Intellectual property

Karnataka High Court
Case BriefsHigh Courts

   

Karnataka High Court: While deciding the instant appeal filed by ‘Vogue Institute of Management’ challenging the Trial Court’s permanent injunction restraining the appellants to use the trademark ‘VOGUE’ as a part of their name and trading style, the Bench of M.I Arun J., held that the respondent publishes an internationally acclaimed fashion magazine, whereas the appellant runs an institution pertaining to fashion technology ; since the appellant is not publishing any magazine by the name of ‘Vogue’, hence, there is no infringement of trademark.

Furthermore, while considering that whether the use of the word ‘Vogue’ by the appellants amounted to passing-off, the Court held that while Vogue magazine is generally read by a limited section of society who are aware about fashion, its purchasers are likely to know that the magazine is only involved in the business of publishing and not running an institute. The Court stated that it is highly unlikely that the students joining the appellants’ institute will get confused between Vogue- the fashion magazine and Vogue- the fashion technology institute.

Facts and Legal Trajectory of the Case: Advanced Magazine Publisher’s Inc. had been publishing the internationally popular fashion magazine VOGUE since 1892 and is the registered proprietor in India of the trademark VOGUE under Class-16 of Trademarks Classification of Goods and Services, in respect of magazine publications.

In 1998, the respondent (then plaintiff) came to know about the appellant (then defendant) running a training institute named- VOGUE Institute of Fashion Technology using slogans like – “VOGUE, the great career option”. Consequently, the respondent-plaintiff took the legal route.

The Trial Court framed and answered the following questions-

  1. Whether the plaintiff proved that it is the proprietor of the trademark VOGUE in respect of fashion magazine and is using the trademark for over a century and is the registered proprietor in India as well? – Affirmative

  2. Whether the plaintiff proved that using the trademark for over 100 years, the mark VOGUE is now been exclusively identified with the plaintiff?– Affirmative

  3. Whether the plaintiff proved the defendant’s use of the world-famous trademark to trade upon and benefit from the reputation attached to the said mark? Affirmative

  4. Whether the defendant was able to prove the dissimilarity between the names and that their name is sufficiently distinct? Negative

  5. Whether the plaintiff is entitled to seek relief of permanent injunction; direction to render an account of profits and decree for the amount due after rendering of account, against the defendant? Affirmative for all three

As a result of the afore-stated verdict rendered by the Trial Court, the instant appeal was preferred.

Contentions by the appellants/defendants:

  • The appellants/defendants argued that VOGUE is a generic word- a common English word which has not been coined, therefore, the respondent cannot monopolise the same.

  • The appellants/defendants further argued that the respondent has failed to demonstrate the awareness regarding Vogue magazine in India.

  • It was contended that Class 16 of registered trademark, does not cover the activity of the appellants i.e., running a fashion institute. Thus, no trademark infringement has been committed. Furthermore, it was argued that since the people of India are not that aware of the existence of VOGUE magazine, therefore, the appellants/defendants using the name for their institute does not amount to passing-off.

  • It was also argued that mere assertion of transborder reputation of a trademark is not sufficient for the Court to give conclusions regarding infringement of the trademark.

  • The appellants/defendants further submitted that they are honest and concurrent user of the word VOGUE and have spent their effort time and money to build a goodwill.

  • The Trial Court was confused as to whether the dispute is of trademark infringement or passing-off.

Contentions by the respondent/plaintiff:

  • The respondent/plaintiff argued that in a passing-off action, there cannot be a defence of generic word and what matters in a passing-off action is the reputation of the person.

  • It was submitted that the reputation of the magazine had already reached India prior to the adoption of the mark by the appellant/defendant. It was further contended that the respondent/plaintiff has been able to show a connection in the course of trade between goods of the two parties.

  • It was further submitted that the respondent/plaintiff has also sufficiently proved that the appellant/defendant’s use of identical or deceptively similar mark is for deceiving and causing confusion withing the customers.

  • Vis-à-vis transborder reputation, it was contended that it is not necessary to ascertain existence of real market and that the presence of the respondent/plaintiff, through its mark, in a subtle form, is sufficient.

  • It was contended that even though the businesses are different, both the parties cater to the same pool. Whosoever is interested in latest fashion trends, will also be interested in a fashion magazine; and it is a fashion technology institute that produces professionals like fashion designers, fashion journalists etc. Anyone who aspires to be fashion professional, is aware of VOGUE magazine.

High Court’s Observations and Decision:

  • Perusing the facts and contentions, the Court observed that there is no dispute that both the parties are using the word VOGUE. The Court also observed that the respondent/plaintiff in course of their argument, have given up their claim for infringement.

  • The Court further observed that the gist of a passing-off action is that it is an action for violation of common law rights and is enforceable in respect of registered and unregistered trademark. “False and misleading representation resulting into deception, is the key to the answer”

  • Perusing the contents of Class 16 Trademarks Classification of Goods and Services, the Court held that no trademark infringement has been committed by the appellant/defendant.

  • The Court considered that whether the appellants/defendant’s mark is likely to deceive the public, who may buy their goods as if they were the respondent/plaintiff’s goods. The Court referred to several case laws on point and noted that in such cases, there is a need to analyse the nature of goods/services in respect of which the word ‘VOGUE’ was being used by both the parties. The need to analyse the class of purchasers who are likely to good/services offered by the parties, was pointed out as well.

  • The High Court held that the Trial Court failed to appreciate the afore stated factor. The Court held that the Trial Court came to an erroneous conclusion by applying a test that is applicable to a common man who would get confused by use of the word VOGUE. The verdict of the Trial Court was thus set aside.

[M.M. Kariappa v. Advance Magazine Publisher’s Inc., 2022 SCC OnLine Kar 1593, decided on 10-11-2022]

Advocates who appeared in this case :

SS Naganand and Summa Naganand and Vikram U.R. for Just Law, for the Appellant;

Veena P., Constituted Attorney, for the Respondent.

*Sucheta Sarkar, Editorial Assistant has prepared this brief.

Case BriefsHigh Courts

   

Bombay High Court: In a trademark infringement suit filed by Pidilite Industries Ltd. (the plaintiff) with regard to its mark M-seal against the infringing mark R-seal, R.I. Chagla, J. held that the Defendant has obtained the aforesaid trademark by playing a fraud upon the Registrar of Trade Marks and concealing from him, the existence of the Plaintiff’s prior registered marks.

The Court held that prima facie, the Defendant’s marks R-SEAL are deceptively similar to the Plaintiff’s registered marks MSEAL and are violative of the rights of the Plaintiff. Accordingly, they are violative of the provisions of the Trade Marks Act, 1999 including Section 11 of the Act and ought not to have proceeded to registration.

Background

The Plaintiff is a world-renowned company, carrying on business in the field of sealants and adhesives, construction and paint chemicals, art materials, industrial adhesives, industrial and textile resins and organic pigments and preparations since at least 1969. The mark M-SEAL was conceived and adopted by the Plaintiff’s predecessors in title i.e., Mahindra Van Wijk and Visser Ltd. in or about the year 1968, and has been continuously, extensively and in an uninterrupted manner used since then.

The said mark and the artistic representation thereof have been acquired by the Plaintiff pursuant to an agreement dated 27-03-2000, together with the goodwill thereof and the Plaintiff is the registered proprietor of the mark M-SEAL and/or marks consisting of M-SEAL as one of its leading, essential and distinctive features. The unique and distinctive artistic representation of MSEAL i.e., (including in particular the unique line below the mark which is an extension from the first letter of the mark), as well as the M-SEAL Labels, are original artistic works in respect of which copyrights subsist and such copyrights are owned by the Plaintiff.

Alleged Trademark Infringement

In December 2020, the Plaintiff came across sealant products of the Defendant being sold under the mark , which is deceptively similar to the Plaintiff’s registered trademark . The mark R-SEAL is also written and used by the Defendant in an identical stylized manner of disjuncting the first letter of the mark from the rest and extending the first letter into an underlining for the rest of the mark i.e., as to that of the Plaintiff’s mark. The Defendant’s product also has impugned packaging/labels/trade dress which is a reproduction of and/or identical or deceptively similar to the products of the Plaintiff.

The plaintiff contended that the impugned label used by the Defendant also bears the impugned taglines “SEALS JOINS FIXES BUILDS”/ “BUILDS FIXES JOINS SEALS” which are identical to the M-SEAL Tagline. The impugned products of the Defendant also bear the impugned identification mark JHAT-PAT which is deceptively similar to the Plaintiff’s identification mark PHATAPHAT.

Further, the plaintiff alleged that the defendant has also made applications and wrongfully obtained trademark registrations in class 1, bearing application nos. 860804 and 860805, for registration of the mark R-SEAL and a label mark containing R-SEAL, in the same deceptively similar stylized manner as the Plaintiff’s M-SEAL registered mark; which is ex-facie illegal, fraudulent and ought to shock the conscience of this Court.

Observation and Analysis

Whether the Trademark owner can make “user claim” prior to acquisition of the trademark from its predecessors?

The Plaintiff’s Trademark Registration in respect of the mark M-SEAL is dated 16-08-1972 and with a user claim from 01-12-1968. While from the Defendant’s own case, the date of adoption and use of the impugned mark R-SEAL is 1999 i.e., subsequent to 1968 and the user claim of the Plaintiff of 1972.

Rejecting the defendant’s contention that the Plaintiff cannot claim use of the mark M-SEAL since 1972 and/or registration of the mark from 01-12-1968 because the mark was acquired by the Plaintiff from its predecessors in title only in 2000, the Court opined that the Plaintiff’s acquisition of the M-SEAL marks in 2000 was together with the goodwill thereof. Noting that Section 38 and 42 of the Trade Marks Act, 1999 specifically provides for assignment with goodwill, the Court held that the Plaintiff is entitled to claim all rights and privileges in the said marks, including statutory and common law rights, from the date of the first usage of the said marks by its predecessors in title i.e., from 1968. The Court stated,

“Acquisition of the mark does not change the date of first usage of the mark and this will apply to the Plaintiff’s trademark registration in respect of M-SEAL Phataphat and M-SEAL Superfast marks which assignment had taken place in the year 2000, but the user of this marks would go back to the usage of the marks by the predecessors in title.”

Additionally, the Court noted that the Defendant had failed to produce documents in support of its alleged user claim in respect of the impugned marks from 1999, since the earliest invoice available in respect of its R-SEAL product is of the year 2005, which is subsequent to the Plaintiff’s adoption and use of the mark M-SEAL. Further, the sales figures provided by the Defendant was in respect of the Defendant’s firm and not in respect of the R-SEAL products alone.

Thus, the Court held that prima facie the Defendant is not the prior adopter or user of the marks in question and was not entitled to any rights thereon. Further, when the Defendant’s adoption itself is dishonest, no amount of user can create any rights in favour of the Defendant and that honesty in adoption is also not a defence to an action for infringement.

Whether the disclaimer on some of the Plaintiff’s marks negate its rights to claim exclusivity and protection?

Noticeably, the plaintiff’s registration bearing no. 282168 contains a disclaimer with regard to the word SEAL and the registrations bearing nos. 961689 and 1347392 have a condition imposed on it viz “Registration of this trade mark shall give no right to the exclusive use of the all other descriptive matters appearing on the label”.

Rejecting the defendant’s contention that disclaimer on some of the Plaintiff’s marks negates its rights to claim exclusivity and protection thereof, the Court relied on Pidilite Industries Limited v. S.M. Associates, 2003 SCC OnLine Bom 143, to hold that the Plaintiff’s mark would have to be regarded as a whole including the claimed matter while deciding the question of infringement. Since disclaimers do not go to the market and a common man of average intelligence or the average consumer would have no knowledge of any disclaimers present in a trade mark registration. Pertinently, in Pidilite Industries Ltd. (supra) the Court had accorded judicial notice and protection to the Plaintiff’s mark MSEAL (word per se) despite the presence of, and after consideration of the very same disclaimer/condition on the Plaintiff’s mark.

Hence, the Court concluded that the Defendant having adopted, used and also fraudulently secured registration of the impugned R-Seal marks containing the term SEAL as their leading and essential features in a trade mark sense is estopped from contending that the term “SEAL” is common to trade or generic or incapable of protection or being registered in the name of various other manufactures or third parties.

Some Relevant Findings of the Court

• The Defendant had not been able to establish that it had conducted any independent search of the public record of the Registrar as to whether the Plaintiff’s mark M-SEAL was in existence during the registration of the Defendant’s impugned mark.

• In any event, honest concurrent user is not a defence under the Trade Marks Act, 1999 and is merely an aspect or a pre-request for claiming the defence of acquiescence which in the present case such defence has neither been pleaded nor alleged by the Defendant.

• Merely producing search reports or online case status in respect of certain marks lying on the register is not evidence of those marks being used or being available in the market. The burden of proving such alleged use by third parties lies on the party who is relying upon it.

• The Defendant, on whom the burden lies, must show that the use by the trade is extensive and that the term “SEAL” or colour scheme of M-SEAL packaging/label is common to the trade or generic.

• Merely because the Defendant has registered its mark does not take away the power of the Court, even at the interlocutory stage, to go behind the Defendant’s registration and grant injunction if registration of the Defendant’s marks is prima facie found illegal, fraudulent and shocks the conscience of the Court.

• Every intelligent copying would seek to introduce some differences or changes1, however, the same would not have any effect on the Plaintiff’s case, as the Defendant’s work has incorporated essential and substantial features of the Plaintiff’s work. Thus, the rival marks/labels cannot co-exist without causing confusion and deception to the public at large and without violating the rights of the Plaintiff.

Verdict

In the light of the above, the Court held that the Defendant’s adoption of the impugned mark and its representation, independently as well as in conjunction with the impugned label, impugned tagline and impugned identification mark and the overall trade dress in respect of its R-SEAL products, are violative of the rights of the Plaintiff and this is not a matter of co-incidence.

Hence, the Court restrained the defendant by a perpetual order and injunction from manufacturing, marketing, selling, advertising, offering to sell or dealing in the Impugned Products or sealants or any similar goods or any other goods bearing the impugned mark R-SEAL, or the impugned labels or the impugned tagline or the impugned sub-mark or any other mark/label identical with or similar to or comprising of the mark M-SEAL, , M-SEAL Registered Marks or the M-SEAL Label, M-SEAL Tagline, sub-mark PHATAPHAT or bearing the trade dress of the Plaintiff’s products or using packaging similar to the Plaintiff’s M-SEAL. Similarly, the defendant was also restrained from infringing in any manner the Plaintiff’s copyrights in the artistic work comprised in/reproduced on its M-SEAL Label(s) and from reproducing/ copying the said artistic works or any substantial part of the said artistic works on the Defendants’ Impugned Products.

[Pidilite Industries Ltd. v. Riya Chemy, 2022 SCC OnLine Bom 5077, decided on 11-11-2022]

Advocates who appeared in this case :

Advocates for the Plaintiff: Mr. Hiren Kamod a/w Nishad Nadkarni, Mr. Aasif Navodia & Ms. Khushboo Jhunjhunwala i/b Khaitan and Co.;

Advocates for the Defendant: Mr. S. Ramakrishnan a/w Ms. Girish Thakur.

*Kamini Sharma, Editorial Assistant has put this report together.

1 Pidilite Industries Limited v. S.M. Associates, 2003 SCC OnLine Bom 143

GNLU
Law School NewsOthers

Date: 1st September, 2022

GNLU Centre for Intellectual Property Rights, established with an aim to promote research, extension and training in the field of intellectual property rights of India, invites registrations from students, researchers, scholars, academicians, and professionals for a short one-credit Online certificate course on Contouring Innovation in the 21st Century through the Intellectual Property and Tech Interface.

This course is one of its kind in India, aiming to touch upon various upcoming areas at the intersection of law, technology and policy including the complex landscape of privacy requirements, IP laws, data protection, regulated vs. grey unregulated areas (US vis-à-vis India) and subsequent pros and cons. The prime objective of the course is to acquaint participants with the ground application of academic learnings and familiarize with the real-life scenario of a legal practitioner, especially in a constantly evolving field that will undergo rapid changes in the next 20 years. It aims for students to be at the helm of this coming transformation by relaying the basics as well as aims to enable future lawyers to understand the consequences of using AI and understand ethical and conscientious interaction with Artificial Intelligence. It is ideal for a law student wishing to explore the nuances of tech law and build a career as a tech lawyer. Ms. Chaani Srivastava, a GNLU alumnus (Batch 2005-2010) and an experienced intellectual property attorney at LOCS online with a demonstrated history of working in the law practice industry in India as well as the United States is the Resource Person for this Course. She has a diversified theoretical as well as practical hands-on experience in the arena of law, holding an L.L.M. in Law and Technology from the University of California, Berkeley.

Pedagogy of the course

This course will follow a discussion-based style which will emphasize on both the practical and theoretical academic aspects supplemented by experiences drawn from real life. It will encourage a participatory and student-centred approach, entailing minimal work outside class. The total duration of the course is 20 hours consisting of 10 sessions. The course will be followed by an assessment in the form of a simple MCQ quiz, upon the completion of which a certificate would be issued subject to the 80% attendance mandate. The mode of conducting the course is virtual vide Cisco Webex.

Application process:

Registration form can be accessed here. The link shall remain open till 11:59 pm, September 5, 2022. Application form can be filled and submitted only through the link provided. Registration shall be on a first come first serve basis. Details relating to the course and mode of joining will be shared only with the Registered participants.

Registration Fees:

Registration fees for GNLU Students: INR 500/-

Registration fees for external students: INR 1000/-

Registration fees for academicians: INR 2000/-

Registration fees for others: INR 2500/-

The link for the payment of fees can be accessed here. The course fees are non-refundable. No participant will be entertained without enrolment.

Call For PapersLaw School News

About the organisation/institution:

National Law University-Jodhpur (NLU Jodhpur) is one of India’s leading Law Schools situated in the vibrant and colourful city of Jodhpur, Rajasthan. NLU Jodhpur has constantly been ranked as one of the top law schools in India. Since its establishment in 1999, NLU Jodhpur has endeavoured to produce exceptional lawyers and legal scholars aimed at pushing and challenging the existing boundaries of knowledge.

About the Journal:

The Journal of Intellectual Property Studies is a bi-annual, student-run academic journal published by National Law University, Jodhpur. The Journal was established in 2016 and primarily deals with contemporary developments in the field of intellectual property and related laws.

There are very few journals in India discussing at length topical issues in the field of intellectual property rights and hence, the journal’s objective is to fill this void by becoming a platform where ideas can be exchanged and in turn hopes to enhance discourse on intellectual property rights between policymakers, practitioners and scholars. To achieve this, the journal solicits articles from a diverse pool of authors comprising of scholars, practitioners and students.

The Board of Editors of the Journal of Intellectual Property Studies [JIPS], is pleased to invite original, unpublished manuscripts for publication, in the Winter 2023 Issue of the Journal (Volume VI, Issue I) in the form of notes and articles.

Theme/topics:

The manuscripts must pertain to the field of intellectual property law or related fields such as media and technology law.

How to submit:

Manuscripts may be submitted via email at jips@nlujodhpur.ac.in. The submission guidelines are available here.

Important dates and deadlines:

The deadline for submission for manuscripts is 01 October 2022.

Contact info:

For further details regarding JIPS, contribution guidelines, and our editorial policy, please visit our website.

Case BriefsInternational Courts

   

European Court of Justice (ECJ): In a far-reaching decision, the Bench of C. Lycourgos (Rapporteur), President of the Chamber, S. Rodin, J.-C. Bonichot, L.S. Rossi and O. Spineanu-Matei, JJ., held that sending of a warning letter for trademark infringement, per se, will not break the limitation period and end acquiescence for use of the similar later trademark.

The German Federal Court of Justice had requested the ECJ for a preliminary ruling on the interpretation of Article 9 of Directive 2008/95/EC of the European Parliament of 22-10-2008 to approximate the laws of the Member States relating to trademarks, and Articles 54 and 111 of Council Regulation (EC) No 207/2009 of 26-02-2009 on the Community trademark.

The European Union law in question provides that where, in a Member State, the proprietor of an earlier trademark has acquiesced, for a period of five successive years, use of a similar later trademark while being aware of such use, he shall no longer be entitled either to apply for a declaration that the later trademark is invalid or to oppose the use of the later trademark in respect of the goods or services for which the later trademark has been used; unless registration of the later trademark was applied for in bad faith.

Factual Backdrop

The request had been made in proceedings between HEITEC AG (the applicant) and HEITECH Promotion GmbH and RW concerning the use of the trade name HEITECH Promotion GmbH and trademarks containing the word element ‘heitech' by the latter.

The applicant is the proprietor of the EU word mark HEITEC, with seniority claimed as from 13-07-1991, and registered on 04-07-2005. It was entered in the commercial register in 1984 under the name Heitec Industrieplanung GmbH which was later changed to Heitec GmbH. Since the year 2000, it has been operating under the name of Heitec AG.

Heitech, of which RW is the managing director, was entered in the commercial register on 16-04-2003 as the proprietor of a German figurative mark containing the word element ‘heitech promotion' and of an EU figurative mark containing the word element ‘heitech', applied for on 06-02-2008 and registered on 20-11- 2008, which it has used since 06-05-2009 at the latest.

Chronology of Events

The applicant became aware of Heitech's application for registration of the EU figurative mark containing the word element ‘heitech' on 07-07-2008 and by a letter dated 22-04-2009, it sent Heitech a warning letter regarding the latter's use of its tradename and the EU trademark containing the word element ‘heitech'. In its reply, Heitech proposed to enter into a coexistence agreement.

On 31-12-2012, the applicant approached the Nuremberg Regional Court to initiate proceedings against Heitech and RW. However, the proceedings could not begin since the applicant had failed to make the advance payment and lodge the originals of the application initiating proceedings. It was only on 30-12-2013 that the Regional Court received written submissions dated 12-12-2013 from the applicant, together with a cheque for court fees and a new application initiating proceedings bearing the date 04-10-2013. The preliminary proceedings were finally opened on 16-05-2014 and a notice was served to the defendants in the main proceeding on 23-05-2014.

Meanwhile, in a letter dated 23-09-2013, the applicant informed Heitech that it refused to conclude a coexistence agreement and proposed to conclude a licence agreement while stating that it had initiated legal proceedings.

Finally, the applicant claimed the infringement of its trademark rights and contended that Heitech should be ordered to refrain from identifying its company by the trade name ‘HEITECH Promotion GmbH', to refrain from affixing the word elements ‘heitech promotion' and ‘heitech' on goods and from marketing or advertising goods or services under those signs, to refrain from using or transferring, for commercial purposes, the website heitech-promotion.de and to agree to the removal of its company name from the commercial register.

The applicant also brought claims for information, for a finding of an obligation to pay compensation, for the destruction of goods and for the payment of the costs of sending the warning letter.

Findings of the Nuremberg Regional Courts

The Regional Court ordered Heitech to pay the applicant EUR 1 353.80, plus interest, for the costs of sending the warning letter and rejected the other claims. Aggrieved, the applicant appealed before the Nuremberg Higher Regional Court, which held that the applicant's action was unfounded as it was time-barred.

The Higher Regional Court noted that Heitech had used its later signs for an uninterrupted period of at least five years and that the applicant had acquiesced in such use, since, although it was aware of that use, it had not taken sufficient measures to stop that use.

The Higher Court held that the court action had not interrupted the period of limitation, since it had been served on Heitech and RW only after five years had elapsed since the warning letter which preceded that action.

The applicant challenged the afore-mentioned findings before the Federal Court of Justice, Germany (referring court).

Questions Referred

That referring court noted that the outcome of the appeal depends on the interpretation of European Union (EU) law on whether the applicant is time-barred from bringing its claim for an injunction and its ancillary claims. Therefore, the referring court referred the following questions to the Court of Justice for a preliminary ruling:

  1. Can acquiescence be excluded not only by means of an administrative or court action but also through conduct not involving a court or administrative authority?

  2. Does the sending of a warning letter, in which the proprietor of the earlier sign, before initiating legal proceedings, requires the proprietor of the later sign to agree to refrain from using the sign, and to enter into an obligation to pay a contractual penalty in the event of an infringement, constitute conduct precluding acquiescence?

  3. When seeking judicial redress, is the bringing of the action before the court or the receipt of the action by the defendant decisive for calculating the five-year acquiescence period? Is it significant in this regard that receipt of the action by the defendant is delayed beyond the expiry of the five-year period through the fault of the proprietor of the earlier trademark?

  4. Does the limitation of rights encompass consequential claims under trademark law; i.e., claims for compensation, provision of information or destruction, as well as prohibitory injunctions?

Analysis and Findings

Is a warning letter sufficient to break the limitation period and end acquiescence?

Relying on Levi Strauss, C 145/05, the Court noted that by setting a period of limitation in consequence of acquiescence of five consecutive years with knowledge of the use of the later trademark, the EU legislature sought to ensure that the protection conferred by an earlier trademark on its proprietor remains limited to cases where the proprietor shows itself to be sufficiently vigilant by opposing the use of signs by other operators likely to infringe its mark.

Opining that the rule on limitation in consequence of acquiescence is intended to safeguard legal certainty, the Court stated,

“Where the proprietor of an earlier mark or other earlier right, within the meaning of Directive 2008/95 or Regulation No 207/2009, has knowingly ‘acquiesced' in the use of a later mark applied for in good faith for a continuous period of five years, the proprietor of the latter mark must be certain in law that such use can no longer be challenged by the proprietor of that earlier mark or other earlier right.”

As regards the conditions under which the proprietor of the earlier mark or other earlier right may be regarded as having carried out an act that interrupts the period of limitation, the Court observed that the proprietor must bring an administrative or court action before the expiry of the limitation period.

The Court observed that where the proprietor of the earlier mark has issued a warning letter with which the proprietor of the latter mark did not comply, the warning letter will only interrupt the period of limitation in consequence of acquiescence when, following the unsatisfactory response to the warning letter, the proprietor of the earlier mark invokes an administrative or court action to enforce its rights. In contrast, in such a scenario, the failure to bring an administrative or court action will mean that the proprietor of the earlier mark has failed to take the measures available to it to put an end to the alleged infringement of its rights. The Court opined,

“Any interpretation to the effect that sending a warning letter is sufficient to interrupt the period of limitation would allow the proprietor of the earlier mark or other earlier right to circumvent the regime for limitation in consequence of acquiescence by repeatedly sending a warning letter approximately every five years. Such a situation would undermine the objectives of the regime for limitation in consequence of acquiescence and would deprive that regime of its effectiveness.”

Date of action v/s Date of receipt by Defendant: Which one is decisive for calculating the five-year acquiescence period?

Referring to the rule as followed in civil matters, the Court observed that the date on which the application initiating proceedings was lodged is the date on which a court action must be deemed to have been brought.

The Court, though agreed with the opinion of the Advocate General that the lodging of the application initiating proceedings reflects the genuine and unambiguous wish of the applicant to assert its rights, which is sufficient to end acquiescence and to interrupt the period of limitation, it noted that the conduct of that party may nevertheless, raise doubts as to that wish and the seriousness of the action brought before the court.

Noting that the Regional Court with which the applicant had lodged an application initiating proceedings, repeatedly contacted it in order to draw its attention to irregularities that prevented service of the notice on the defendants, the Court opined that the applicant could not claim to have put an end to the acquiescence of the use of the later mark by lodging the application initiating proceedings. The Court noted,

“Where the application initiating proceedings, although filed before the date of expiry of the period of limitation, did not, owing to a lack of diligence on the part of the applicant, satisfy the requirements of the applicable national law for service and was rectified only after that date the action must be regarded as time-barred.”

Consequently, the Court held that it is for the referring court to ascertain whether the date on which the application to initiate proceedings was rectified to enable the court to commence the proceedings and to serve that document on the defendants was within the period of limitation and whether the conduct of the applicant in initiating proceedings could be characterized as lack of diligence.

Whether a proprietor of the earlier mark being time-barred from seeking a declaration of invalidity of a later mark, is also time-barred from bringing ancillary or related claims?

Affirming the opinion of the Advocate General that it would be contrary to the objectives of the regime for limitation in consequence of acquiescence to allow the proprietor of the earlier mark to bring an action against the proprietor of that later mark for damages and injunctions after the end of the limitation period, the Court held,

“If such action or such claims were to succeed after the expiry of the period of limitation, it would amount to leaving intact, beyond that date, the possibility of a finding that the use of the later mark infringes the earlier mark and to attributing a non-contractual liability to the proprietor of the later mark.”

The Court added,

“Such an interpretation of the regime of limitation in consequence of acquiescence would undermine the objective pursued by that regime, which is to give the proprietor of the later trademark the certainty, at the end of that period, that the use of that mark can no longer be challenged, by whatever legal means, by the person that has knowingly acquiesced in its use for an uninterrupted period of five years.”

Conclusion

In the backdrop of above, the Court ruled:

  • A warning letter, by which the proprietor of an earlier mark or other earlier right opposes the use of a later mark without taking the necessary steps to obtain a legally binding solution, does not stop acquiescence and, consequently, does not interrupt the period of limitation.

  • The application of action will be time-barred where the application initiating proceedings, although filed before the date of expiry of the period of limitation, did not, owing to a lack of diligence on the part of the applicant, satisfy the requirements of the applicable national law for service and was rectified only after that date for reasons attributable to the applicant.

  • Where the proprietor of an earlier mark is time-barred from seeking a declaration of invalidity of a later mark and from opposing the use of that later mark, that proprietor is also time-barred from bringing ancillary or related claims, such as claims for damages, the provision of information or the destruction of goods.

[HEITEC AG v. HEITECH Promotion GmbH, C466/20, decided on 19-05-2022]

*Kamini Sharma, Editorial Assistant has reported this brief

Legal RoundUpSupreme Court Roundups

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

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

STORY OF THE MONTH

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

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

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UNMISSABLE STORIES

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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EXPLAINERS

MORE STORIES

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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CASES REPORTED IN SCC

2021 SCC Vol. 9 Part 1

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

2021 SCC Vol. 9 Part 2

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

SCC Snippets

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

Case BriefsHigh Courts

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

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

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

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

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

Plaintiff even filed the registration certificates.

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

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

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

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

Analysis, Law and Discussion

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

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

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

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

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

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

Delay and Acquiescence

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

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

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

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

Interest of the Consumers

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

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

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

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

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

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

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

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

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

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

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

Advocates before the Court:

For the plaintiff:

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

For the defendants:

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

Case BriefsSupreme Court

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

Factual Background

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

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

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

The trial court restrained the respondents

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

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

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

Analysis

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

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

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

Explaining the rule of interpretation, the Court said,

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

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

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

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

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

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

*Judgment by: Justice BR Gavai

Counsels:

For appellant: Senior Advocate K.V. Viswanathan

For respondent: Advocate B.C. Sitarama Rao

New releasesNews

by Elizabeth Verkey and Jithin Saji Isaac

Overview:

Intellectual Property law is an emerging area of law and envelopes all creative activities of mankind. The development of society being interlinked to creativity, the importance of this branch of law assumes much significance in modern days. In this context it is worthwhile to learn the gamut of laws in the realm of intellectual property. Learning of intellectual property combines legislative interpretation with case laws and also a tangy touch of science in some branches.

Apart from the legislations, our courts place much reliance on the case laws of foreign jurisdictions while deciding cases on intellectual property law. As practicing lawyers we could stir and spice up the book with the right flavour of case laws needed for a practitioner and a student of law. A creator of intellectual property would also need to look into the case laws to understand the law in practice.

This revised edition has updated the case laws of India and also the important cases in other jurisdictions. The judgment in Britannia Industries Ltd v. ITC Ltd.1 which has laid down the test for assessing deceptive similarity in an action for infringement and passing off and the landmark judgment in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd.2 which re-defined transborder reputation are also included in this revision. We have strived to keep the readers abreast with the latest developments and have also included the latest Tribunals Reforms Act, 2021.

We are indebted to the many authors who have thrown light to us on the various aspects of intellectual property law and also our teachers and the many legal luminaries in intellectual property law in the University of Edinburgh and the King’s College, London with whom we had the opportunity to interact.We owe our gratitude to our legal team at Isaacs’ Advocates, Cochin and our dear colleague Adv. O.K. Shamsudeen, who has painstakingly done research work for the revision of this book. In this venture we were constantly supported by Mr Sumeet Malik and Mr Abhinandan Malik of Eastern Book Company, our publishers and also Ms Nilufer Bhateja who was constantly in touch with us during the completion of this book.

 We hope this revised edition would prove useful to the legal fraternity, law students, universities and other institutions.

 August 25, 2021 —Dr ELIZABETH VERKEY

—JITHIN SAJI ISAAC

Get Your Copy Here: Intellectual Property by Elizabeth Verkey and Jithin Saaji Isaac

Op EdsOP. ED.

The concern of ethnic imbalance and diversity in the international framework has been subject to substantial discourse recently. Presently, arbitration has become subject to the hegemony of a handful few people, who get repeatedly reappointed.[1] If a judicial set up becomes exclusionary, then the quality of adjudication is severely impacted.[2] In such framework, there is a disjunction between the preconceived notions of adjudicators and the interest of the parties which results in proceedings being viewed from a biased perspective.[3]

Currently, we see numerous intellectual property (IP) disputes involving cultural appropriation.[4] Such disputes pertain to multiple jurisdictions[5] and hence, must be subject to international arbitration.[6] However, currently, these disputes are being subjected to litigation[7] and aggrieved parties i.e. the developing countries do not consider it wise to resort to the already in place arbitration mechanism of the World Intellectual Property Organisation (WIPO).[8] In this paper, it is argued that this practice is the result of exclusionary arbitral framework of Europe which does not acknowledges the non-legal and non-commercial nature of disputes pertaining to indigenous culture. This paper envisages a more holistic, inclusive framework wherein the non-legal and non-commercial aspect of IP disputes involving cultural appropriation is also acknowledged, which can only be ensured by an ethnically balanced arbitration framework.

This paper has been divided into four parts. Part I is the introduction. In Part II, we shall identify the nature of the problem by revisiting the perspective of the municipal legal framework of the west towards cultural appropriation and how in the absence of a uniform law parties must refer their disputes to arbitration. In Part III we shall statistically interpret the prevailing, ethnically imbalanced state of affairs of international arbitration institutions and how it makes it difficult to efficiently arbitrate cultural heritage disputes. Consequently, changes have been suggested to ensure ethnic balance and contemplate a uniform framework that efficiently caters to instances of cultural appropriation. Finally, Part IV concludes.

Cultural appropriation: The nature of the problem

The phrase cultural appropriation corresponds to stealing indigenous culture by the industrial west typically for fashion, aesthetic and theatrical purposes.[9] Instances of cultural appropriation include, Selena Gomez, depicting bindi which is sacrosanct to Hinduism, by commercially exploiting it as a fashion symbol.[10] In another such instance, Victoria’s Secret mocked the genocide of indigenous people, by appropriating the native Indian headdress.[11] A similar trend can be seen in the case of yoga, wherein the Vedic philosophy is being reduced to a form of physical exercise.[12] Such perspective is problematic because indigenous communities have strived hard to ensure the survival of their culture over generations and thus, its appropriation by the western world for merely aesthetic and theatrical purposes, is offensive to the practitioners of such cultures.[13]

Currently, the municipal adjudication framework of the industrialised west has failed to protect the interests of the indigenous communities as reflected in “The Lion King” case and the “Navajo” case. The Swahili phrase “Hakuna-Matata”, in the movie “The Lion King”, was misappropriated by Disney.[14] However, the US Patent and Trade Mark Office granted trade mark to Disney for the phrase, despite several protests.[15] Similarly, the State of Navajo alleged trade mark infringement on the part of US fashion company Urban Outfitters who had misappropriated sacred patterns and prints and hence, violated the Arts and Crafts Act of 1990 a domestic law of the United States.[16] Urban Outfitters pleaded the fair use defence and after a long drawn court battle reflective of high costs and delayed justice, Navajo negotiated an out-of-court settlement with Urban Outfitters.[17]

According to Professor Shamnad Basheer, frequent instances of cultural appropriation are ethically inaccurate and reflective of colonial oppression.[18] He argues that such instances occur due to the absence of uniform set of rules to tackle cultural appropriation.[19] While, the General Assembly in an attempt to protect cultural heritage, adopted the United Nations Declaration on the Rights of Indigenous Peoples, in 2007,[20] however, due to its non-binding nature, this piece of legislation has failed to curb instances of cultural appropriation.[21] Another such initiative was taken by the WIPO itself, when it formed an Intergovernmental Committee (IGC) in 2001.[22] However, in IGC sessions many Asian countries have expressed significant differences in interpretation of terms like “indigenous” and “traditional knowledge” with their American counterparts.[23]

Amidst various instances of cultural appropriation and no clear and uniform laws to tackle the same, the current IP regime is prone to cultural appropriation disputes, as seen in “The Lion King” and Navajo case.[24] An interesting takeaway from these cases is that in both the cases the indigenous communities submitted to the jurisdiction of the west. As reflected in the Navajo case[25] indigenous communities often resort to litigation to resolve such disputes.[26] However, in litigation, the possibility of an inherent conflict of interest cannot be ruled out because the judicial proceedings are not conducted in a neutral place; indigenous communities are represented by local Council, and the Judge applies her country’s rules.[27]

Further, such disputes pertain to multiple and often conflicting laws of different jurisdictions and hence, they cannot be solved by litigation which also leaves a “residue of hard feeling” between the parties.[28] Disputes of this nature must be resolved harmoniously and impartially by an arbitration mechanism which is reflective of various ethical norms, customary rules and protocols.[29] In fact this was the premise behind the first arbitral institution i.e. the Maritime Arbitration Commission, established in 1930.[30] Such framework must also be in place for IP disputes in furtherance of cultural appropriation and parties should not resort to litigation and bind themselves to the jurisdiction of the west.

The way forward: Ethnic balance in WIPO’s arbitral framework

WIPO is determined to safeguard cultural heritage and had envisaged an arbitration framework way back in 1994,[31] a facet of which was also to resolve cultural heritage disputes in a more sustainable and efficacious way.[32] In this reference, WIPO has often addressed the potentiality of arbitration in resolving art and cultural related disputes.[33]

However, interestingly, the non-uniformity in embracing arbitration in instances of cultural appropriation is due to the cultural difference vis-à-vis arbitration.[34] Western European Countries and the United States favour arbitration however, developing countries from Latin American, Arab and Asia have their reservations in resorting to international arbitration.[35] The sociological framework reflective of numerous instances of IP violations and cultural appropriation, begs the question as to why the developing countries submit themselves to the jurisdictions of the west and not resort to international arbitration framework, of the WIPO, so as to protect their cultural heritage.

The Australian “Carpet case”, Milpurrurru v. Indofurn Pty. Ltd.[36] captures the essence of the aforesaid quandary. In this case, the works of aboriginal artists, without their authorisation were being reproduced by industrial manufacturers of carpets. The carpet manufacturers based their defence on technicality and contended that they did not per se reproduce any works of the artists.[37] However the Court acknowledged the fact that in such disputes non-legal issues play a vital role and consequently framed issues on equity and “moral rights”. Hence, in such disputes, traditional remedies of arbitration such as monetary damages may not be satisfactory to the aggrieved party. Parties expect equitable reliefs from courts and hence avoid arbitration. Therefore, such disputes, if referred to arbitration pose a unique kind of challenge before the arbitration panel as the subject-matter necessarily may not be legal or commercial in its strictest sense and requisite cultural, emotional, historical, religious, spiritual, ethical and moral elements may be involved.

However, given the prevailing ethnic imbalance in the present arbitration framework, rulings pertaining to non-legal issues, reflective of the Carpet case[38] are quite unlikely. Currently, arbitration in the UK is restricted to a particular lobby, the members of which often get reappointed in various arbitral institutions.[39] The problem lies in the underrepresentation of ethnic minorities which stems from a cultural exclusivity in the existing framework. Data from 2018 of the International Chamber of Commerce (ICC) entails the dominance of Western European members as arbitrators who constitute more than 40% of the total arbitrators.[40] The London Court of International Arbitrators has 57% of arbitrators from England. The ICC (for the term of 2018-2022), has a marginally better record at representation with 13% representation from Africa and 26% from Asia, however, Europe continues to dominate membership with a disproportionate 40% representation.[41]

As pointed out by Lord Neuburger, this problem stems from an exclusionary framework of the European Legal Circle which is dominated by upper class white males.[42] This has impacted all the arbitral institutions in Europe and consequently the arbitral framework of WIPO, has negligible representation of Asia and Africa and is dominated by American and European members.[43] WIPO’s commitment to ensure “IP protection to cultural heritage” cannot be fulfilled merely by using “its international contacts in individual cases”.[44] We need an ethnically balanced framework. In 2016, acknowledging equal representation, WIPO pledged towards ensuring gender diversity[45] however, a similar determination towards geographic diversity is yet to be seen.

Scholars have rightly suggested that lack of diversity encourages “group thinking” wherein the dominant idea of a cohesive group overrides any possibility of realistic appraisal.[46] Likewise, the dominance of the Europeans amidst ethnic imbalance in international arbitration make it immensely difficult to fathom a framework wherein IP disputes revolving around cultural heritage, are dealt with in a considerate manner, and not judged merely in accordance to their commercial value.

However, owing to the private nature of the arbitration proceedings, it is difficult to ascertain what has been the actual impact of ethnic imbalance in arbitration framework of the WIPO in effectively resolving IP disputes over cultural appropriation.[47] Empirical research is difficult to conduct since only the cases that are particularly interesting or cases which are appealed are reported.[48] The actual tangible impact of instances of cultural appropriation and its correlation with the current regime of arbitration proceedings is an example of the classic “evidence of absence or absence of evidence” notion.[49] What we know so far, is that various instances of cultural appropriation are seen on a regular basis which itself speaks volumes about the efficacy of an ethnically imbalanced arbitration mechanism.

The need of the hour is to revamp the arbitration mechanism by increasing the representation of ethnic minorities. Only with adequate representation, indigenous communities can reconstruct the predetermined “group thinking” of “European” arbitrators. The way forward is to acknowledge and include various concepts, procedures, customary rules and protocols in WIPO’s arbitral framework. Such framework was also envisaged when the Maritime Arbitration Commission was set up.[50]

There are numerous indigenous cultures and adjudicating them poses a unique set of legal and sociological considerations. However, appropriation of all unique cultures has a trait of commonality i.e., they share a history of colonial oppression.[51] Therefore, while including the various aforementioned concepts in arbitral mechanism, WIPO can adopt the legal culture of ogus argues i.e., incorporating a network of various cultures, laws and protocols,[52] based on the common trait of colonial oppression. This may lay the foundation of a uniform model law as well. However, such changes can only be done when we have ethnic balance in the international arbitration framework.

Conclusion

The WIPO is committed towards safeguarding cultural heritage but parallelly we see numerous instances of cultural apparition which at times are normalised by the municipal adjudicating authorities. Therefore, it is imperative for the parties to file cultural heritage claims before a neutral adjudicating authority. Sadly, in the current international arbitration framework, due to ethnic imbalance, cultural heritage disputes cannot be pleaded. These disputes pertain to substantial non-legal issues which a closed group of European arbitrators cannot adjudicate upon. Therefore, in international arbitration ethnic imbalance poses a vital concern when it comes curbing cultural appropriation and efficaciously adjudicating IP disputes related to cultural heritage. Additionally, if we have an ethnically balanced arbitration framework which acknowledges a network of various cultures then perhaps it will be a great step towards adopting a uniform model law.

† 3rd Year BA LLB (Hons) law student, West Bengal National University of Juridical Sciences, e-mail: pratyush219083@nujs.edu.

†† 3rd Year Student, West Bengal National University of Juridical Sciences.

[1] Natalia Giraldo Carrillo, “The ‘Repeat Arbitrators’ Issue: A Subjective Concept”, Int. Law: Rev. Colomb. Derecho Int.  No.19 Bogotá July/Dec 2011, p. 75.

[2] Diversity in the Judiciary: A Conversation with Deanell Tacha, Kansas Law Review, Vol. 59, 2011, p. 1037,

[3] Naimeh Masumy, “Is Increasing Gender and Ethnic Diversity in Arbitral Tribunals a Valid Concern and Should Arbitral Institutions Play a Greater Role Ensuring Diversity?”, Fordham International Law Journal, 15-6-2021, available at <https://www.fordhamilj.org/iljonline/2020/11/23/is-increasing-gender-and-ethnic-diversity-in-arbitral-tribunals-a-valid-concern-and-should-arbitral-institutions-play-a-greater-role-ensuring-diversity> (last visited on 15-6-2021).

[4] WIPO Magazine, “Curbing Cultural Appropriation in the Fashion Industry with Intellectual Property”, August 2019, available at <https://www.wipo.int/wipo_magazine/en/2019/04/article_0002.html> (last visited on 15-6-2021).

[5] Benedetta Ubertazzi, Exclusive Jurisdiction in Intellectual Property 139 (2012).

[6] Julia A. Martin, “Arbitrating in the Alps Rather Than Litigating in Los Angeles: The Advantages of International Intellectual Property-Specific Alternative Dispute Resolution”, Stanford Law Review, Apr 1997, Vol. 49, No. 4 (Apr 1997), pp. 917, 927.

[7] Petition, Navajo Nation v. United States, Inter-Am. Comm’n H.R., (2-3-2015), available at <nsn.gov/docs/sacredsites/Navajo%20Nation%20Petition%20to%20IACHR%20March%202%202015.pdf>.

[8] Pieter Sanders, Comparative Arbitration Practice and Public Policy in Arbitration 165-167 (1986).

[9] James Young, “Profound Offence and Cultural Appropriation”, 2005, Vol. 63, No. 2, p. 135.

[10] Gregory Delli Carpini Jr., “Selena Gomez’s Bindi Styling: Offensive?”, Bollywood Star Priyanka Chopra Talks About the Star’s Usage, 22-5-2019, available at <https://www.billboard.com/articles/columns/the-hook/1563147/selena-gomezs-bindi-styling-offensive-bollywood-star-priyanka> (last visited on 15-6-2021).

[11] Avery Matera, “5 Times Victoria’s Secret Was Accused of Cultural Appropriation”, 7-11-2018, available at <https://www.teenvogue.com/gallery/victorias-secret-fashion-show-cultural-appropriation> (last visited on 15-6-2021).

[12] K.S. Joshi, “On the Meaning of Yoga”, Philosophy East and West, Vol. 15, No. 1 (Jan 1965), p. 53.

[13] Brigitte Vézina, “Cultural Appropriation Keeps Happening Because Clear Laws Simply Don’t Exist”, 24-12-2019, available at <https://www.cigionline.org/articles/cultural-appropriation-keeps-happening-because-clear-laws-simply-dont-exist/> (last visited on 15-6-2021).

[14] Kyle Jahner, No (Legal) Worries for Disney in “Hakuna-Matata” Trademark Row, 7-1-2019 available at <https://news.bloomberglaw.com/ip-law/no-legal-worries-for-disney-in-hakuna-matata-trademark-row> (last visited on 15-6-2021).

[15]  Kyle Jahner, No (Legal) Worries for Disney in “Hakuna-Matata” Trademark Row, 7-1-2019 available at <https://news.bloomberglaw.com/ip-law/no-legal-worries-for-disney-in-hakuna-matata-trademark-row> (last visited on 15-6-2021).

[16] Petition, Navajo Nation v. United States, Inter-Am. Comm’n H.R., (2-3-2015), available at <nsn.gov/docs/sacredsites/Navajo%20Nation%20Petition%20to%20IACHR%20March%202%202015.pdf>

[17] Nicky Woolf, “Urban Outfitters Settles with Navajo Nation After Illegally Using Tribe’s Name”, 19-11-2016, available at <https://www.theguardian.com/us-news/2016/nov/18/urban-outfitters-navajo-nation-settlement> (last visited on 15-6-2021).

[18] Shamnad Basheer, Disney can use “Hakuna Matata”, 21-12-2018, available at <https://www.hindustantimes.com/analysis/hakuna-matata-trademark-controversy-disney-is-well-within-its-rights-to-do-so/story-TptOiNKVFfyvrb14mtH6tN.html> (last visited on 15-6-2021).

[19] Shamnad Basheer, Disney can use “Hakuna Matata”, 21-12-2018, available at <https://www.hindustantimes.com/analysis/hakuna-matata-trademark-controversy-disney-is-well-within-its-rights-to-do-so/story-TptOiNKVFfyvrb14mtH6tN.html> (last visited on 15-6-2021).

[20] UN General Assembly, United Nations Declaration on the Rights of Indigenous Peoples: Resolution/adopted by the General Assembly, Art. 31, 2-10-2007, A/RES/61/295.

[21] Samantha K. Nikic, “Liberte, Egalite, Fraternite: The United Nations Declaration of the Rights of Indigenous Peoples Fails to Protect Hopi Katsinam from the Auction Block in France”, 41 Brook. J. Int’l L. 407 (2015).

[22] WIPO, Intellectual Property Needs and Expectations of Traditional Knowledge Holders—WIPO Report on Fact-Finding Missions on Intellectual Property and Traditional Knowledge (1998-1999), p. 237, available at <https://www.wipo.int/edocs/pubdocs/en/tk/768/wipo_pub_768.pdf>.

[23] Christoph Antons, “Asian Borderlands and the Legal Protection of Traditional Knowledge and Traditional Cultural Expressions”, Modern Asian Studies, July 2013, Vol. 47, No. 4 (July 2013), pp. 1403, 1414.

[24] Petition, Navajo Nation v. United States, Inter-Am. Comm’n H.R., (2-3-2015), available at <nsn.gov/docs/sacredsites/Navajo%20Nation%20Petition%20to%20IACHR%20March%202%202015.pdf>.

[25] Petition, Navajo Nation v. United States, Inter-Am. Comm’n H.R., (2-3-2015), available at <nsn.gov/docs/sacredsites/Navajo%20Nation%20Petition%20to%20IACHR%20March%202%202015.pdf>.

[26] Elizabeth Jenkins, “Lawsuit Over Cultural Appropriation of Native Designs Proceeds, Despite Neiman Marcus Bankrupty”, 1-6-2020, available at <https://www.alaskapublic.org/2020/07/01/lawsuit-over-cultural-appropriation-of-native-designs-proceeds-despite-neiman-marcus-bankrupty/> (last visited on 16-6-2021); Judith Soto, “Hands Off My Heritage: Cultural Appropriation And Trademarks”, 6-3-2019, available at <https://www.trademarknow.com/blog/hands-off-my-heritage-cultural-appropriation-and-trademarks> (last visited on 15-6-2021).

[27] Julia A. Martin, “Arbitrating in the Alps Rather Than Litigating in Los Angeles: The Advantages of International Intellectual Property-Specific Alternative Dispute Resolution”, Stanford Law Review, Apr 1997, Vol. 49, No. 4 (Apr 1997), 929.

[28] Julia A. Martin, “Arbitrating in the Alps Rather Than Litigating in Los Angeles: The Advantages of International Intellectual Property-Specific Alternative Dispute Resolution”, Stanford Law Review, Apr 1997, Vol. 49, No. 4 (Apr 1997) at 930, 935.

[29] See Heinz Strohbach, Role of Maritime Arbitral Institutions in the CMEA-Member Countries, in International Council for Commercial Arbitration, New Trends in the Development of International Commercial Arbitration and the Role of Arbitral and Other International Institutions 302, 304 (Pieter Sanders, Ed., 1982).

[30] See Heinz Strohbach, Role of Maritime Arbitral Institutions in the CMEA-Member Countries, in International Council for Commercial Arbitration, New Trends in the Development of International Commercial Arbitration and the Role of Arbitral and Other International Institutions 302, 304 (Pieter Sanders, Ed., 1982).

[31] Francis Gurry, “The WIPO Arbitration and Mediation Center and its Services”, The American Review of International Arbitration, Vol. 5, No. 2, 1994, p. 197.

[32] Sarah Theurich, “Alternative Dispute Resolution in Art and Cultural Heritage Explored in the Context of the World Intellectual Property Organization’s Work”, p. 587, available at <https://www.wipo.int/export/sites/www/amc/en/docs/theurichbeitrag.pdf>.

[33] WIPO, “WIPO Alternative Dispute Resolution (ADR) for Art and Cultural Heritage”, 15-6-2021, available at <https://www.wipo.int/amc/en/center/specific-sectors/art/> (last visited in 15-6-2021).

[34] Pieter Sanders, Comparative Arbitration Practice and Public Policy in Arbitration 165-167 (1986).

[35] Julia A. Martin, “Arbitrating in the Alps Rather Than Litigating in Los Angeles: The Advantages of International Intellectual Property-Specific Alternative Dispute Resolution”, Stanford Law Review, Apr 1997, Vol. 49, No. 4 (Apr 1997), 958.

[36] 1994 FCA 975.

[37] 1994 FCA 975.

[38] 1994 FCA 975.

[39] Natalia Giraldo Carrillo, “The ‘Repeat Arbitrators’ Issue: A Subjective Concept”, Int. Law: Rev. Colomb. Derecho Int.  No.19 Bogotá July/Dec 2011, p. 75.

[40] Gemma Anderson et al., “Diversity in International Arbitration”, Nationality/Geographic Diversity, 1-3-2020, available at <https://uk.practicallaw.thomsonreuters.com/w-019-5028?transitionType=Default&contextData=(sc.Default)&firstPage=true> (last visited on 15-6-2021).

[41] Gemma Anderson et al., “Diversity in International Arbitration”, Nationality/Geographic Diversity, 1-3-2020, available at <https://uk.practicallaw.thomsonreuters.com/w-019-5028?transitionType=Default&contextData=(sc.Default)&firstPage=true> (last visited on 15-6-2021).

[42] Lexis Nexis, “Barriers to Entry—The Lack of Diversity in International Arbitration”, 15-7-2015, available at <https://www.lexisnexis.co.uk/blog/dispute-resolution/barriers-to-entry-the-lack-of-diversity-in-international-arbitration> (last visited on 15-6-2021).

[43] WIPO, WIPO Arbitration and Mediation Centre, 15-6-2021, available at <https://www.wipo.int/amc/en/center/background.htmlon and mediation centre> (last visited on 15-6-2021).

[44] WIPO, WIPO Arbitration and Mediation Centre, 15-6-2021, available at <https://www.wipo.int/amc/en/center/background.htmlon and mediation centre> (last visited on 15-6-2021).

[45] WIPO, ” ‘The Pledge’ – Promoting Equal Representation in Arbitration”, 8-3-2017, available at <https://www.wipo.int/women-and-ip/en/news/2017/news_0001.html> (last visited on 15-6-2021).

[46] Irving Lester Janis, Groupthink 84 (1982).

[47] Christopher R. Drahozal, “Of Rabbits and Rhinoceri: A Survey of Empirical Research on International Commercial Arbitration”, 20 J. Int’L Arb. (2003), pp. 23, 24.

[48]  W. Laurance Craig et al., International Chamber of Commerce Arbitration 338 n 62, 639 n 39 (2000).

[49] Loes Knaapen, “Being ‘Evidence-Based’ in the Absence of Evidence: The Management of Non-Evidence in Guideline Development”, Social Studies of Science Vol. 43, No. 5 (October 2013), p. 681.

[50] See Heinz Strohbach, Role of Maritime Arbitral Institutions in the CMEA-Member Countries, in International Council for Commercial Arbitration, New Trends in the Development of International Commercial Arbitration and the Role of Arbitral and Other International Institutions 302, 304 (Pieter Sanders, Ed., 1982).

[51] Shamnad Basheer, Disney can use “Hakuna Matata”, 21-12-2018, available at <https://www.hindustantimes.com/analysis/hakuna-matata-trademark-controversy-disney-is-well-within-its-rights-to-do-so/story-TptOiNKVFfyvrb14mtH6tN.html> (last visited on 15-6-2021).; “The Week, what is Cultural Appropriation?”, 20-1-2020, available at <https://www.theweek.co.uk/cultural-appropriation> (Last visited on 15-6-2021).

[52] Anthony Ogus, “The Economic Basis of Legal Culture: Networks and Monopolization”, 22 Oxford J. Leg. Stud., 2002, p. 419.

Case BriefsSupreme Court

Supreme Court: The Division Bench comprising of Dhananjaya Y Chandrachud* and B. V. Nagarathna, JJ., had set aside the impugned interim order of Madras High Court holding it to be an attempt to re-write Rule 29(4) of the Copyright Rules 2013. The Bench remarked,

“The interim order converts the second proviso into a “routine procedure” instead of an exception (as the High Court has described its direction). This exercise by the High Court amounts to re-writing. Such an exercise of judicial redrafting of legislation or delegated legislation cannot be carried out.”

A few broadcasters had approached the Madras High Court to challenge the validity of Rule 29(4) of the Copyright Rules 2013 on the ground that it (i) violates Article 19(1)(a) of the Constitution; and (ii) is ultra vires Section 31D of the Act. The High Court, by its interim order had held that the duty which is cast on broadcasters in the notice to broadcast under Rule 29(1) is “apparently onerous”. Consequently, it directed that the petitioners before it may be permitted to resort to the second proviso to Rule 29(4) as a “routine procedure”, instead of an exception, subject to the duration of the ex post facto reporting being enlarged to fifteen days.

It was in the above backdrop that the instant appeal was initiated in the Supreme Court on the ground that the impugned interim order had the effect of re-writing Rule 29(4) of the Rules framed in pursuance of the provisions of Section 31D and Section 78(2)(cD) of the Copyright Act 1957.

Statutory Mandate

By the Copyright Amendment Act 2012, Parliament incorporated the provisions of Section 31D. Under sub-section (1) of Section 31D, a broadcasting organization which is desirous of communicating to the public by way of a broadcast or performance of a literary or musical work and sound recording which has already been published, may do so subject to compliance with the provisions of Section 31D. Section 31D(2) incorporates five requirements, namely:

  • a prior notice;
  • in the manner prescribed;
  • of the intention to broadcast the work;
  • stating the duration and territorial coverage of the broadcast; and
  • payment to the owner of rights in each work royalties in the manner and at the rate fixed by the Appellate Board.

Rule 29. Notice to owner for communication to the public of literary and musical works and sound recordings.—“(1) Any broadcasting organisation desirous of communicating to the public by way of broadcast or by way of performance of a published literary or musical work and sound recording under sub-section (1) of Section 31-D shall give a notice of its intention to the owner of the copyright and to the Registrar of Copyrights before a period of five days in advance of such communication to the public and shall pay to the owner of the copyright, in the literary or musical work or sound recording or any combination thereof, the amount of royalties due at the rate fixed by the Board in this regard:

…

Provided further that in case of communication to the public by way of broadcast or by way of performance of any published literary or musical work and sound recording or any combination thereof, in unforeseen circumstances, the notice shall, be given within twenty-four hours of such communication to the public:”

Contentions Raised

The appellants had challenged the interim order on the following grounds:

  1. By the interim order, the High Court re-wrote Rule 29(4), which is impermissible, in any event at the interim stage;
  2. The validity of Rule 29(4) was yet to be adjudicated upon and a presumption would attach to the constitutionality of both – the Rules and the Statute;
  3. There was no challenge to the validity of Section 31D in terms of which Rule 29 had been framed;
  4. The High Court had, in the course of its interim order, extended it only to the petitioners before it and to the broadcasters who had been impleaded as parties, as a result of which the pan-India operation of the Rule was left in the realm of uncertainty.

Observation and Analysis

Observing that the High Court had substituted the provisions of Rule 29(4) with a regime of its own, which was made applicable to the broadcasters and the petitioners before it, the Bench referred to the decision of the Constitution Bench in In Re: Expeditious Trial of Cases Under Section 13 138 of NI Act 188, wherein the Court had emphasized that, “the judiciary cannot transgress into the domain of policy making by re-writing a statute, however strong the temptations maybe.”

Reiterating that the court in the exercise of judicial review cannot supplant the terms of the provision through judicial interpretation by re-writing statutory language, the Bench expressed,

“Draftsmanship is a function entrusted to the legislature. Craftsmanship on the judicial side cannot transgress into the legislative domain by re-writing the words of a statute. For then, the judicial craft enters the forbidden domain of a legislative draft.”

Therefore, the Bench held that the High Court had entered the forbidden domain of legislative draft as it had held the broadcasters down to the requirement of prior notice, it had even modified the operation of Rule 29 by stipulating that the particulars which were to be furnished in the notice may be furnished within a period of fifteen days after the broadcast.

Hence, the Bench was of the view that an exercise of judicial re-drafting of Rule 29(4) was unwarranted, particularly at the interlocutory stage proceedings. The High Court was also of the view that the second proviso may be resorted to as a matter of routine, instead of as an exception and that the ex post facto reporting should be enlarged to a period of fifteen days (instead of a period of twenty four hours). Holding such exercise impermissible, the Bench expressed caution that it would substitute a statutory rule made in exercise of the power of delegated legislation with a new regime and provision which the High Court considers more practicable.

Accordingly, the appeals were allowed and the impugned interim order was set aside.

[Saregama India Ltd. v. Next Radio Ltd., 2021 SCC OnLine SC 817, decided on 27-09-2021]

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Report by: Kamini Sharma, Editorial Assistant, EBC Publishing Pvt. Ltd. 

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Counsels:

For the Appellants: Sr. Advocate Mukul Rohatgi and Sr. Advocate Akhil Sibal,

For the Respondents: Sr. Advocate Navroz Seervai and Sr. Advocate Neeraj Kishan Kaul

*Judgment by: Justice Dr. Dhananjaya Y Chandrachud

Know Thy Judge| Justice Dr. DY Chandrachud

Op EdsOP. ED.

  1. Introduction

Geographical indications (hereinafter “GI”) in the broadest sense refer to a form of intellectual property (IP) granted to identify goods emanating from a definite area or region. They are aimed at conferring exclusive rights on associations or producers to use a distinctive sign indicating the origin of goods and protecting unauthorised usage of the same. Some popular examples of GI protection are Champagne used to identify sparkling wine from Champagne District of France, Swiss chocolates, Kashmiri carpets, etc.

In the international context, traces of GI protection are found in the Paris Agreement,[1] Madrid Convention[2], etc. However, the term “appellations of origin” was for the first time defined in the Lisbon Agreement[3] which defined GI as “geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors.”[4] Furthermore, Article 22(1) of the TRIPS Agreement defines GI as any indication which “… identifies a good as originating … in … [a] territory when … a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”.[5]

It has been noted that GI protection under the Lisbon Agreement was dependent upon registration of GI in the originating country whereas the TRIPS Agreement gives a freehand to member countries to determine the manner of protection to be given to GI.[6]

Theoretically, India allows for GI protection through registration as well as the common law remedy of passing off. However, once a GI mark has been registered only the registered proprietor or the authorised user can bring an action for infringement of such a mark.[7]

Another important aspect which arises from the definition of GI under the two conventions is that the GI mark indicates a certain reputation and quality associated with a good or service. This implies that every good originating from a certain territory is not entitled to a GI mark unless until such good exhibits certain distinctive quality and reputation. Needless to say that such a requirement is also present in Indian Law.[8] To illustrate, chocolates originating from India are not granted GI protection but Swiss chocolates are entitled to GI protection simply because the latter have unique and distinctive characteristics like taste, texture, etc. which are not found in Indian chocolates or for that matter, any other chocolates around the world. Thus, the need to maintain sufficient quality of a good bearing GI mark becomes imperative which can only be done by implementing proper quality monitoring mechanisms.

In the light of the aforementioned background, this paper aims to analyse the position of an authorised user under the GI Act and comments on the adequacy of existing framework with respect to an authorised user. Furthermore, this paper also comments on the existing quality control mechanisms under the GI Act. Therefore, this paper attempts to examine the rights and obligations of an authorised user under the GI Act. For achieving this purpose, this paper embarks on a critical enquiry and doctrinal analysis of the provisions of the GI Act. Occasional references are made to foreign law; however, the same are made to contrast the provisions of the GI Act or to suggest improvements in the GI Act.

  1. Authorised user registration

In India, as per Section 11[9] of the GI Act any association of persons or organisation established under law representing the interest of the producers can apply for registration of GI mark. Furthermore, Section 17[10] of the GI Act allows any producer of a good with respect to which a GI mark has been granted to apply to be registered as an authorised user of such a mark. Interestingly, the Act gives only the authorised users the exclusive right to use a GI mark.[11] This invariably implies that the scheme of the Act is that though an organisation is capable of obtaining GI mark, such a mark is to be used by the authorised user only. This means that the intention of the Act is to improve the position of the authorised user wherein multiple users come together to form an association who can obtain the GI mark. However, the ground reality could not be farther from achieving this objective.

Commenting on the scheme of the Act, Basole has opined that the Indian GI regime completely ousts the role of the traditional craftsmen or the artisan whose interests are supposed to be protected by GI.[12] This is because an Indian craftsman does not have the money or the time or even the knowledge to file an application for registration or as “authorised user”. Therefore, in reality organisations employing such artisans actually gain commercial benefit of the registered GI mark whereas the actual artisans who have developed such knowledge amongst themselves are denied of the benefits of such a mark. Furthermore, scholars have argued that there are no specific provisions either in the GI Act or the GI Rules to determine whether the alleged proprietor or the alleged producer actually represent the interests of the producers or that the alleged producer is even a producer of the good or not.[13] In this respect, it is necessary to mention here that the GI Act enables a producer to oppose the application of the applicant on the ground that such a person does not represent the interest of the producers.[14] Once such an opposition is made by any other producer, the authorities under the Act, on careful consideration of evidence and surrounding circumstances have denied registration of GI mark if the applicant association does not represent the interests of the producers or if their sole motive is to derive commercial benefit.[15] However, aside from the delay in deciding such oppositions, the producers may not always be in the position to oppose each and every unauthorised registration. Moreover, if unauthorised registrations are not curbed, it may create difficulties in registration of authorised users. Therefore, it would be beneficial if the initial onus of proving that the applicant organisation is representing the interests of the producers is made more stringent to curb unauthorised registrations.

Another problem that was faced by authorised users was that an application for authorised user had to be filed jointly with the registered proprietor and a “no-objection certificate” was required from such proprietor.[16] However, this difficulty has now been resolved to some extent by the newly enacted GI Amendment Rules, 2020.[17] As per the new rules, now an application for authorised user can be made without a “no-objection certificate” from the proprietor and the only requirement is now to serve a copy of the application on the registered proprietor.[18] Moreover, the registration fee has been almost completely waived off.[19] Thus, some respite has been provided by the statute for registration as authorised users.

On a practical note, various initiatives and programmes have been taken by governmental and non-governmental bodies to spread awareness against the producers to register themselves as authorised users. Such efforts will surely help in more producers coming forward to register themselves as “authorised users”.

  1. Quality monitoring

Once the producer or the association, as the case may be, has been granted the right to use a GI mark, the next question that arises is of quality monitoring. Unlike other forms of IPRs, GI protects collective interests; therefore, it becomes necessary that no one person compromises upon the quality of a good originating from a particular territory simply because such harm to reputation also harms the commercial interests of other producers. On the other hand, if appropriate quality monitoring mechanisms are not established then it may harm the consumer interests as the consumers pay a premium for a good bearing a GI mark because of the assurance of a particular quality which such good would possess.

Quality monitoring mechanisms can be of two broad kinds, namely, self-imposed quality monitoring mechanisms and Government imposed control mechanisms. One example of self-imposed mechanism can be found in case of Thanh Ha Litchi originating from Vietnam. Under this mechanism the producer association has itself formulated a set of guidelines which creates an internal quality control mechanism. In addition to this there are periodic control tests conducted by external quality monitoring agencies.[20] The problem with self-imposed control mechanism is that such a system can be easily manipulated to suit the needs of the producers i.e. the users may adopt a less stringent control mechanism. Now, one may argue that by adopting a less stringent mechanism and thereby compromising upon the quality, the producers may harm their own interests. Whilst such an argument cannot be dismissed however, the criticism noted here should be viewed from a wider angle, namely, from the perspective of the State. Many countries including India enjoy high reputation for some of its goods bearing GI marks. Now, imagine that because of certain circumstances (e.g. COVID-19), the producers are unable to maintain their quality standards. In a self-imposed quality monitoring mechanism without any State intervention, the producers could simply lower the threshold and pass off inferior goods under a particular GI mark. Consequently, such inferior goods can seriously damage the reputation of the State in the international market in the long run. Another concern is that self-imposed control mechanisms may not be viable in all circumstances. The success of such a mechanism would be highly dependent upon the coordination amongst various users of the GI mark and the general consensus amongst the users to adopt a self-imposed control mechanism.

In contrast to self-imposed quality control, Government imposed quality control has been implemented where self-imposed quality control has become futile. For instance, in the early 21st century, India faced a huge problem due to export of inferior quality of rice under the GI of Basmati. Fearing that such fraudulent practices may tarnish the reputation of genuine Basmati rice in the global market, the Government enacted the Export of Basmati Rice (Quality Control and Inspection) Rules, 2003[21] which inter alia provided for declaration of quality control by exporters, inspection by authorities, etc. In other cases, the Indian Law does not provide for inspection by government authorities but rather publishes the application and any person can challenge such registration on numerous grounds which inter alia include not having sufficient quality monitoring mechanisms in place.[22] Similarly, a GI registered mark can also be challenged if it fails to meet the necessary quality standards.[23] Therefore, it can be said that Indian law employs a system of public vigilance wherein it is assumed that genuine producers or producer associations or even consumers, as the case may be, would be vigilant to ensure that no authorised user compromises on the quality of goods with respect to which GI mark has been granted. Some authors have opined that India should increase government involvement in quality monitoring across all GI products.[24] The problem with such an approach is that it not only places an additional burden on the public exchequer but Indian administration has an ill repute for red tapism, corruption, administrative delays, etc. Therefore, increasing government intervention would only add to the woes of the artisans and poor farmers.

At this juncture, it is pertinent to mention here that as per the GI Rules, the association applying for registration has the liberty to specify the quality monitoring mechanisms to ensure quality of a particular good.[25] In this respect, it has been opined that a government agency or State-owned Board could file an application for registration to set high standards for quality monitoring and thereafter transfer the GI mark to users.[26] Such a mechanism seems to be the most suitable as it saves cost by not imposing periodic inspections by State authorities. Furthermore, this can also help curb the menace wherein the registered association is exploiting the benefits of GI mark at the cost of artisans and poor farmers. However, it is suggested that such authority undertakes actual field study to specify realistic quality monitoring mechanisms rather than unachievable and ambitious mechanisms.

One general concern arising out of quality monitoring is that it may hamper innovation. To elaborate, consider that a GI mark is granted for a particular clothing item for a particular quality and design. Now, suppose that over a period of time, there has been an enhancement in quality of the product due to certain improvements in the production technique or perhaps due to availability of superior quality of raw material. Now, it may so happen that such improved product may not pass the test of the registered quality of the good against which the GI was granted. In other words, just because a superior good does not confirm to the notion of what it ought to be would perhaps imply that such a good is not eligible for GI protection altogether. In this respect, the Japanese Law allows producer associations to register any change (including enhancement of quality) in quality standards of the goods.[27] Thus, such a dynamic quality monitoring model could promote further innovation in GI protected goods provided that all producers are able to achieve such superior quality. In this respect the GI Act and the GI Rules enable the registered proprietor to add or alter any registered GI mark which could include any enhancement or change in quality monitoring mechanism.[28] Nevertheless, on a note of caution, it is possible that the alteration route is adopted to liberalise the quality control mechanisms. In this respect, Section 29 of the GI Act leaves the end discretion in the hands of Registrar to allow or disallow such an alteration. Therefore, this discretion can be used as a filter to allow only alteration of quality enhancing mechanisms and not quality reducing except of course in exceptional circumstances.

  1. Conclusion

The potential impact and benefits of GI law continues to remain underrated even today. This undervaluation partly exists due to lack of academic discussion on unexplored intricacies of the GI Act. This paper is only an attempt to unravel some of the less talked concepts existing in the GI law.

The discussion has shown that though the heart of legislature was in the right place while enacting the GI law, it has failed to achieve the desirable objectives. However, the Act has slowly recognised the socio-economic conditions of the producers and has made an attempt to increase the registration of genuine authorised users. The recently adopted twin model consisting of easing the registration process and creating awareness amongst the producers seems to be promising and can go a long way in improving the position of an authorised user. However, such awareness programmes need to become more intensive so as to not only promote registration of authorised users in the existing GI registered products but to also motivate producers to make efforts, either by forming associations or through government authorities, to register more and more goods under GI tags.

As regards quality monitoring mechanisms, the GI Act contains an appreciable model of self-imposed quality monitoring mechanism which is enforced by a system of public vigilance, except for a few cases like Basmati rice. This paper has suggested that realistic quality monitoring mechanisms can be established by State entities while applying for registration on behalf of the producers. Such mechanisms can then be suitably altered by the producers with the primary benefit of enhancing the quality of GI marked goods.

Lastly, this paper has examined various intricacies and practical issues pertaining to registration and quality monitoring under the GI Act but none of them point to any deficiency in the legislative framework except for some minor procedural modifications. The need of the hour is to create awareness so that the producers can enjoy the benefits arising from selling GI marked goods and at the same time create a name for the nation in the international market. The novel model of applying the GI Act as suggested in this paper can go a long in achieving this objective.

† LLM (Business Laws) candidate, NLSIU, Bangalore.

[1] Paris Convention for the Protection of Industrial Property, 20-3-1883, Art. 1(2), 828 U.N.T.S. 305.

[2] Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, Art. 1.1, 14-4-1891, 828 U.N.T.S. 163.

[3] Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, 31-10-1958, 923 U.N.T.S. 205 (hereinafter “Lisbon Agreement”).

[4] Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, Art. 2(1), 31-10-1958, 923 U.N.T.S. 205.

[5]Agreement on Trade-Related Aspects of Intellectual Property Rights, 15-4-1994, 1869 U.N.T.S. 299 (hereinafter “TRIPS Agreement”).

[6]Bernard O’Connor, Sui Generis Protection of Geographical Indications, 9 Drake Journal of Agricultural Law 359, 362 (2004).

[7] The Geographical Indications of Goods (Registration and Protection) Act, 1999, Ss. 20 and 21 (hereinafter “the GI Act”).

[8] The Geographical Indications of Goods (Registration and Protection) Act, 1999, S. 2(1)(e).

[9] Section 11, GI Act, 1999.

[10] Section 17, GI Act, 1999.

[11] The Geographical Indications of Goods (Registration and Protection) Act, 1999, S. 21(1)(b).

[12] See Amit Basole, Authenticity, Innovation, and the Geographical Indication in an Artisanal Industry: The Case of the Banarasi Sari, 18 Journal of World Intellectual Property 127 (2015).

[13] N.S. Gopalakrishnan, Protection of Traditional Knowledge: The Need for a Sui Generis Law in India, 5 Journal of World Intellectual Property 725, 736 (2002).

[14] The GI Act, S. 14.

[15] See e.g. Subhash Jewellery v. Payyannur Pavithra Ring Artisans & Development Society, 2012 SCC OnLine IPAB 171 :  (2013) 55 PTC 197.

[16] The Geographical Indications of Goods (Registration and Protection) Rules, 2002, Gazette of India, Part II S. 3(i), R. 56(1) (8-3-2002) (hereinafter “the GI Rules”).

[17] The Geographical Indications of Goods (Registration and Protection) (Amendment) Rules, 2020, Gazette of India, Part II S. 3(i) (26-8-2020) (hereinafter “the GI Amendment Rules, 2020”).

[18] The Geographical Indications of Goods (Registration and Protection) (Amendment) Rules, 2020, Gazette of India, Part II S. 3(i) (26-8-2020), Rr. 2-3.

[19] The Geographical Indications of Goods (Registration and Protection) (Amendment) Rules, 2020, Gazette of India, Part II S. 3(i) (26-8-2020), R. 6.

[20]Dao The Anh, et al., Models of Geographical Indication Protection in Vietnam : Facts, Difficulties and Prospects (2009). <https://www.malica.org/content/download/4452/33230/version/1/file/2009+GI+Vietnam_Dao+et+al.+2009_IAAE+Beijing.pdf>

[21] The Export of Basmati Rice (Quality Control and Inspection) Rules, 2003, Gazette of India, Part II S. 3(ii) (23-1-2003).

[22] The GI Act, S. 14.

[23] The GI Act, S. 27.

[24] See Tania Singla, Post-Registration Quality Control Measures for Geographical Indications in India: The Way Forward, 7 Indian Journal of Intellectual Property Law 103, 117-20 (2015).

[25] The GI Rules, R. 32(1)(6).

[26] Delphine Marie-Vivien, The Role of the State in the Protection of Geographical Indications: From Disengagement in France/Europe to Significant Involvement in India, 13 Journal of World Intellectual Property 121, 141 (2010).

[27] Tokutei Norin Suisan Butsu to no Meisho no Hogo Ni Kansuru Horitsu (Act for the Protection of the Names of Designated Agricultural, Forestry and Fishery Products and Foodstuffs), Law No. 84 of 2014, Arts. 15-16 (Japan).

[28] GI Act, S. 29; GI Rules, R. 71.

Interviews

Mr. Amit Jamsandekar is an Indian lawyer as well as a Solicitor of Supreme Court of England & Wales (non practising) currently practicing as an independent counsel at the Bombay High Court and his areas of practice and expertise include IP Laws, Commercial Laws and Arbitration and Conciliation. His journey of being graduated from the University of Mumbai to a Master’s degree from one of the leading law schools in the UK, at the University of Cardiff, and from considering farming as a future to being among a select group of counsels litigating in intellectual property in India, has been nothing but endearing for young law professionals.

He has been interviewed by Richa Bhandari , EBC/SCC Online Student Ambassador who is currently pursuing BBA LLB (Hons.) from University of Petroleum and Energy Studies, Dehradun.

 

  1. To begin with, if I may request you to please share with our readers something about yourself, and your 23-year old journey as an independent counsel as well as a Solicitor of Supreme Court of England and Wales (non-practicing).

From graduation in rural development from a college in the hinterland of Maharashtra to a master’s degree from one of the leading law schools in the UK, at the University of Cardiff, and from considering farming as a future to being among a select group of counsels litigating in intellectual property in India, my journey has been quite serendipitous. Since I come from a family that does not have any background in the legal field, it was not a planned course. My decision to focus on intellectual property as a specialty in my counsel practice as a commercial and corporate litigator was timely since the Indian corporate environment was just starting to become sensitive to such matters then. Due to my early start in this direction, I have had the privilege of seeing intellectual property (IP) law evolve right before my eyes, and also to contribute to the discipline through my practice, research, publications, and as a visiting faculty at law schools and educational institutions.

 

  1. As a large percentage of our readers are currently students of law, I would like to jog your memory back to almost over two decades ago. Would you please tell us about your law school life and what inspired you to pursue law?

Law school, in those early days of Indian economic liberalisation, was a time for broadening exposure and horizons. This meant that as much, if not more, legal education was sought from outside the school as from within. Students eager to join the profession would join law firms or chambers of senior advocates to work as apprentices, often without any stipend. Through observation of the senior lawyers around them, they would learn about the rigour and nuances of the profession. The concept of the transactional lawyer, which is quite popular today, was just evolving then. So the opportunity to apprentice with senior lawyers was our main window to the legal world in practice.

My inspiration to pursue law came from the personal experience of a lawsuit. I had the good fortune of, unknowingly, assisting a renowned local lawyer in my hometown with the case. As my interest in the proceedings increased, I sought more direction on how to go about gaining formal knowledge of the subject. And the rest, as they say, is history.

 

  1. I would not be putting it wrong, when I say that intellectual property as a field is pretty dynamic and while your qualifications precede you, I would like you to throw some light on your decision to pursue LLM as well as PhD in the same field.

In the Indian context, the field of IP is relatively new. The discipline, although it borrows heavily from the UK IP law, is evolving in a slightly different direction. Many concepts remain contentious depending on the interpretation one uses. Since the changes happen rapidly, it is important to stay abreast of the latest developments. As somebody who has seen the discipline emerge from its nascency, I am keen to be able to contribute to further research in this area. Yet, even today, there are few opportunities for formal research in IP in India. Hence, I decided to pursue a PhD in the UK, at the University of Leicester, as it also offers me the chance to keep up with international developments in the field and with new research methods.

 

  1. Keeping in line with the aforementioned question, there is a sudden rise in the field of IP which has grown drastically over the past few years. What would be your advice for law students who are developing their interest in the field of IP?

At a general level, students desirous of working in the field of IP should keep up with the developments in the world of business, science and research, where most of the intellectual assets are being created. At a specific level, students should study case law and blogs published in other jurisdictions on the subject to become aware of the evolving facets of IP law and practice areas on the subject.

 

  1. How much weightage would you give to proper legal research and the tools used for doing it? How should law students equip themselves with legal research skills? What do you do to maintain your extensive knowledge bank – any tips that might like to share with our readers?

The importance of research can never be underestimated in the legal process. The preparation for a case involves determining a strategy. But the strategy must be supported by thorough research. Such research usually begins with books, commentaries, precedents and case law. Tools should be used to filter out what is irrelevant. But to develop research skills, one must firstly develop one’s understanding of the type of core subject-matter to determine which perspective to use for research. And such understanding can be developed only by taking a keen interest in the subject-matter itself.

Personally, I first write down my research question so as to develop a specific answer. However, while carrying out research, I prefer to far read beyond the question and possibly everything that has been published on the issue.

 

  1. Over the five years of law school, the importance of publications is not emphasised enough. Being associated with various reputed journals, what would be your take on the same?

Putting down an idea in writing activates the thinking centre in the brain. As you delve deeper into an issue, the act of writing forces you to reflect on your words and evaluate  them carefully not only for imparting the accurate meaning that you wish to convey but also for creating the appropriate impact on the mind of the reader. This ability to convey a thought and influence the thinking of others is an important skill to develop for a lawyer.

Further, the legal profession is a vast ocean with several luminaries who have long standing experience and, hence, are very well known. For a relatively junior professional, getting published provides an opportunity to present their ideas on a larger platform and broader audience than the ones they may be exposed to in their regular work.

 

  1. Corporate lawyers are infamous for complaining about the lack of a work-life balance. What would be your take on the “work-life balance” complaint?

The need for a balance between work and life differs from person to person. The legal profession is not the only one known for tough timelines and long hours of work. I think that while the early years in this profession require a certain degree of dedication of time for learning and absorbing the finer aspects of work as a lawyer, over time, each person is able to find the balance that she/he is seeking. In fact, I would go so far as to say that this profession offers a great balance of structure and flexibility to allow each one to enjoy work as well as life.

 

  1. Lastly, with the ever-changing world around us, especially in times of the deadly pandemic, what would be your advice to young lawyers to help them secure internships and achieve their goals?

The pandemic has, no doubt, caused many disruptions in every sphere of life. But it has also opened up possibilities for working seamlessly across locations. Whereas earlier a candidate would be restricted to seeking internships within the city where (s)he lived or would have to be ready to relocate at least temporarily, today, they can seek an opportunity anywhere in the country and be able to participate and contribute virtually. The requirement for interns, in general, is at a similar level as earlier.

I would only add that they should keep their minds open to all varieties of subjects and firms, seek experiences and exposure of different kinds, and be willing to explore the legal landscape and system, be it in large law firms, or government offices, or subordinate courts, or in the chambers of trial lawyers.

Case BriefsSupreme Court

Supreme Court: The Bench of L. Nageswara Rao, B.R. Gavai and B.V. Nagarathna, JJ., addressed a matter with respect to registration of ‘Basmati’ as a Geographical Indication for basmati rice.

In the present matter, the Agricultural and Processed Food Products Export Development Authority (“APEDA”) filed an application before the Assistant Registrar of the Geographical Indications Registry, Chennai to register ‘Basmati’ as a Geographical Indication in Class 30 under the Geographical Indications of Goods (Registration and Protection) Act, 1999.

In its application, APED claimed five States in their entirety (Delhi, Punjab, Haryana, Uttarakhand and Himachal Pradesh) and parts of two States (Uttar Pradesh and Jammu & Kashmir) as “traditionally Basmati cultivating areas” in India. The application was accepted and published by the GI Registry in the GI Journal inviting objections to the acceptance, if any, from third parties under the GI Act. The petitioners in instant special leave petitions raised oppositions on the ground that APEDA had failed to include 13 districts of the State of Madhya Pradesh in its GI application as Basmati growing areas. These oppositions were filed under Section 14 of the GI Act.

Petitioners also filed applications under Section 12 of the GI Act separately on the ground that demarcation of the claimed areas by APEDA in their GI application was vague, over broad, unscientific and contrary to the requirements of the GI Act. The Assistant Registrar held that APEDA failed to satisfy the fundamental requirement of clear, specific and reasoned demarcation of actual Basmati cultivating areas. APEDA was directed to identify the actual cultivated area and re-file the GI application for Basmati. In an appeal filed by APEDA, the Intellectual Property Appellate Board (“IPAB”) held that APEDA was entitled to get the GI tag for Basmati rice in respect of the areas and regions specified in the GI application. Thereafter, in 2016, GI registration certificate was issued by the Assistant Registrar to APEDA in respect of ‘Basmati’ under Class 30.

During the pendency of Writ Petitions 9564 and 5798 of 2016 filed before the High Court of Madras by the petitioners against the IPAB order, a consent order was passed wherein the High Court was of the opinion that over-inclusion of areas in the States forming part of the APEDA GI application needed to be considered in the said writ petitions.

By a subsequent order in those writ petitions, the High Court had directed the Assistant Registrar to commence and conclude proceedings relating to objections filed by the petitioners for inclusion of 13 districts of the State of M.P. Thereafter, the Assistant Registrar rejected the petitioners case for inclusion of the 13 districts of the State of M.P. for the purposes of grant of GI tag for Basmati. Challenging the order passed by the Assistant Registrar, the State of M.P. and the Madhya Kshetra Basmati Growers Association Samiti filed Writ Petitions 6857 and 7030 of 2018 which are pending consideration before the High Court of Madras.

The High Court disposed of and dismissed the earlier Writ Petitions 9564 and 5798 of 2016 vide judgment dated 27-2-2020 by directing the parties to raise all submissions in the subsequently filed pending Writ Petitions 6857 and 7030 of 2018. Aggrieved by High Court order, the instant special leave petition was filed by Madhya Kshetra Basmati Growers Association Samiti.

Analysis, Law and Decision

The Supreme Court was of the opinion that the High Court committed an error in not adjudicating the issue relating to over-inclusion of areas in the States forming part of the APEDA GI application.

As noted above, the High Court had passed a consent order during pendency of Writ Petitions 9564 and 5798 of 2016 wherein the High Court had made it clear that over-inclusion of the areas in other States of APEDA’s GI application would be considered in those very writ petitions. However, by the final impugned order passed on 27-2-2020, the High Court observed that the petitioners did not have any grievance relating to the over-inclusion of areas in the other States forming part of the GI application. On such finding, the High Court permitted the petitioners to raise all grounds in the subsequently filed pending Writ Petitions 6857 and 7030 of 2018. The Supreme Court held that:

“The [subsequently filed pending writ petitions] pertain to the validity of the order passed by the Assistant Registrar rejecting the contention of the petitioners for inclusion of 13 districts in the State of Madhya Pradesh for the purposes of the Basmati GI. The petitioners cannot raise the dispute pertaining to over-inclusion of areas in the other States in those pending writ petitions.”

Therefore, without expressing any opinion on the merits of the issues involved, the Supreme Court set aside the impugned decision of the High Court and remanded the matters back for fresh consideration.

Lastly, in view of the importance of these matters, the Supreme Court directed the High Court to dispose of the petitions expeditiously. [Madhya Kshetra Basmati Growers Association Samiti v. Intellectual Property Appellate Board, Chennai, Petition(s) for Special Leave to Appeal (C) No (s). 8461 of 2020, decided on 2-9-2021]

Advocates before the Court:

For the Petitioner (s):

Mr. Gopal Jha, AOR

Dr. Abhishek Manu Singhvi, Sr. Adv.

Mr. Mohit Goel, Adv

Mr. Sidhant Goel, Adv

Ms. Ruchira Gupta, Adv

Mr. Aditya Goel, Adv

Mr. Karmanya Dev Sharma, Adv

Mr. Anurag Sharma, Adv.

Ms. Akansha Sisodia, Adv

Mr. Shishir Deshpande, AOR

For the Respondent(s):

Mr. S. Guru Krishna Kumar, Sr. Adv.

Mr. M. A. Chinnasamy, AOR

Mr. Ashish Kumar Upadhyay, Adv.

Mr. Y. Lokesh, Adv.

Ms. V. Keerthana, Adv.

Ms. C. Rubavathi, Adv.

Mr. M. Veeraragavan, Adv.

Mr. Anubhav Chaturvedi, Adv.

Mr. Pankaj Agarwal, Adv.

Mr. Abhinav Mukerji, AOR

Ms. Pragati Neekhra, AOR

Case BriefsHigh Courts

Delhi High Court: Sanjeev Narula, J., granted an injunction to the Law Firm ‘Singh & Singh’ in a case of trademark infringement.

I.A. 7143/2021 (under Order 39 Rule 1 and 2)

Plaintiffs filed the present application under Order 39 and Rule 1 and 2 CPC seeking protection of their mark/name ‘Singh & Singh’. The plaintiffs were aggrieved by the use of identical marks ‘Singh + Singh’; ‘Singh + Singh Lawyers LLP’ and other derivatives by defendant 1 to 5.

Founders of Law Firm ‘Singh & Singh’ coined the said term and the same has been in use since 1997.

Rajiv Nayar, Chander Lall and Sandeep Sethi, Senior Counsel for the plaintiffs submitted that in May, 2021, plaintiffs were surprised to find a post on social media using the name ‘Singh + Singh LLP’ and ‘Singh + Singh Lawyers LLP’.

With further research it was noted that the said name was being used by the husband of Defendant 3, Defendant 2 along with another partner Defendant 4 Defendant 3 used to work as an associate in plaintiff 1 firm.

Further adding to the submissions, Counsel stated that the name ‘Singh & Singh’ has been registered since 2005 in respect of legal services and has been in use since 1997. The name ‘Singh & Singh’ and ‘Singh + Singh’ are identical to each other and there is a clear case of infringement under Section 29(2)(c) of the Trademarks Act, 1999.

Analysis, Law and Decision

Bench prima facie opined that the facts conspicuously demonstrated that the infringing marks were identical and were being used for identical services and an identical class of customers/clients.

Plaintiff 1 has a global reputation and goodwill and is servicing clients across the globe. Court found merit in the plaintiff’s contention that nowadays legal services are being rendered across the globe through internet and electronic means and law firms such as plaintiff 1 would have a reputation not limited by geographical boundaries.

Hence, there could be a strong possibility of confusion amongst the foreign clients/law firms relating to the two marks which are predominantly identical.

“…strong likelihood that they would be led to believe that ‘Singh + Singh’ is another branch or an associate office of ‘Singh & Singh’

 Adding to its analysis, Court stated that the adoption of identical mark/name by the defendant in deceptively similar colour combination on online platforms for providing legal services was fraught with mischief and did not appear to be bonafide.

In Court’s opinion, plaintiffs established a prima facie case and a balance of convenience was established in favour of the plaintiffs and they were likely to suffer an irreparable loss in case the injunction was not granted.

Therefore, till the next date of hearing, defendants, their partners/promoters, associates, family members, employees and anyone acting for and on their behalf were restrained from using the impugned marks including the name/mark “Singh + Singh”, “Singh + Singh LLP”, “Singh + Singh Lawyers LLP”, singhllp.com, singhllp, @singhsinghllp, Singh-Singh-LLP, the Singh + Singh impugned logo, or any other trademark/trade name/service name/trading style or domain name or Twitter handle, LinkedIN profile, Facebook profile, logo, device, etc., which was either identical to or deceptively similar to the Plaintiffs’ mark(s) ‘Singh & Singh’, ‘Singh & Singh Law Firm LLP’, ‘Singh & Singh.com’, ‘Singh & Singh Advocates’ or any other derivatives thereof so as to result in infringement of trade mark(s), passing off, acts of unfair competition, dilution etc. for rendering legal services, consultancy services related to law, or any other cognate/allied services, at any place or in any form including in print or electronic media, online platforms etc.

Defendant 6 was also directed to suspend the domain name of ‘www.singhllp.com’ till the next date of hearing.

Matter to be listed before the Court on 23-09-2021. [Singh & Singh Law Firm LLP v. Singh + Singh Lawyers LLP, 2021 SCC OnLine Del 3059, decided on 02-06-2021]

Advocates before the Court:

For the Plaintiffs: Rajiv Nayar, Sandeep Sethi and Chander M Lall, Senior Advocates with Saurabh Seth and Tanmaya Mehta, Advocates.

For the Defendants: Divjyot Singh, Avsi Malik and Nipun Dwivedi, Advocates for D-1, 2 & 4.

Nimish Chib, Advocate for D-3 & 5.

Alipak Banerjee, Advocate for D-6 & 7.

Telangana High Court
Case BriefsHigh Courts

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

Instant petition was filed to seek a writ of mandamus.

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

Analysis and Decision 

GSK – Widely Known

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

What had 2nd respondent Ordered?

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

Contention of ‘Limitation’ – Rejected

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

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

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

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

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

Section 35:

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

Op EdsOP. ED.

Infringement of copyright is major drawback in the digital age of internet. With time, it has gradually become easier to infringe intellectual property rights, and at the same time, it has become harder to prevent others from stealing an individual’s original work. A “copyright” is a legal right given to the authors/creators of original works and it bestows upon them to decide how and when those works can or cannot be copied, modified, and distributed by another person. If an individual violates this right of the owner by using, selling or distributing an original work without prior permission of the owner, it leads to infringement and as a result, the copyright-holder is entitled to seek legal action.

The purpose behind copyright is that the creators restrict what is being done with their respective work and a prior permission must be obtained for using it. Copyleft licensing exists within the legal framework of the concept of copyright. Copyleft licences are in a way subsets of copyright licences, and the idea behind this is to re-establish freedom of users.

Copyleft: Meaning and origin

Copyleft has been defined as “licence granting general permission to copy and reproduce intellectual property. Where copyright protects society’s interests in invention and creativity by providing individual incentives through copyright control, copyleft protects social interests in knowledge creation by vesting copyright control in a large general community. The concept of copyleft is central to many programming projects, and the licence is most commonly used for software, digital art, writings, and other creative content”.1

The GNU Project gives this simple definition of copyleft: “the rule that when redistributing the program, you cannot add restrictions to deny other people the central freedoms (of free software)”.2

The term “copyleft” has been derived from the term “copyright” itself. As per this concept, copies of one’s work are open for distribution, access and modification as per the other person’s requirements, on precondition that the edited work shall also be made available for free and the same rights shall be maintained as the work goes forward.

In essence, a copyleft work is open for distribution and amendments on a condition that the work resulting from such copyleft content shall be free and available as well as accessible within the public domain. The term “copyleft”, for the first time, was by used Li-Chen Wang during late 1970’s in his Palo Alto “Tiny BASIC’s distribution notice”. In this, he wrote that “@copyleft all wrongs reserved” as opposed to “copyright: all rights reserved”. However, it was merely a term and no literal or interpretive meaning was accredited. Tiny BASIC was only a free version of a basic computer programming language.3

The concept of copyleft as we know today, was given by Richard Stallman in his GNU manifesto in 1985. GNU was originally an operating system, sponsored by the “Free Software Foundation” founded by Richard Stallman in 1984. He was denied access to an improved software by “Symbolics”, on which Richard worked. This inspired Richard Stallman to generate a licence which is unrestricted to be acquired and work on without changing the original source code of the program. As per Richard Stallman, “this was a win-win situation for everyone because in this manner improvements can be made without changing the original piece”.

Copyright and copyleft: A comparison

Contrary to the symbol of copyright, “copyleft” is represented by a reverted illustration of the copyright symbol. In other words, it is a mirrored image of copyright and hence, in terms of its meaning. Copyright essentially refers to a right bestowed upon the author of an original work to reproduce, distribute, and commercially manipulate the work. It is pertinent to be noted, copyright is a negative right that prevent others from using the “copyrighted work” without prior consent or authorisation of its owner.  Copyright law amply acknowledges an author’s original work and reserves him the privilege to utilise or conceal it at his personal discretion. On the other hand, copyleft gives author the right to use or distribute the work without any constraints and also to pass on the rights to amend the work, on one term that “the copylefted work cannot be copyrighted and the modified work will also be available freely for the public to use and work”.4

Purpose of copyleft

The main purpose behind copyleft is to facilitate future users of works with the same freedom to modify or manipulate an original work. After obtaining a copyleft licence, an individual shall be free to manipulate and amplify work. By employing the way of copyleft, future users are afforded the same rights. For instance, a poem is composed and disclosed within a copyleft licensed community. One of the licensed user then copies the poem. They use the poem as lyrics for a song and add drumbeats and guitar sound. Another user takes up this song and adds different instrument sounds in the background. Under copyleft, all of this would be legal and available for future modification by another person without obtaining any prior permission from the original creator.

This is the way in which copyleft works. People who are a part of the licensed community can without any constrain of legal recourse use and have their works used and modified. This concept is very lucrative in the field of software and technological spheres which majorly involves coding. This is frequently how innovations are discovered. This not only encourages development of a code within a community for enhanced efficacy but also facilitates updates in regard to software programs on time, technological bugs and advancements which are discovered by active users ultimately getting rid of legal boundaries and constraints resulting in more creative discoveries.

Legal validity of copyleft

As per the surveys many non-proprietary software, under their contractual mechanism, rely on copyleft licence. For using a copyleft programme, an individual has to follow the licence agreement, given before allocating software for copyleft. The concept of copyleft is beneficial as it facilitates the public and puts no restrictions on a user to utilise the software on the terms of the creator of the original content. A user may modify it according to his personal use. In the field of software development programmes too, the copyleft licence has a vital role in linking the software developers with common public. Furthermore, there are many different types of licences of copyleft out of which most popular type of licences are General Public Licence and Lesser General Public Licences.

Conclusion

In conclusion, the purpose behind copyleft is not completely alien to the concept of copyright. However, the two drastically differ in the rights and freedom given to the creators and users to alter and refashion the original work without apprehension for legal retribution. The concept of copyleft carries with itself the impact of modernisation in the digital age. Giving out information freely to be used, is a sign of how society is evolving and defying the long existing concept of ownership by private players. However, this concept should only be enforceable if the owner/creator of the work agrees to such terms and conditions. It should not be made obligatory and so, must be harmoniously aligned with other provisions pertaining to intellectual property.

*Fourth year student, Hidayatullah National Law University, Raipur, e-mail: choudharyanushka99@gmail.com

1 <https://www.britannica.com/topic/copyleft>.

2 <https://www.gnu.org/licenses/copyleft.en.html>.

3 <http://www.linfo.org/copyleft.html>.

4 K.G. Kumar, Beyond the Market, Freedom Matters, (2001) Vol. 36, No. 36, Economic and Political Weekly.

Op EdsOP. ED.

I. Introduction

Copyright and the protection regime thereof is a sub-class of intellectual property rights that seek to safeguard certain rights of authors and owners from infringement or unfair dealing in their works. The copyright regime can be classified into two main divisions, subject-matter copyright, and copyright infringement. While the latter aspect deals with protecting identified copyrights and enforcing the rights of owners and authors, subject-matter of copyright aims to delineate what kinds of works can be afforded copyright protection in the first place. This article shall focus only on the subject-matter of copyright, and therefore, will not address the open versus close-ended approaches in other aspects of the copyright debate.[1]

There are broadly two approaches observed in determining what subject-matter is protectable by different copyright jurisdictions, an open-ended approach, and a closed list approach.[2] Closed list jurisdictions attempt to elaborately outline the contours of different categories of subject-matter that is protectable under its copyright regime e.g. literary works, artistic works, musical works, etc. Examples of these jurisdictions include Australia[3], the United Kingdom[4] and India.[5] In all of these jurisdictions, there are legislations that exhaustively lists categories of works which cumulatively designates what can be afforded copyright protection. The result of such an approach is that non-conventional works such as perfumes, graffiti, computer-generated patterns, etc. will by definition fall outside the scope of copyright protection.[6] Per contra, the open-ended approach does not aim to identify the contours of copyrightable subjects but rather seeks to identify critical common requirements for a work to be afforded copyright protection, such as originality of the work, fixation in a medium, requirement of intellectual creation, etc.[7] Countries that follow this approach usually align their domestic copyright system along the lines of Article 2(1) of the Berne Convention, which recognises copyrightable subject-matter in all forms of artistic and literary works whatever their mode of expression.[8] Examples of these countries include Trinidad and Tobago, France[9], and Canada.

While the open-ended approach to copyright subject-matter is increasingly gaining scholarly attention and is being seen as the adequate improvement upon the closed list approach, the present system adopted by open-ended jurisdictions might have their own problems. This article seeks to critically analyse the discourse on these two approaches to subject-matter copyright and to conclude by recommending a hybrid approach as a possible framework that can form the basis of a reformed system of copyright protection that maximises the best of both these approaches in the Indian context.

II. International perspectives ― Foreign copyright regimes

To appreciate the varying systems of copyright protection throughout different jurisdictions, this section shall briefly touch upon the approach to determining copyrightable subject-matter by different countries.

United Kingdom – The closed list approach

In the United Kingdom, the Copyright, Designs and Patents Act, 1988 (CDPA) is the legislation that codifies the copyright regime. The CDPA follows a strictly closed system whereby 4 kinds of authorial works and 5 kinds of entrepreneurial works are afforded protection.[10] Notwithstanding the existence of these categories, several definitions of works have been vague and have invited courts to more precisely define the extent of a subject-matter.[11]

In Green v. Broadcasting Corpn. of New Zealand, the plaintiff attempted to claim copyright protection for a talent show called “opportunity knocks” as a “dramatic work”.[12] “Dramatic works” is not exhaustively defined under the CDPA, but simply deemed to include a recorded work of mime or dance.[13] The Court dismissed the case claiming that the format of the TV show lacked creativity as well as sufficient unity.

This decision has been criticised for failing to recognise the creativity that is required in the creation of TV shows, and also for being blind to the future direction of the entertainment sector which is increasingly captured in TV show formats similar to the one in Green v. Broadcasting.[14]
Similar criticisms have been made by scholars in decisions of what constitutes an artistic work[15] whereby courts have refused to classify face tattoos as paintings on a very narrow construction, holding that a face could never be the surface of a painting.[16]

Canada–Trinidad and Tobago ― A transition from closed list to open-ended

Canada previously had a similar closed list system of subject-matter copyright, which only afforded protection to four categories of works.[17] After acceding to the Berne Convention, however, Canada amended Article 2 of its Copyright Act to introduce a non-exhaustive subject-matter list.[18]

Trinidad and Tobago has also followed this trajectory and has gone one step further than Canada since it explicitly states that works are subject-matters of protection solely on the basis of their creation rather than any regardless of their form of expression, content, quality and purpose.[19]

Some copyright scholars have argued that these forms of inclusive definitions rather than an exhaustive list of subject-matters strengthen copyright protection by extending it to any authorial work which meets the relevant legal standards of originality.[20]

III. Indian copyright regime

With the advent of independence, the Copyright Act, 1914, was replaced with the Copyright Act, 1957 (“the Act”). With the Act, the Indian legislature sought to achieve two broad goals, firstly, to protect the result of man’s labour, skill and work and secondly, to protect works from annexation by others.[21]

Subject-matter copyright under the Copyright Act, 1957

Under the Act, works eligible for copyright are listed in Section 13. Within this provision, copyright can be claimed for original literary, dramatic, musical and artistic works; cinematography films and sound recordings.[22] Each class of work is further defined under the respective clauses of Section 2.[23] These clauses reveal that, while musical, artistic works and records are defined exhaustively, other works are more broad definition.[24] In addition to this, Indian courts have also identified the rights of a performer over his performance as part of copyright-protected work under Section 38 of the Act.[25] Therefore, subject-matter copyright extends to all works that fall within the ambit of a simultaneous interpretation of Sections 13 and 38 of the Act.

Though the initiation of a statute was premised on the need to widen copyright protection, the Act potentially restricts its reach by limiting copyright protection only to the classes of work enumerated in the legislation. Despite being a signatory to the Berne Convention, India has adopted a closed copyright regime with an arguably narrow scope.[26] This approach is evident in the statute which clarified that copyright protection is derived solely from the statute.[27]

Jurisprudence

In addition to the Act, Indian courts have also restricted the scope of copyrightable works to statutorily enumerated categories. To illustrate, in Time Warner Entertainment Co. v. RPG Netcom Globe, when resolving the question of whether an individual has the right to claim copyright infringement over future work of a cinematographic film, the High Court clarified that protection of the work concerned is not stipulated in the legislation and is, therefore, ineligible for copyright.[28] The Court reasoned that from a plain reading of Sections 13, 14, 16 and the object of the Act, it can be rightly inferred that copyright is restricted to the properties in the statute and does not prevail de hors or beyond the Act.[29] This position has been emphasised by the courts by consistently maintaining that copyright is a creation of the legislature.[30] Consequently, no copyright can be claimed based on customary rights.[31]

This approach has restricted the scope of copyright protection solely to the enumerated works in the Act. For example, the Bombay High Court has denied a claim brought by an actor who pleaded protection for his performance in a cinema film[32], and the Delhi High Court has denied copyright to an artist who printed multicoloured work on a carton.[33] In both instances, the Court has strictly adhered to the categories outlined in the Act to conclude that copyright for the subject-matters concerned is not prescribed in the legislation.[34] However, Indian courts in certain other circumstances, have expanded the definitions of the properties listed in the statute to bring a broader spectrum of works under copyright protection.[35]

Therefore, the copyright laws in the country are a close representation of the British system, however, an expansive interpretation which has sometimes been the approach of the courts can consciously convert the rigid statutory structure of copyright laws to a more open-ended regime. Such a shift would bring the present system in par with the objectives that influenced the enactment of the legislation and induce more authors to create original works by protecting such works from invasion by others.

IV. Open versus close-ended approaches to subject-matter copyright

Having gone through the various approaches which different copyright regimes take in determining what subject-matter should be afforded copyright protection, this section will analyse the merits and demerits of these approaches.

Subject-matter copyright systems can be seen in light of the dialectic of flexibility and rigidity.[36] Since copyright protection can only be effective if it can identify a particular work with accuracy to establish whether it can be protected, and what would count as infringement, the rigidity of categories becomes important.[37] On the other hand, copyright must also be flexible in determining what works may be protected since this flexibility allows for unanticipated future works of creativity to be claim protection.[38] A lack of such flexibility could lead to gaping holes in protectable subjects jeopardising the development of unconventional creative works and industries.[39]

Closed list systems

A closed list system having clearly defined categories of copyright subject-matter has the advantage of legal certainty. This in itself is very beneficial to mainstream subject-matters that have long been recognised in the copyright system. Common law countries with a closed list over time develop an extremely efficient system of determining subject-matter challenges to copyright due to a vast body of subject-matter copyright jurisprudence.

However, this legal certainty comes at the cost of flexibility. The use of a strictly closed list system results in the exclusion of various non-conventional works such as contemporary sculptures despite the works being artistic and the products of intellectual labour.[40] Further, in common law countries with a heavy reliance on the system of precedents, the development of case law on the scope of a particular category will be inversely proportional to the scope of future works that can be afforded protection within that category, leading to further minimisation of the subject-matter of copyright.[41]

Open-ended systems

An open system on the other hand allows for any work to be afforded copyright protection as long as it meets certain qualifying criteria. These systems lack the rigidity of the closed list systems and therefore are more susceptible to affording copyright protection to non-conventional but qualifying works. Example of such a system is Trinidad and Tobago.[42]

However, where the open-ended system makes up for rigidity, by loosening the definition of work, it reduces legal certainty. Legal certainty is lost on both fronts, apropos of what works may be protected intelligibly and what an infringement would entail. For example, in the case of the Dutch system of copyright, jurisprudence has developed to allow for perfume scents to be copyrighted.[43] In such cases of works as perfumes, the lack of a scientifically sound method of distinguishing between one perfume and another, coupled with deciding what would count as a copyright infringement, would result in deeply subjective analysis, often rendering copyright protection unfeasible.[44] When courts extend copyright protection to subject-matters which cannot be objectively ascertained, it does not effectively protect the work, and at the same time, it also deters innovation in the field due to lack of certainty as to future protection and possible unintended infringement.[45]

Another critical demerit of such open systems is the tendency of such broad protection to become a misappropriation law and to overlap with other forms of intellectual property.[46] Computer programs for example are usually given limited protection under copyright law despite often meeting other qualifications of a protectable work. It is only by excluding computer programs as a subject that intellectual property as a system can meaningfully distribute various kinds of protections.

Finally, copyright protection inevitably leads to certain advantages for the owner of the copyright, and this advantage must inevitably be at the cost of the freedom of the public at large.[47] Given the possible ramifications of extending copyright protection to a specific subject-matter on the public at large, the specific categories which should be afforded copyright protection should be decided only through some form of representation i.e. it must be a legislative decision on the basis of public interest, rather than a judicial or administrative decision.[48]

Hybrid systems

In contrast to the black and white approaches of closed list systems, hybrid systems attempt to tackle the issue of subject-matter in a more nuanced manner. Frequently, these jurisdictions allow for the definitions of works to be open-ended and accompany such definitions with inclusive lists and a list of exceptions. Such a system may be observed in the new copyright regime of Canada[49], France[50] and some scholars have argued that such a system was initially envisaged by the United States.[51]
This system retains the benefits of both open and closed list systems inasmuch as it allows for all works to be generally protected, and then specifically enunciates and excludes certain categories depending on various factors.

A caveat ― Dual stages of protection

It is important to note here that there are always two levels at which copyright systems operate and consequently two stages at which the approach of the specific jurisdiction will become important.
The first stage is at the level of legislation i.e. the legislation that defines the specific subject-matter categories. Here, a hard outer limit of what subjects are protectable is set, and this is usually more rigid. The second stage of subject-matter determination happens at the level of administrative copyright protection agencies and courts. At this stage, an outer limit has already been set, however, courts and copyright agencies may nevertheless boost or restrict copyright protection by the use of interpretive techniques.

While the hybrid approach can ensure adequate protection at the legislation level, even this system may breakdown at the second stage due to a narrow interpretation of categories and introduction of artificial requirements by administrative authorities and judicial bodies. A good example of this breakdown is the case of the United States Copyright Act of 1976. Here, despite the Congress employing arguably inclusive and broad language in defining “authorial works” in the Copyright Act of 1976[52], the copyright office and various judicial decisions have consistently refused to afford protection to unenumerated works of authorship.[53]

V. Conclusion

After considering the merits and demerits of the various approaches to subject-matter copyright, hybrid systems of copyright subject-matter determination seem to be a more nuanced take on the issue and could be designed to strike an adequate balance between the interests of copyright owners and the public interest in fostering innovation.

However, there are two important aspects that India must take into account while reforming copyright law on subject-matter. As has been seen from the case of the United States, simply drafting legislation which allows for an open-ended interpretation is not enough. The Insolvency and Bankruptcy Board of India (IBBI) and courts which stand at the second stage of copyright identification and enforcement must also be encouraged through policy documents and explicit legislative intent to follow this open-ended approach.
Secondly, as has been noted, a heavy reliance on either a closed list or an open-ended approach to subject-matter determination has significant cons. Thus, while amending the copyright law, the drafters must ensure that copyright protection is not extended to subjects which cannot be feasibly identified and protected, such as copyrights based on olfactory, tactile, or taste.

Such a system should take the form of a general non-exhaustive definition of works accompanied by an inclusive list of subjects which are broadly worded, and a list of narrowly worded subject-matters which cannot be granted copyright protection. However, since such a system can only work as long as it constantly keeps up with the innovations in the free market, the parliamentary standing committee on human resource development[54] should make suggestions to include and exclude subject-matters in constant intervals.

*4th year BBA LLB (Hons.) students, Jindal Global Law School, O.P. Jindal Global University, Sonipat.

[1]For an analysis of EU Law on open-ended versus rigid interpretations of transformative works, see Julien  Cabay and Maxime Lambrecht, Remix Prohibited: How Rigid EU Copyright Laws Inhibit Creativity (2015) 10 JIPLP 5.

[2] Pamela Samuelson, Evolving Conceptions of Copyright Subject -Matter (2016) 78 U Pitt L Rev 17.

[3] The Copyright Act of Australia, 1968, § 32.

[4] The Copyright, Designs and Patents Act, 1988, § 1 and §§ 3-8.

[5]  The Copyright Act, 1957.

[6] Phillips v. Pembroke Real Estate Inc., 459 F 3d 128, 131(1st Cir 2006).

[7] Pamela (Note 2).

[8] Berne Convention for the Protection of Literary and Artistic Works, S Treaty Doc No. 99-27, 828 UNTS 221, Art. 2(1) (Berne Convention).

[9] French Intellectual Property Code, Art. L. 112-1; T. Aplin, “Subject-Matter” in E. Derclaye (Ed.), Research Handbook on the Future of EU Copyright Law (Edward Elgar, Cheltenham 2009) 70.

[10] The Copyright, Designs and Patents Act, 1988, § 1, §§ 3-8.

[11] Some authors have even tried to assert that the United Kingdom does not have a closed system of subject matter protection, See e.g. Dr Poorna Mysoor, Does UK Really Have a “Closed” List of Works Protected by Copyright?, (2019) 41 Eur. Int. Prop. R 474. (Arguing that the breadth of certain category definitions is broad enough to classify the UK as an open-ended jurisdiction.)

[12] (1989) 2 All ER 1056.

[13] The Copyright, Designs and Patents Act, 1988, § 3(2).

[14] Jason Haynes, Subject-Matter of Copyright Protection in the UK: A Road Map to Effectuating Statutory Reform, (2013) 39 (2) Commonw Law Bull 319.

[15] The Copyright, Designs and Patents Act, 1988, § 4(1).

[16] Merchandising Corpn. of America v. Harpbond Ltd., 1983 FSR 32; Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs (3rd Edn.,  London 2004) 226.

[17] The Copyright Act (RSC, 1985, c. C-42), Art. 5(1).

[18] The Copyright Act (RSC, 1985, c. C-42), Art. 2  reads– every original literary, dramatic, musical and artistic work includes every original production in the literary, scientific or artistic domain, whatever may be the mode or form of its expression, such as compilations, books, pamphlets and other writings, lectures, dramatic or dramatico-musical works, musical works, translations, illustrations, sketches and plastic works relative to geography, topography, architecture or science.

[19] Trinidad and Tobago, Copyright Act, Ch. 82:80, Section 5(2).

[20] Haynes (n 14).

[21] Sulamangalam R. Jayalakshmi v. Meta Musicals, 2000 SCC OnLine Mad 381.

[22] The Copyright Act, 1957, S. 13. While S. 13(a) protects original works, the two sub-sections extend copyright to derivative works.

[23] The Copyright Act, 1957, S. 2.

[24] V.K. Ahuja, Law Relating to Intellectual Property Rights, (3rd Edn., 2017).

[25] Star India (P) Ltd. v. Piyush Agarwal, 2012 SCC OnLine Del 5691.

[26] Avishek Chakraborty, Non-Conventional Copyright: Do New and Atypical Works Deserve Protection?   (2019) 8(2) CULJ 85-99.

[27] The Copyright Act, 1957, S. 16.

[28] 2007 SCC OnLine Del 759.

[29] Ibid.

[30] University of Oxford v. Rameshwari Photocopy Services, 2016 SCC OnLine Del 5128; Sungro Seeds Ltd. v. S.K. Tripathi, 2020 SCC OnLine Del 591.

[31] Upendra Baxi, Copyright Law and Justice in India, (1986) 28(4) JILI 497, 499.

[32] Fortune Films International v. Dev Anand, 1978 SCC OnLine Bom 156.

[33] Camlin (P) Ltd v. National Pencil Industries, 1985 SCC OnLine Del 378.

[34] Ibid.

[35]Agarwala Publishing House v. Board of High School and Intermediate Education, U.P., 1966 SCC OnLine All 124. (The definition of what constitutes a literary work is an inclusive one, and this category of work includes “all works that is expressed in the form of writing, despite it having literary merit or not”.); Daily Calender Supplying Bureau v. United Concern, 1964 SCC OnLine Mad 29. (The definition of what is included within an artistic work includes all works of artistic craftsmanship and therefore, copyright protection was extended to images of deities printed in calendars as part of artistic work).

[36] Andrew F. Christie, A Proposal for Simplifying United Kingdom Copyright Law, 2001 EIPR 26, 28.

[37] Ibid.

[38] Ibid.

[39] Enrico Bonadio & Nicola Lucchi, Non-Conventional Copyright – Do New and Atypical Works Deserve Protection? (Edward Elgar 2018).

[40] Creation Records Ltd. v. News Group Newspapers Ltd., 1997 EMLR 444 (In this case the Court refused to extend the category of a sculpture to a photograph of an assortment of objects and people. While the thrust of the Court’s opinion hinged on the lack of an intelligible pattern of assortment, several scholars have also argued that the Court’s hesitation also stemmed from the plaintiff’s argument that the humans present in the photograph were themselves part of the “sculpture”, Pamela Samuelson, Evolving Conceptions of Copyright Subject-Matter, (2016) 78 U. Pitt. L. Rev. 17).

[41] Dr Mysoor (n 11).

[42] Trinidad and Tobago, Copyright Act, Ch. 82:80, Section 5(2).

[43] Kecofa BV v. Lancôme Parfums et Beauté et Cie SNC, Supreme Court of the Netherlands (First Chamber), 16-6-2006.

[44] Willem Leppink and Michel Veltman, Netherlands Court Grants Copyright Protection to Perfume Scent, 1 J Intell Prop L & Prac 756 (2006).

[45] Ibid.

[46] National Commission on New Technological Uses of Copyrighted Works, Final Report 26-27 (1978), at 26.

[47] R. Anthony Reese, What Should Copyright Protect? in Rebecca Giblin and Kimberlee Weatherall (Eds; Canberra), What if we could Reimagine Copyright? (Australian National University Press, 2017).

[48] Ibid.

[49] Dr Mysoor (n 11).

[50] Ibid.

[51] R. Anthony Reese, Copyrightable Subject-Matter in the “Next Great Copyright Act,” 29 Berkeley Tech. L.J. 1489 (2014).

[52] 17 U.S.C. § 102(a) (2012), [“Copyright protection subsists … in original works of authorship … Works of authorship include the following categories.…” (emphasis supplied)].

[53] Reese (Note 51).

[54] This Committee has previously submitted its suggestions on reform of the Copyright Act in its “Two Hundred Twenty-Seventh Report on the Copyright (Amendment) Bill”, Parliamentary Standing Committee on Human Resource Development, 2010 Rajya Sabha 227, November 1932.

Case BriefsHigh Courts

Bombay High Court: G.S. Patel, J., disposed of an interim application with respect to the suit for trade mark and copyright infringement, while holding that ‘Copyright registration is not mandatory under the Copyright Act, 1957.”

Trade Mark in question is a label mark, not  a word or a device mark.

Plaintiff claimed copyright in the artistic work comprised in the label.

It has been stated that Narayani Trading’s Label uses very nearly – or indistinguishably the same – principal background colour.

Counsel Mr Burad for Narayani Trading submitted that the two labels are entirely distinct and no one will mistake one for another. Court rejected the same and elaborated that the key features, integers, or elements that have been described by the Bench in Sanjay Soya’s Label all find place in Narayani’s Trading Label with only minor variations.

Factual Matrix

Sanjay Soya has been manufacturing and selling edible oils of various kinds, including soyabean oil, for many years. Narayani Trading is a sole proprietorship. Sanjay Soya claimed to have the necessary ISO certifications for quality and other certifications. Sanjay Soya stated that it is the successor-in-title of one SK Oil Industries, in May 2003 SK Oil adopted the label, mark and artistic work in relation to edible oil which has distinctive get up, layout and schematic arrangements.

Recital (2) of the Deed of Assignment stated that SK Oil conceived, created, designed and developed a SOYA DROP label and that is the artwork that is the issue of concern in the present matter.

Counsel Mr Khandekar for Sanjay Soya submitted that the label is an original artistic work within the meaning of Section 2(c) of the Copyright Act. Further, it was added that, Sanjay Soya has used the mark, with some variants, openly and continuously since adoption.

In brief, Sanjay Soya’s Argument:

Sanjay Soya claimed that Narayani Trading has entirely lifted and unauthorisedly and illicitly copied Sanjay Soya’s registered label mark and the copyright-protected artistic work in the label. It says that Narayani Trading’s label is a reproduction and an illicit copy of a substantial part of Sanjay Soya’s original and distinctive artwork.

Piggyback on Sanjay Soya’s reputation?

Narayani Trading’s adoption of the label mark is dishonest, not bona fide, with an ulterior motive and intended to trade upon and encash the goodwill, recognition and reputation of Sanjay Soya’s business.

The Court noted that earlier decision of the Court in Dhiraj Dharamdas Dewani v. Sonal Info Systems (P) Ltd., 2012 (3) Mh LJ 888 held that registration under the Copyright Act is mandatory before a plaintiff can claim relief. So also, the decision in Gulfam Exports v. Sayed Hamid, 2000 (20) PTC 496 Bom says that registration is required. Noting the settled law, the present Bench held that these two decisions are per incuriam on the question of compulsory registration under the Copyright Act.

High Court observed that Copyright and Trade Mark operate in different spheres, though in some cases – as in the present one – these may overlap or intersect.

Copyright is a recognition of originality, granting rights of commercialisation and exclusivity in that commercialisation to the author of a work, a person who, by sweat of his brow, has brought into being the original expression or realisation of an idea. The emphasise is on originality, labour and skill in expression and realisation. 

Section 51 of the Copyright Act does not per se, demand prior registration. The said provision is to be read with Section 45(1) which states that the owner of copyright may apply for registration.

Importantly, copyright infringement lies in the unlicensed use of original works, in which the author has a spectrum of exclusive rights.

Essence of Copyright Protection

There is always the slight escape of the fair use doctrine, but the underlying principle is that no author may claim as his or her own the original authorship work of another. That is the essence of copyright protection.

The Supreme Court decision in Engineering Analysis Centre of Excellence (P) Ltd. v. Commissioner of Income Tax, Civil Appeal Nos 8733-8734 of 2018, authored by Rohinton Fali Nariman, J., explained the nature of copyright.

Registered proprietor of a mark or the owner (not registrant) of copyright may have recourse to the jurisdictional venues in Section 134 or Section 62, in addition to those under CPC Section 20.

The owner of a copyright has a panoply of jurisdictional choices, including one that is available only to him (and not to an ordinary plaintiff in a regular civil suit).

Rationale behind allowing a trade mark registrant or a copyright owner additional jurisdictional choice is that the right claimed is in rem, against the world at large. The infringement thus takes place where the proprietor of the trade mark or the owner of copyright resides or works. This is, therefore, no ground to hold that copyright registration is mandatory.

There is no law or precedent that requires that a declaration that a decision is rendered per incuriam be made only by a hierarchically superior court. 

Bench while expressing its observations, stated that it is impossible to believe, given Sanjay Soya’s prima facie established product popularity and reputation, that Narayani Trading was unaware of Sanjay Soya’s market presence, also it Narayani Trading does not show that the artistic work and label was in use before Sanjay Soya or SK Oil began using it.

Sanjay Soya v. Narayani Trading | Label Mark 

Bench held that knowing of Sanjay Soya’ s presence in the market, of its label and of its artistic work, Narayani Trading illicitly and without bona fide intent adopted a label that is confusingly, deceptively and strikingly similar to that of Sanjay Soya; and in doing so, copied substantially, if not wholly, the artistic work comprised in Sanjay Soya’s trade dress and packaging, and of which copyright Sanjay Soya through its predecessor-in-title is indeed the owner.

Cause of Action in ‘Passing Off’ || Classic Trinity

 High Court expressed that in 1978–79, Diplock LJ set out five guidelines for ‘passing off’ actions in Erven Warnink v. Townend & Sons Ltd.  [1979] AC 731, 742 (HL), this is the famous ‘Advocaat’ case. Oliver LJ in Reckitt & Colman Products Ltd v. Borden Inc., [1990] 1 All ER 873 distilled these into the three probanda in the tortious actions in passing off that we now know as the ‘Classic Trinity’:

  • goodwill owned by a claimant;
  • (ii) misrepresentation; and
  • (iii) damage to that goodwill.

Classic Trinity places on a plaintiff the burden of proving goodwill in its goods or services, trade dress, brand mark or even the thing itself.

In view of the above, Bench stated that Sanjay Soya prima facie did prove the above.

Further, the plaintiff needs to show the false representation to the public that leads it to believe that the goods or services of the defendant are those of the plaintiff. Fraud is not necessary.

The above, was also achieved by Sanjay Soya.

“Test of deception or its likelihood is that of the common person.”

A plaintiff need not prove actual or special damage; a reasonably foreseeable probability is sufficient.

“…in the case of beauty, similarity and its extent are matters that lie in the eyes of the beholder, and in all intellectual property matters, the beholder is, perhaps unfortunately, in the first instance always the judge tasked with deciding the dispute.”

Lastly, while concluding the matter, Bench expressed that looking at the two packets of which the images have been rendered at the start, all that the Court can say is “which is whose? I cannot tell.”

Finding the defence of Narayani Trading to be utterly frivolous and possibly moonshine, Court imposed costs on them. [Sanjay Soya (P) Ltd. v. Narayani Trading Company,  2021 SCC OnLine Bom 407, decided on 09-03-2021]

Advocates before the Court:

For the Plaintiff: Mr Rashmin Khandekar, with Ms Janhvi Chadha and Mr Hardik Sampat, i/ b Krishna and Saurasri Associates LLP.

For the Defendant: Mr Pritesh Burad, with Ms Amruta Patil & Mr Mitesh Visaria, i/ b Pritesh Burad Associates.

Experts CornerShantanu Mukherjee

Introduction

The bargain implicit in a patent – the Faustian pact, as Bently and Sherman put it – is classic: a limited monopoly granted by the State in exchange for public disclosure of an invention. Over the years, perhaps nowhere has this pact fuelled as much academic and policy debate as in the pharmaceutical industry. The basis for the debate is understandable: medicines can save lives, and therefore monopolies that potentially restrict access to medicines are a matter of public concern, but on the other hand, for the private sector, drug development and manufacture is a business, and an expensive business at that.

 

When the Covid-19 pandemic first hit, it was clear that global commitment to research collaborations and technology licensing would be crucial to scale up research, development, manufacturing and supply of vaccines and therapies. Even after a vaccine or vaccines had been developed, no pharmaceutical company would in itself have the manufacturing capacity to meet global demand for vaccines. One would need to manufacture around 5 billion doses to vaccinate the world, for a single-dose vaccine, and 10 billion for a two-dose vaccine.[1] To contextualise the sheer enormity of this challenge, consider that all the vaccine companies in the world together produce less than 6 billion doses a year (including flu shots, routine childhood immunisations, etc.). This means that in order to meet global demand for Covid-19 vaccines without cutting back on any others, global vaccine manufacturing capacity would need to double at the very least, and more likely almost triple.[2] This would require cross-border licensing, technology transfer and contract manufacturing deals to be struck by vaccine developers at a scale and pace hitherto unheard of.

 

Furthermore, hundreds of patents associated with the treatment of viral infections such as Severe Acute Respiratory Syndrome (SARS), Middle East Respiratory Syndrome (MERS), influenza and Ebola had the potential to be repurposed for treating Covid (as remdesivir, favipiravir and lopinavir, among others, eventually were)[3]. Could this be achieved if patent-holders clung to monopoly-based rent-seeking ideologies? Could innovators be trusted to grant licences fairly, quickly and on reasonable terms? Would vaccine nationalism and corporate self-interest impede the global effort to combat Covid, and limit access to vaccines and therapies? These were the questions being asked by concerned citizens and organisations early in 2020[4], much as they had in the context of other public health crises[5].

 

Now, less than a year later, several vaccines have been approved for public use, supply deals worth billions of dollars have been struck and governments around the world have begun massive vaccination drives for their citizens. Were the naysayers wrong? Has the world managed to rise above petty national and corporate interests and come together, as the Beatles had hoped?

 

As is often the case when ideals collide with realpolitik, the situation is rather more intricate than that.

Through these series of articles, we aim to explore the legal and commercial issues at the heart of the biggest global vaccination effort the world has ever seen.

Part 1: Ideals v. Deals

 

  1. “You Got The Cash, We Got The Doll”

In early 2020, as Covid-19 raged across the world and companies raced to develop therapies and vaccines, supported by billions of dollars in government aid, concerns grew regarding access.

 

In March 2020, it was reported that the Trump administration was trying to secure a vaccine being developed by CureVac, a privately held German biotechnology group, exclusively for the United States (US), by persuading the group to move its development efforts to the US, in exchange for a large financial donation.[6] CureVac’s investors denied the story and German officials conveyed their disapproval of any such exclusive access deal in no uncertain terms. A few months later, the German government bought a 23% stake in CureVac, effectively ensuring it can keep an eye on – and likely a veto over – similar overtures.[7]

 

On 13 May 2020, Sanofi’s CEO, Paul Hudson, said in an interview that the US would likely get Sanofi’s Covid-19 vaccine (if approved) before the rest of the world, because the US was first to fund Sanofi’s vaccine research and expected that “if we’ve helped you manufacture the doses at risk, we get the doses first”.[8]

 

This, understandably, did not go down well in Europe. The French Prime Minister delicately reminded Sanofi that it was a “deeply French company” and emphasised that “equal access to a vaccine for all is non-negotiable”.[9]

 

Hours after Hudson’s interview appeared, Sanofi clarified that while vaccines from US production sites would be mainly reserved for Americans, production capacity elsewhere would supply Europe and the rest of the globe.[10]

 

This echoes a more recent controversy, arising out of an interview given by AstraZeneca’s CEO[11], in which, while seeking to explain the company’s recent inability to meet its vaccine supply commitments (which he characterised as being on a “best efforts” basis), he gave the impression that vaccine production from AstraZeneca’s British plants were being reserved for the United Kingdom (UK), while the European Union (EU) was being supplied by a plant in Belgium (which was facing production issues, hence the supply disruption). We will examine the EU/AstraZeneca Advance Purchase Agreement (recently released in redacted form), and other commercial deals that define the current vaccine access landscape, in greater detail in future instalments of this series (including “Part 2: Follow the Money”).

 

The CureVac and Sanofi incidents underscored a larger trend. As the US, UK and other wealthy nations rushed to enter into Advance Purchase Agreements with vaccine manufacturers such as Moderna, Pfizer and AstraZeneca for the purchase of under-development vaccines, an overwhelming majority of the world’s (already limited) vaccine manufacturing capacity was being blocked for them, effectively denying access to poorer countries that could not afford to enter into these at-risk vaccine pre-purchase deals.

 

The effort to develop and distribute a vaccine was beginning to look less like a collaborative global endeavour and more like an undignified Black Friday stampede, or a brawl for the last action figure in a store the night before Christmas.

2. “Cohagen, Give These People Air!”

Pressure mounted from the open access lobby for a more equitable approach. On 14th May 2020, 140 political leaders and economists released a letter[12], drafted by United Nations Programme on HIV/AIDS (UNAIDS)  and Oxfam, calling for a World Health Organisation (WHO) administered global agreement that (i) ensured mandatory global sharing of all Covid-19 related knowledge with a pool of licences freely available to all countries; (ii) established a global manufacturing and distribution plan “fully funded by rich nations”; and (iii) guaranteed that Covid-19 vaccines, diagnostics, tests and treatments were provided “free of charge to everyone, everywhere”. On the same day, members of European Parliament expressed support for compulsory licensing as a means of ensuring Europeans access to approved Covid-19 vaccines.[13]

 

Meanwhile several health advocacy groups, including Doctors Without Borders, Third World Network and India’s Cancer Patients Aid Association, asked the Indian government to invalidate three Gilead patents protecting Remdesivir (at that time, the only drug approved in the US for emergency treatment of Covid-19).[14] This was despite the fact that Gilead had issued voluntary licences to manufacturers in India and Pakistan allowing them to make and sell Remdesivir in 127 countries.[15]

 

At the same time, other global initiatives such as the Medicines Patent Pool (MPP)[16], the World Health Organisation (WHO) Covid-19 Technology Access Pool (C-TAP)[17] and the Open Covid Pledge[18] were trying to put in place voluntary pooling mechanisms to share the intellectual property (IP) and technology necessary to fight Covid, but these failed to gather critical mass and take off. Industry leaders appeared generally dismissive[19] of these initiatives, and they failed to attract any pledges or licences from drug companies developing Covid therapies or vaccines. Although 18 generic drug manufacturers did offer their capacity to develop and supply Covid-19 treatments to those in need via the MPP, no patent licences for such treatments have been placed in the MPP pool to date.

 

It was reported[20] that apart from lacking industry support, these initiatives had been edged out by the WHO’s more popular program, the Access to Covid-19 Tools (ACT) Accelerator.[21] The ACT Accelerator was preferred, the article theorised, because it respected and preserved the intellectual property status quo, while the C-TAP sought to challenge it.[22]

 

However, with even the European Commission now admitting the unanticipated challenges in scaling up production of vaccines and mulling voluntary licensing mechanisms[23], the dynamics of the conversation around voluntary sharing approaches may shift.

 

3. “I’ll Live To See You Eat That Contract”

On 2 October 2020, India and South Africa tabled a joint proposal before the World Trade Organisation (WTO) requesting that a temporary waiver be granted to WTO members permitting them to choose not to implement, apply or enforce certain obligations related to Covid-19 products and technologies under Sections 1 (copyrights and related rights), 4 (industrial design), 5 (patents) and 7 (protection of undisclosed information) of Part II of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement, for the duration of the Covid crisis.[24] The proposal argues that it offers a way to ramp up global production of vaccines and calls on members to ensure that IP rights do not impede timely access to affordable vaccines and medicines.[25]

 

The proposal was opposed by several other countries on the basis of the argument that existing TRIPS allowances for compulsory licensing and parallel importing were sufficient to address the relevant concerns.

 

Proponents of the waiver proposal countered that such TRIPS allowances are illusory, as compulsory licences, when granted in the past by countries such as India, Malaysia and Colombia, have faced backlash from other member States and pharmaceutical companies, including threats of trade sanctions.[26] Interestingly, the draft of the waiver proposal requires that WTO members do not challenge any measures taken in conformity with the waiver, including through the WTO’s Dispute Settlement Mechanism.

 

Recent news reports indicate that more than 400 US civil society groups and lawmakers are calling on the US President to support the TRIPS waiver.[27] On 3 February 2021, 14 members of the European Parliament, in a letter to the EU leadership, asked the EU to support the waiver and issue compulsory licences to facilitate the scaling up of Covid-19 vaccine production.[28] The WTO General Council (GC) will receive an update from the TRIPS Council on this matter during the GC meeting on 1-2 March 2021.

 

Increasing inability by vaccine manufacturers to meet their supply commitments, resulting contractual and diplomatic tensions and allegations of vaccine nationalism will likely cause the conversation to return to the TRIPS waiver proposal periodically, although the proposal itself is unlikely to pass (ultimately). Some believe that the political push for a TRIPS waiver may well lead voluntary pooling initiatives such as C-TAP to finally take off, in that, faced with the prospect of a TRIPS waiver or compulsory licensing, the industry may move to adopt voluntary approaches. Further, while the TRIPS waiver proposal can, in theory, expedite response to the pandemic by suspending intellectual property protection to trade secrets, it may not eventually be able to actually force technology transfer[29]. If potential vaccine manufacturers cannot get access to the complex technological know-how necessary to manufacture the vaccines or therapies (where such know-how has not been disclosed in the patent filings and is protected as confidential knowhow or trade secrets), the TRIPS waiver would do little good[30]. Under those circumstances, a voluntary mechanism for facilitating technology transfer such as the C-TAP could come into its own.

 

Conclusion to Part 1

The biopharma industry’s lukewarm response to sweeping initiatives like the Open Covid Pledge, the WHO/MPP patent pools and the TRIPS waiver proposal, when contrasted with the range of voluntary measures (such as voluntary licensing and IP waivers) taken by the industry over the past year suggest that patent-holders would much rather adopt a case-by-case approach to waiving or licensing their IP than sign up to a blanket, global commitment in respect of such IP. While drug companies can probably live without making large profits[31] from the ongoing vaccine development frenzy (given the substantial government funding they’ve received towards development and commercialisation), they can’t simply give away the IP they develop without retaining any say in the manner of its exploitation, either. From the perspective of a pharma CEO who is, ultimately, a salaried professional answerable to shareholders that demand a return on their investment, this would likely amount to throwing the baby out with the bathwater.

 

The second part of this series (“Part 2: Follow the money”) will examine how compulsory licensing failed to move beyond the statute books other than in Israel but did, arguably, trigger a few voluntary IP non-enforcement pledges by vaccine manufacturers, and how access to vaccines today is a function not of the sweeping global “open access” schemes argued for by so many, but on a patchwork of bilateral advance purchase agreements between governments and vaccine developers, and public-private initiatives such as COVAX[32].

 

† Shantanu is the founder of Ronin Legal, a legal boutique with a focus on pharma, biologics and healthcare. He can be reached at shantanu@roninlegal.in and on Twitter [@LegalRonin]. 

[1]<https://www.gatesnotes.com/About-Bill-Gates/Year-in-Review-2020?WT.mc_id=20201222100000_YIR2020_BG-TW_&WT.tsrc=BGTW>.

[2]Ibid.

[3]<https://www.ncbi.nlm.nih.gov/pmc/articles/PMC7474498/>.

[4]<https://www.iam-media.com/coronavirus/the-danger-coronavirus-presents-biopharma-patent-owners>. See also <https://www.iam-media.com/coronavirus/global-calls-compulsory-covid-19-patent-licensing-build>. See also the Médecins Sans Frontières Technical Briefing Document “Voluntary Licenses and Access to Medicines” available HERE

[5]See, among others, Hoen, Ellen, Private Patents and Public Health, Changing Intellectual Property Rules for Access to Medicines, available HERE

[6]<https://www.nytimes.com/2020/03/15/world/europe/cornonavirus-vaccine-us-germany.html>.

[7]<https://www.fiercebiotech.com/biotech/after-a-turbulent-few-months-germany-takes-a-stake-covid-vaccine-drugmaker-curevac>.

[8]<https://www.bloomberg.com/news/articles/2020-05-13/u-s-to-get-sanofi-covid-vaccine-first-if-it-succeeds-ceo-says>.

[9]<https://sciencebusiness.net/covid-19/news/transatlantic-tensions-over-access-covid-19-vaccines-mount-after-sanofi-ceo-says-us?_sm_au_=iVVTQQcQ7tvsNHsQvMFckK0232C0F

[10]<https://endpts.com/sanofi-walks-back-paul-hudsons-promise-of-early-vaccine-access-for-the-us-sort-of/>.

[11]In an exclusive interview to an Italian newspaper, available Here.

[12] Full text available HERE.

[13] Global Calls for Compulsory Covid-19 Patent Licensing Build, available HERE .

[14]See HERE. See also HERE.

[15] <https://generics.pharmaintelligence.informa.com/GB149889/Gilead-Licenses-Remdesivir-To-Five-Firms>. Generic versions of Remdesivir are now available in India. See  HERE.

[16]On 31-3-2020, the Medicines Patent Pool (MPP) – which has hitherto focused on increasing access to HIV, tuberculosis and hepatitis C drugs in developing nations through patent pooling arrangements – decided to temporarily expand its mandate to include any Covid-related health technology where licensing could improve access.

[17] C-TAP was launched in May 2020, to act as a platform to voluntarily share Covid-related knowledge, intellectual property and data and accelerate the scale up of manufacturing. See  HERE.

[18] The Open Covid Pledge (OCP) website <https://opencovidpledge.org/> lists patent-holders who are making their intellectual property available free of charge for use in alleviating the Covid-19 pandemic. The OCP attracted significant participation from technology giants (its founding partners included Facebook, Amazon and Microsoft) but none from companies developing Covid vaccines or therapies.

[19]Pharma Leaders Shoot down WHO Voluntary Pool for Patent Rights on Covid-19 Products, available HERE .

[20]Constraints Facing the Covid-19 Technology Access Pool (C-TAP) available HERE.

[21] The Accelerator is a global collaboration to accelerate the development, production, and equitable access to Covid-19 tests, treatments, and vaccines. It was set up by the WHO, European Commission, France and the Bill & Melinda Gates Foundation in April 2020.

[22]<https://genevahealthfiles.substack.com/p/constraints-facing-the-covid-19-technology>.

[23]“The Commission will foster the creation, if need be, of a voluntary dedicated licensing mechanism, which would allow technology owners to retain a continued control over their rights whilst guaranteeing that technology, knowhow and data are effectively shared with a wider group of manufacturers.” Communication from the Commission to the European Parliament, the European Council and the Council dated 17-2-2021, available HERE .

[24] Text of proposal available HERE

[25]See generally, Médecins Sans Frontières Briefing Document dated 8-10-2020 available HERE.

[26]<https://www.openaccessgovernment.org/trips-covid-19-waiver/103738/>.

[27]<https://timesofindia.indiatimes.com/world/us/us-civil-society-groups-lawmakers-press-biden-to-support-indias-trips-waiver-proposal-on-covid-19-vaccines/articleshow/81244149.cms>.

[28]<https://www.aninews.in/news/world/europe/eu-parliamentarians-strongly-back-india-south-africa-proposal-for-covid-vaccine-patent-waiver20210205044636/>.

[29]<https://genevahealthfiles.substack.com/p/constraints-facing-the-covid-19-technology>.

[30]<https://medicineslawandpolicy.org/2020/12/what-is-the-know-how-gap-problem-and-how-might-it-impact-scaling-up-production-of-covid-19-related-diagnostics-therapies-and-vaccines/>.

[31] Where do Covid-19 Vaccine Players Stand on Pricing? So Far, It’s No Profit, Slight Profit or Undecided available HERE.

[32] COVAX, the vaccines pillar of the Access to Covid-19 Tools (ACT) Accelerator, is co-led by Coalition for Epidemic Preparedness Innovations (CEPI), Gavi, The Vaccine Alliance and WHO. It is a global initiative that works with Governments, vaccine manufacturers, UNICEF, the World Bank, and others to ensure rapid and equitable access to Covid-19 vaccines for all countries.