the plaintiff’s mark:

a) ‘GLOTAB’ and ‘GLOEYE’ have the same prominent prefix, namely, ‘GLO’;

b) The Plaintiff’s product ‘GLOEYE’ is a tablet. ‘TAB’ is nothing but a short form for ‘tablet’;

c) The composition of these two products is different though both are ocular medicines.

d) The suffixes ‘EYE’ and ‘TAB’ in fact do not sufficiently distinguish the two products – and in fact, enhance the chances of confusion;

e) Both are nutritional food supplements. Both contain bilberry extract, but the remaining ingredients are different;

f) The chances of ‘GLOTAB’ being prescribed in place of ‘GLOEYE’ or a patient being dispensed with ‘GLOTAB’ in place of ‘GLOEYE? is quite high and cannot be eliminated

It was also observed that: “the settled law in passing off is that of probability or likelihood of confusion and not actual confusion. In Cadila, the Supreme Court has warned that in case of products used for the same ailments but with different composition, a more stringent test needs to be adopted.”

Holding that the nutraceuticals ought to be treated on par with pharmaceuticals, and applying the principles laid down in Cadila case, the Court held that Sun Pharma was entitled to an interim injunction. For all the above reasons, Ajanta Pharma was restrained as already mentioned above. Since Ajanta Pharma’s manufacturing license was of 2013, it was permitted to sell existing stock of its products and packaging under the mark GLOTAB subject to filing quarterly accounts of the same.[Sun Pharma Laboratories Ltd. v. Ajanta Pharma Ltd., 2019 SCC OnLine Del 8443, decided on 10-05-2019]

Case BriefsHigh Courts

Uttaranchal High Court: The Bench of Ramesh Ranganathan, C.J. and N.S. Dhanik, J. dismissed a writ petition seeking changes in road alignment and to issue mandamus commanding and directing the respondent to construct the road as per the old survey, the petition further wanted an injunction against the respondent against peaceful possession of irrigated land of the villagers.

The aggrieved petitioner claimed to be a farmer and a duly elected Gram Pradhan of the village. He contended that the roads earlier sanctioned, passed through the Village Panchayat Chamaswada, which would have benefited around 500 families and now the respondent State had shifted the route which now passes through a different village, thereby affected the interests of individuals (villagers). He further contended that Right under Article 300-A of the Constitution, has been violated as per the new layout plan. It drastically affected the interest of several private landholders and they will not get adequate compensation according to Right to Fair Compensation and Transparency in Land Acquisition, Rehabilitation and Resettlement Act, 2013.

The Court opinioned that, petitioner being a Gram Pradhan had a duty towards the people and in any case of grievance may put forward the case to State Government. In this particular case where the main issue was ‘where road should be laid’? or ‘whether the alignment of road should be continued’? is to be decided by Executive and it is out of the purview of Courts to adjudicate upon.

The Court further observed that, all such matters are of Executive realm and even under Article 226 of the Constitution; Courts don’t have the power to take over the functions allocated to Executives and the State agencies. Answering to the issue aforementioned related to violation of private rights of individuals, the Court held, “Needless to state that it is always open to the land-owners, who are aggrieved by the action of the Government in laying a road over their lands, to invoke the jurisdiction of this Court. Leaving it open to those land-owners, who may be aggrieved by the exercise undertaken by the respondents of laying a road without acquisition of their lands, to avail their judicial remedies.” Hence, the writ was dismissed as the petitioner had no locus standi in the relevant issue raised.[Bharat Singh v. State of Uttrakhand, 2019 SCC OnLine Utt 348, Order dated 2-05-2019]

Case BriefsHigh Courts

Bombay High Court: The Division Bench comprising of B.R. Gavai and Riyaz I. Chagla, JJ. partly allowed an appeal filed against the judgment allowing notice of motion restraining appellant from inter alia (i) telecasting or broadcasting or otherwise howsoever communicating to the public or publishing two Television Commercials (impugned TVCs) or any part thereof or any other advertisement of a similar nature in any language or in any manner causing the impugned TVCs or any part thereof or any other advertisement of a similar nature to be telecast or broadcast or communicated to the public or published in any manner and (ii) disparaging or denigrating the plaintiff’s KWALITY WALL’S products or the plaintiff’s business in any manner whatsoever.

Factual matrix of the case states that, plaintiff-Hindustan Unilever Limited (HUL) are one of India’s well-known and reputed company in the FMCG sector. Plaintiff states that “KWALITY” has been a well recognised brand in India, having been in the market for over 70 years and was acquired by the plaintiff before entering into the business of ice creams and desserts in India and KWALITY has been used along with plaintiff’s own global brand WALL’S as KWALITY WALL’S.

“KWALITY” enjoys a special status in the eye of public being a very popular trade mark.

Plaintiff’s state that the two impugned Television Commercials (TVCs) advertised by defendant 1 and 2 had an effect of disparaging the frozen desserts, majority of which are manufactured and marketed by the plaintiff. In the said TVCs, it is shown that the product of Defendant 1 is manufactured by using 100% milk whereas frozen desserts are manufactured by using Vanaspati. The point of concern placed by the plaintiff is that Vanaspati is considered to be having bad effects on the health of the consumers and plaintiff is not using Vanaspati, in fact it uses edible vegetable oil in its products. Further, the plaintiff has stated that as far as frozen desserts are concerned, they contain a small amount of edible vegetable oil. However, the impugned TVCs depict that frozen desserts contain 100% Vanaspati oil. The said TVCs are not permissible in law.

Defendants stand:

According to the defendants, the advertisements did not show product of the plaintiff, however only a comparison between the product of the defendants and the frozen desserts. The contention of the defendants was that at least 30% of the manufacturers of the frozen desserts use Vanaspati.

Learned Single Judge’s decision:

It had granted an order of injunction, due to which the aggrieved filed the present appeal.

Detailed contentions of the parties:

Learned Counsel Mr Kadam on behalf of Appellant/Defendant 1 stated that as far as the first TVC was concerned, the word used by the defendants was ‘Vanaspati’, and since plaintiff had an objection to use the word ‘Vanaspati’, the same was omitted in subsequent advertisement with the word ‘Vanaspati tel’ meaning ‘edible vegetable oil’.

Perusal of the complaint made by the plaintiff to ASCI i.e. Advertisement Standard Council of India would show that the objectionable word for them was ‘Vanaspati’. Therefore, it was submitted that defendants omitted the word ‘Vanaspati’ and substituted the same with ‘Vanaspati tel’, which is in fact used by the plaintiff in its product, the grievance could not survive. To determine whether a particular TVC disparages the product, Court needs to apply the “test of an ordinary person with reasonable intelligence”, but the procedure adopted by learned Single Judge was not permissible in law.

“While considering the advertisement, rival is not expected to be hypersensitive to the advertisement.”

Injunction passed also bars the appellant from even airing similar advertisement without defining the scope thereof. At the most, injunction passed should have been in respect of the TVCs which were impugned in the suit. It has been stated that the learned Single Judge has gone far ahead and granted injunction in the widest possible terms.

Counsel for the respondent Mr Chinoy stated that if TVCs are seen in its entirety, the impression that the ordinary person with reasonable intelligence would get is that, the product of the appellant is manufactured by using only milk whereas, frozen dessert, in which market, the Respondent 1/plaintiff holds majority shares, is manufactured by using ‘Vanaspati’. Further, it was stated that, “Insofar as puffing up of the product of the appellant is concerned, nobody could have objection, even if an untrue statement is made. However, the advertisement carrying the message which disparages the product of the competitors, would not be permissible in law.”

The present appeal is an appeal against the grant of injunction in favour of the plaintiff.

Decision of the High Court in the instant matter with in-depth analysis on the aspect of ‘disparagement’:

The bench stated that first impression upon seeing the advertisement one would get is that the product of the appellant, ice cream is manufactured by using 100% milk, whereas frozen desserts are manufactured by using 100% Vanaspati or Vanaspati tel.

“For deciding the question of disparagement, Court will have to take into consideration intent of the commercial, manner of the commercial and storyline of the commercial and the message sought to be conveyed by the commercial.”

Further, it was noted that it is clear on perusal of the TVCs that the manner in which the advertisement is aired, message that is sought to be given is that the frozen desserts are manufactured by using only Vanaspati tel which is harmful for the health. Therefore, the appellant cannot be permitted to air the advertisement which disparages the product of its competitors.

“While hyped-up advertising may be permissible, it cannot transgress the grey areas of permissible assertion, and if it does so, the advertiser must have reasonable factual basis for the assertion so made.”

Bench opined that the view taken by the learned single judge bench stating the TVCs to be disparaging in nature requires no interference. Though blanket injunction is not required as the entire TVC is not of objectionable nature. The appeal was thus partly allowed. [Gujarat Co-Operative Milk Marketing Federation Ltd. v. Hindustan Unilever Ltd., 2018 SCC OnLine Bom 7265, decided on 13-12-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Prathiba M. Singh, J. decreed a suit injuncting the defendant from unauthorisedly broadcasting the songs over which the plaintiff had a copyright.

The plaintiff — Super Cassettes Industries — filed a suit against the defendant (cable network) for infringement of its copyright in certain songs. It was alleged that the defendant broadcasted the said songs on its channel without permission or license. When the plaintiff sent notice to the defendant, it replied by stating that it did not own the channel in question. Subsequently, the present suit was filed.

The High Court noted that despite the service of summons and notice, the defendants did not put in appearance before the Court. It was also noted that the defendant made false reply to the notice sent by the plaintiff. In view of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts (Amendment) Act, 2018 as well as the Delhi High Court (Original Side) Rules, 2018, the Court observed it to be a well-settled law that “it is no longer necessary in every matter, even when the defendant is not appearing, that the plaintiff has to lead evidence. The filing of evidence can be exempted if, from the pleadings and documents relied upon, the suit can be decided.”On perusal of the screenshots submitted by the plaintiff, the Court was satisfied that the defendant was infringing the copyright of the plaintiff. In such view of the matter, the Court decreed the suit in favour of the plaintiff and granted an injunction against the defendant as prayed for by the plaintiff. Further, a decree of damages was passed in favour of the plaintiff in light of its false reply to plaintiff’s notice. [Super Cassettes Industries (P) Ltd. v. I-Vision Digital LLP, 2018 SCC OnLine Del 12384, decided on 12-11-2018]

Case BriefsHigh Courts

Punjab and Haryana High Court: A petition was filed before a Single Judge Bench of Tejinder Singh Dhindsa, J. wherein extraordinary jurisdiction of the High Court was invoked.

Petitioner had invoked the extraordinary writ jurisdiction of the High Court in order to seek issuance of directions to respondent not to forcibly and illegally interfere with the peaceful possession of the land. The land was alleged to be under the ownership of the petitioner. Petitioner, in addition to the above, sought directions praying for restraining the respondent from making changes in the revenue record and to restore possession of 2 marlas of land. Whereas the respondent submitted that the civil proceedings that had already initiated were in respect of the same land which the petitioner seeks directions for in this writ petition.

The High Court after perusing the submissions of both the parties observed that the petitioner himself brought to notice of the Court that a suit had been instituted praying for permanent injunction in respect of the land restraining gram panchayat and others from digging in the land and to change the nature of the agricultural land. Therefore, the Court refused to interfere in the instant writ petition. [Harbhajan Singh v. State of Punjab,2018 SCC OnLine P&H 1693, dated 02-11-2018]

Case BriefsHigh Courts

Jammu & Kashmir High Court: A Single Judge Bench of Sanjeev Kumar, J., dismissed a second appeal filed against the order of the appellate court.

The appellant and the respondent were joint owners of a particular piece of property, both of them had constructed their respective houses on the same piece of land. The dispute arose when the appellant used started construction on the land which was a common passage for both the parties.

The main issue, in this case, was whether a co-owner can seek an injunction, restraining the other co-owner from using a joint property or raising construction thereon without seeking relief of partition.

The Court observed that it is undisputed that the suit property was a common passage for both the parties and it is not the case of the defendant that except for the land under their respective occupation in the shape of construction of the houses, the rest of the land is vacant and un-partitioned. The existence of common passage was also backed by the evidence of Patwari who had inspected the land in presence of both the parties. In cases where one co-owner of a property encroaches upon the property which is jointly owned by all the co-owners, then in those cases, a suit for injunction-simpliciter is maintainable.

However, the Court held that there is no absolute law that a suit for injunction by one co-sharer against another co-sharer is not maintainable and the co-sharer approaching the Court should be relegated to the alternative efficacious remedy of seeking partition. Hence, the Court upheld the order of the appellate court and dismissed the appeal of the appellant. [Girdhari Lal v. Ram Lal, 2018 SCC OnLine J&K 693, order dated 03-10-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Pratibha M. Singh, J. granted injunction in favour of the plaintiff restraining the defendant from using the mark BURGER KING.

The plaintiff, Burger King Corporation, was the registered owner of the mark BURGER KING and its logo. It started its first restaurant in 1954 with the same name in Miami, Florida. At present, it owns some 13,000 restaurants internationally. The present suit was filed alleging that the defendants were operating a restaurant by the name BURGER KING RESTAURANT  in Varanasi. They had also applied for registration of the same. Registration was also sought by the defendants for the mark BURGER EMPEROR. The plaintiff issued a cease and desist notice in November 2011 which was not complied with. Under these circumstances, the plaintiff sought the permanent injunction against the defendants.

The High Court was of the view that it had to consider balance of probabilities in respect of adoption and use of the said mark and logo. The Court found an uncanny resemblance between the two logos. The plaintiff showed the registration of the same dating back to the year 2000. The defendants were not able to show any use thereof prior to that date. Thus, the use of by the defendants of an imitative logo was held to be a violation of plaintiff’s rights. In so far as the use of trademark BURGER KING was concerned, the defendants said that it was derived from the initials of their family members. It was observed that the explanation for the coinage of the mark makes it clear that the defendants were trying to adopt a process of reverse deduction to explain the use of the mark BURGER KING. Such an explanation, if adopted, would lead to trivializing trademark rights. In such facts and circumstances, the Court was of the view that the relief of injunction already granted in the year 2014 should be made absolute. Order was passed accordingly. However, the defendants were free to use the mark BURGER EMPEROR. The matter was disposed of in the terms above. [Burger King Corpn. v. Ranjan Gupta,2018 SCC OnLine Del 11484, dated 24-09-2018]

Case BriefsHigh Courts

Calcutta High Court: A civil petition was decided by a Single Judge Bench comprising of Sanjib Banerjee, J., wherein the orders of the lower appellate court and the trial court insofar as they refused to grant injunction in respect of Schedule C properties to the plaint, were set aside.

The petitioner-plaintiffs filed a suit regarding a property matter wherein injunction was granted in respect of properties covered under Schedule A and B, but was refused in respect of Schedule C properties on the only ground that such property was situated beyond the territorial limits of the trial court. Aggrieved thereby, the plaintiffs filed the instant petition.

The High Court perused the record and discussed law on the subject. The Court was of the view that it was inconceivable that only because a property was not situated within the jurisdiction of a particular court, the court refused to grant an injunction in respect thereof. With help of an example, the Court discussed Section 17 CPC which envisages a suit being instituted in one of the several courts within whose jurisdiction the properties may be situated. It is possible that “A” and “B” have disputes pertaining to six properties and all the six properties are not situated within the jurisdiction of any one particular court. If the cause of action is such that several suits need not be instituted, by virtue of Section 17 the plaintiff may invoke the jurisdiction of any one court within whose jurisdiction any of the properties may be situated; but that would not preclude that court from issuing an injunction in respect of properties situated beyond its jurisdiction.

Since the order of refusal to grant injunction was made only on the above mentioned ground without going into merits; the Court held that the orders of the lower appellate court and the trial court, insofar as they refused to grant injunction in respect of Schedule C properties to the plaint, were liable to be set aside which was ordered accordingly. [Reba Rani Bal V. Malay Krishna Bal, 2018 SCC OnLine Cal 143, order dated 05-02-2008]


Case BriefsHigh Courts

Madras High Court: While relying upon the Supreme Court decision in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90, the Single Bench of K. Kalyanasundaram, J. has observed that an injunction would normally follow in the cases of infringement of  intellectual property rights, especially when the dishonesty qua the defendants was apparent, and a mere delay would not be a ground to deny an order of interim injunction in such cases.

The plaintiffs submitted that the defendants had deliberately copied their registered bottle design, and thereby had caused design infringement and passed off their bottles as that of the plaintiffs. The defendants contended that there was no novelty in the design of the plaintiffs since the curves on the bottles and the vertical projection on the caps were functional features, and similar designs were in public domain even prior to the plaintiffs’ design registration, hence, the design registration was invalid. The defendants also submitted that they had been selling the alleged infringing products from past five years to the knowledge of the plaintiffs, therefore, as per Section 41(g) of the Specific Relief Act, the plaintiffs had acquiesced their right.

The High Court noted that it was an admitted fact that the plaintiffs’ design was registered in 2008, whereas the defendants launched the impugned design only in 2011. Moreover, it was not the case of the defendants that they were prior user of the design. The defendants had also not produced any material to substantiate their submissions that the designs of the plaintiffs were not new and the similar bottled designs had been used previously. Also, since the defendants themselves claimed to be the registered proprietor of similar designs, hence, they could not be permitted to approbate and reprobate as to the registrability of the bottle design. The Court also noted that the utility of the grip of a bottle, or the feature to facilitate the opening of the cap, could also be attained by other design options, therefore, such features could not be considered as “essentially functional”. The Court, thus, concluded that the design of the plaintiffs had been copied and adopted by the defendants, and the plaintiffs had made out a strong prima facie case for the grant of interim injunction. [Dart Industries Inc v. Cello Plastotech, 2017 SCC OnLine Mad 1851, decided on 12.05.2017]

Case BriefsSupreme Court

Supreme Court: In an appeal filed by LexisNexis against the injunction granted by the Allahabad High Court on 1.4.2014 in favour of Eastern Book Company, a Bench of Ranjan Gogoi and R.V. Ramana, JJ disposed of the appeal by a short order in the following manner:

The appellants will be at liberty to publish, sell and distribute the raw judgments of the Supreme Court of India and other Courts obtained from whichever source along with their own head-notes, editorial notes, paraphrasing, explanatory notes, etc. as laid down in Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1. [Relx India Pvt. Ltd. v. Eastern Book Company, (2017) 1 SCC 1.]

Pratibha M. Singh, Sr. Adv. and Mr. Vikas Mehta, Adv. appeared for the appellants  and K.V. Viswanathan, Sr. Adv., Anitha Shenoy, Adv., Mr. Harshavardhan Reddy, Adv. Ms. Srishti Agnihotri, Adv. Mr. Dhananjay Bhaskar Roy, Adv. Mr. Rajshekhar Rao, Adv. appeared for the Respondents.

The Supreme Court in Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1 had granted copyright protection to Supreme Court Cases (SCC) in the following manner:

This extract is taken from Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1 at pages 114-15

“61. However, the inputs put in the original text by the appellants in (i) segregating the existing paragraphs in the original text by breaking them into separate paragraphs; (ii) adding internal paragraph numbering within a judgment after providing uniform paragraph numbering to the multiple judgments; and (iii) indicating in the judgment the Judges who have dissented or concurred by introducing the phrases like “concurring”, “partly concurring”, “partly dissenting”, “dissenting”, “supplementing”, “majority expressing no opinion”, etc., have to be viewed in a different light. The task of paragraph numbering and internal referencing requires skill and judgment in great measure. The editor who inserts para numbering must know how legal argumentation and legal discourse is conducted and how a judgment of a court of law must read. Often legal arguments or conclusions are either clubbed into one paragraph in the original judgment or parts of the same argument are given in separate paragraphs. It requires judgment and the capacity for discernment for determining whether to carve out a separate paragraph from an existing paragraph in the original judgment or to club together separate paragraphs in the original judgment of the Court. Setting of paragraphs by the appellants of their own in the judgment entailed the exercise of the brain work, reading and understanding of subject of disputes, different issues involved, statutory provisions applicable and interpretation of the same and then dividing them in different paragraphs so that chain of thoughts and process of statement of facts and the application of law relevant to the topic discussed is not disturbed, would require full understanding of the entire subject of the judgment. Making paragraphs in a judgment could not be called a mechanical process. It requires careful consideration, discernment and choice and thus it can be called as a work of an author. Creation of paragraphs would obviously require extensive reading, careful study of subject and the exercise of judgment to make paragraph which has dealt with particular aspect of the case, and separating intermixing of a different subject. Creation of paragraphs by separating them from the passage would require knowledge, sound judgment and legal skill. In our opinion, this exercise and creation thereof has a flavour of minimum amount of creativity.

62. The said principle would also apply when the editor has put an input whereby different Judges’ opinion has been shown to have been dissenting or partly dissenting or concurring, etc. It also requires reading of the whole judgment and understanding the questions involved and thereafter finding out whether the Judges have disagreed or have the dissenting opinion or they are partially disagreeing and partially agreeing to the view on a particular law point or even on facts. In these inputs put in by the appellants in the judgments reported in SCC, the appellants have a copyright and nobody is permitted to utilise the same.

63. For the reasons stated in the aforesaid discussion, the appeals are partly allowed. The High Court has already granted interim relief to the appellant-plaintiffs by directing that though the respondent-defendants shall be entitled to sell their CD-ROMS with the text of the judgments of the Supreme Court along with their own headnotes, editorial notes, if any, they should not in any way copy the headnotes of the appellant-plaintiffs; and that the respondent-defendants shall also not copy the footnotes and editorial notes appearing in the journal of the appellant-plaintiffs. It is further directed by us that the respondent-defendants shall not use the paragraphs made by the appellants in their copy-edited version for internal references and their editor’s judgment regarding the opinions expressed by the Judges by using phrases like “concurring”, “partly dissenting”, etc. on the basis of reported judgments in SCC. The judgment of the High Court is modified to the extent that in addition to the interim relief already granted by the High Court, we have granted the abovementioned additional relief to the appellants.”

Upon scrutiny of the judgments in the LexisNexis database, copyright protected elements were found in the versions of judgments of the Supreme Court in LexisNexis.

Eastern Book Company sued LexisNexis and the District Judge, Lucknow confirmed the ad-interim injunction in these terms:

98. The application for temporary injunction moved by the plaintiffs is allowed and during the pendency of the Suit, the defendants, their assigns and business franchisees, licensees, distributors, agents etc. are retrained from infringing the copyrights in the literary work of the plaintiffs in their law report “Supreme Court Cases” (SCC) and from selling, distributing or otherwise making available to the public, either as CD ROms or through their websites on the Internet or through any tablet or by any other means, copies of its law reports and databases which infringe the copyrights of the plaintiffs in and to the law reports titled Supreme Court Cases (SCC).” [Eastern Book Company v. Reed Elsevier Pvt. Ltd., RS No. 134/2012 dated January 1, 2014]

This injunction was confirmed by a Division Bench of the Allahabad High Court on 1.4.2014 in these terms:

“In the light of the aforesaid judgment, we arrive at conclusion that the exercise and creation of minimum amount of creativity has to be viewed in the context of journals to journals published by the parties and in order to examine it several facts have to be considered by the trial court in the light of the evidences adduced by the parties during the course of the trial. Therefore, keeping in view the ingredients which are necessary to examine the case for the purpose of temporary injunction, we are of the view that at this stage the respondents/ plaintiffs had prima facie case in their favour to issue temporary injunction against the appellants/defendants so that skill applied by their editor in editing the journals should not be misused by the appellants/ defendants.

Thus, we are of the definite opinion that the learned trial court has correctly appreciated the application for temporary injunction filed by the respondents/ plaintiffs and allowed it which do not require interference by this Court.

However, the appellants are permitted to publish, sell and distribute through their websites and C.D.Rom/ DVD the judgments pronounced by the Hon’ble Supreme Court and other Courts but along with their head notes and editorial notes with all precautions as has been cautioned by the Hon’ble Supreme Court in Modak’s case ( supra).” [Reed Elsevier Pvt. Ltd. v. Eastern Book Company, FAFO 134 of 2014 decided on 1.4.2014]

Significantly, in furtherance of the above directions, the Supreme Court directed the expeditious disposal of the suit and vacated the bar against the contempt proceedings, pending against LexisNexis, before the District Court, Lucknow.

On an earlier date (25.10.2016) the Court had passed this order:

“The prayers made in IA Nos. 5 and 6 (filed by the appellants), in our considered view, ought not to be allowed at this stage inasmuch as the grounds in support of prayer ‘c’ of IA No. 5 on which notice has been issued have been urged before the learned trial Court and the appellate court. Therefore, consideration of the said grounds and any finding thereon to sustain the relief so as to prayer ‘c’ of I.A. No. 5 is concerned, was amount to pre-judging the appeal.

However, to avoid any prejudice and in view of the assurance given by the learned counsel  for both the sides that the matter can be disposed of within a short time frame, we order hearing of civil appeal on 23rd November, 2016. The trial court and the High Court of Allahabad will take into account the present order of this Court before deciding whether it should proceed with the contempt case(s) pending before it.” [Reed Elsevier India Pvt. Ltd. v. Eastern Book Company. 2016 SCC OnLine SC 1380, decided on 25.10.2016]

Read the Spicy IP story here.

Tribunals/Commissions/Regulatory Bodies

Competition Commission of India:   Whilst OLA Cab (of ANI Technologies) is under the scanner of the fair play watchdog and undergoing an investigation by the Director General of Investigation (“DG”) for alleged abuse of dominant position; the Commission has rejected the plea of the informant for interim relief.  The Commission on 24-04-2015 had found a prima facia case against OLA for indulging into predatory pricing to  oust other players in the relevant market of “Radio taxi services in the city of Bengaluru” and had order for investigation.

The informant   Fast Track Call Cab sought an temporary injunction against OLA to restrain from indulging in alleged practice of predatory pricing on the ground that unfair practices of OLA Cab (“opposite party”) will cause irreparable lose to the informant and adverse effect on competition in the market.   Informant contended that the OLA after having received funds of about $250 Million from Soft Bank, Japan in March, 2014 unleashed an onslaught of anti-competitive practices resulting in large scale erosion of market share of the Informant.  

The majority of the Commission (5:1); ruled that simply because the Informant has a prima faciecase, by itself will not entitle him to the grant of interim relief, unless, he satisfies that there is irreparable loss and injury to him and that the balance of convenience also lies in his favour. It found that the existence of the second element, i.e., irreparable loss to the Informant or definite apprehension of adverse effect on competition in the market has also not been satisfied. Further balance of convenience also is not lie in the informant because figures submitted by him cannot be relied upon further unless the same are verified by the DG in its investigation. For the reasons and pending investigation, the Commission was not convinced that any interim relief is required to be granted in this case.

However, one member in his dissenting note after a thorough market analysis observed that the market conditions in the present case were conducive for a credible predatory strategy. He observed that the particular urgency for an order of restraint in the present case arises from the fact that the OLA has continued to pursue its loss-entailing price-incentive scheme in the relevant market even after the order of the Commission for initiation of investigation.  He found that the market performance of OLA based on its deep pocket and predatory strategy is an imminent danger for the Informant and the competition, thus there is an urgent need to stop the Opposite Party on its tracks. Fast Track Call Cab Private Ltd v. ANI Technologies Pvt. Ltd,  2015 CCI 24, Order on 03.09.2015

High Courts

Calcutta High Court: In a question raised before the Court as to whether an importer/ distributor of the goods which is manufactured/ exported from some other country can claim the proprietorship over the trademark which is used by the manufacturer/ exporter of that goods, the bench of I.P. Mukerji J., refused to pass an interim order to restrain the defendant from using the said mark and directed the defendant to maintain accounts of their sale from the date of filing of this application till the suit is decreed.

In the instant case, both the plaintiff and the defendant are engaged in business relating to import of sewing machines, cutting machines etc. from China and selling them in the Indian market under the trademark “LIPU”. The Counsel for the plaintiff Pratap Chatterjee, claimed for a passing off injunction order to restrain defendant from using the same mark on the ground that they are using this mark from 1994 and the same is printed on the packaging of their goods as well as the invoices, challans, bills, etc. The Counsel for the defendant Jishnu Saha, relied on Registered Trade Marks of the Apollinaris Company Ltd, 1891 Vol 8 RPC 137 and contended that an importer cannot normally claim proprietorship over the mark of an exporter or manufacturer unless and until he proves that the mark has become inextricably connected with him in the eyes of the public.

The Court rejected the contention of the plaintiff that the machines were manufactured in China and the mark “LIPU” was imprinted on the machines on the instructions of the plaintiff. Court observed that the plaintiff’s as well as the defendant’s application for registration of the mark is still pending. The Court noted that “LIPU” is a region in China; the invoices were raised by the Chinese manufacturers; the manufacturing activity took place in China; the plaintiff as well as the defendants are only the retailers/ distributors of the goods manufactured in China. The Court concluded that this is a case of “reverse passing off” and therefore the brand “LIPU” belongs to the Chinese exporter and manufacturer and not to the plaintiff or the defendant.

The Court disposed of the application by refusing to pass an interim order to restrain the defendant from using the mark, as the proprietorship over the mark remains only with the manufacturer/ exporter of the goods. Sunny Sales v. Binod Khanna, 2014 SCC OnLine Cal 18505, decided on November 10, 2014