NON-IPC OFFENCES WITH UP TO 3 YEARS IN JAIL COGNIZABLE, SAYS HC
The Bombay High Court has held offences under any law, barring the IPC, which are punishable by up to three years in jail, are cognizable and non-bailable in nature and rejected the pre-arrest bail plea of a man booked in a copyright case, as per an order made.
A single bench of Justice Sarang Kotwal made the observation on February 26 while hearing an anticipatory bail application filed by one Piyush Ranipa, booked in a case by the Solapur police for allegedly manufacturing sub-standard pipes and selling them under the trademark of a rival company. The court observed that “an offence will be bailable only when the sentence of that offence is less than three years. But when a particular Act provides for the punishment to be up to three years then it becomes non-bailable in nature”.
Reference: Piyush Subhashbhai Ranipa v/s The State Of Maharashtra, Anticipatory Bail Application No. 336 of 2021, https://indiankanoon.org/doc/34159638./
Registration OF COPYRIGHT NOT MANDATORY FOR SEEKING PROTECTION UNDER COPYRIGHT ACT: BOMBAY HC
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.’
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 emphasis 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.
Reference: Sanjay Soya Pvt Ltd v/s Narayani Trading Company, Leave Petition (L) No.5014 of 2020, https://indiankanoon.org/doc/11405789
SONY PICTURES NETWORKS INDIA (SPN) HAS SECURED A A DYNAMIC JOHN DOE INJUNCTION ORDER: DELHI HIGH COURT
The properties include India–Sri Lanka Men’s International Series which was played in July and the India–England Men’s International Series, which was scheduled between August and September, 2021.
The company said the John Doe will shield SPN from unlawful and unauthorized dissemination of its IPs on the internet and other social media platforms.
“If SPN finds that other ISPs (internet service providers) and websites are violating its copyrights, it can obtain an injunction against them too. Besides, to combat piracy on the ground, at SPN’s request, the court has appointed two local commissioners to ascertain and report to the court whether the Multi-System Operators (MSOs) and Local Cable Operators (LCOs), are unauthorizedly or illegally distributing or transmitting the cricketing events,” the company said in a statement.
Reference: Sony Pictures Network India v/s www.Sportsala.Tv, IA No. 7462-63/2021, https://indiankanoon.org/doc/7278687/
STOP ILLEGAL SHARING OF E-PAPER: DELHI HC DIRECTS TELEGRAM AND WHATSAPP ON PLEA OF TOI
The Delhi high court has restrained WhatsApp and Telegram from illegally circulating e- papers of The Times of India and sister publication Navbharat Times on their platform. It issued notice to the two apps along with certain individuals who are administrators of groups on their platforms, while barring them from circulating e-papers for alleged copyright violations. Justice Jayant Nath observed that prima facie the act of illegally circulating the e- papers of plaintiff on the defendants’ platforms is violative of its copyright and accordingly granted ad-interim injunction in favour of Bennett, Coleman and Company Ltd.
Reference: Bennett Coleman Co Ltd v/s Whatsappinc & Ors, CS (COMM) 232/2021, https://indiankanoon.org/doc/19510127/
THERE IS NO COPYRIGHT IN AN IDEA: BOMBAY HIGH COURT REFUSES INJUNCTION AGAINST RELEASE OF ZOMBIVLI
Stating that there is no copyright in an idea, Justice Gautam Patel refused to entertain the plea filed by Tarun Wadhwa, (a new filmmaker) against Saregama. “There is no Copyright in any idea. It exists only in a particular expression of an idea, that is to say, how individual elements, none of which are in themselves susceptible to Copyright Protection, are put together,” stated Justice Patel. Wadhwa, in his Application claimed that Saregama used his original idea which amounts to breach of confidentiality. He also alleged that Saregama also infringed his copyright in one, or possibly three published works, which would amount to copyright infringement.
However, Saregama denied all these allegations, and stated that they didn’t steal anyone’s idea and the film was an idea of someone else’s work. After Hearing both sides, Justice Patel stated, “Breach of confidentiality and copyright infringement are closely tied. The former is frequently claimed for matters that cannot be the subject of copyright infringement. An idea, in particular, cannot be the subject of a copyright infringement action; but it may be the subject of breach of confidentiality. Either may yield a broadly similar Injunction”.
However, Justice Patel observed that Wadhwa failed to represent a clear and unambiguous identification of the original material other than which was copyrighted, hence he also failed to make out a case.
Reference: Tarun Wadhwa v/s Saregama India Ltd. and Ors, Commercial IP Suit (L) No. 4366 of 2021, https://www.legitquest.com/case/tarun-wadhwa-v-saregama-india-ltd-and-ors/202E59/
SUNFEAST DIGESTIVE BISCUITS PACKAGING NOT DECEPTIVELY SIMILAR TO NUTRI CHOICE DIGESTIVE BISCUITS: DELHI HC
A single-judge bench Delhi High Court comprising of Justice C Hari Shankar in the case of Britannia Industries v. ITC Ltd. set aside the petition filed the Britannia Industries Ltd.
The Bench opined that the packaging of ITC Ltd’s “Sunfeast Farmlite 5-Seed Digestive” Biscuits was prima facie not deceptively similar to that of Britannia’s “Nutri Choice Digestive” Biscuits.
The Court conceded with the Defendant’s line of argument that the dissimilarity between the rival marks in the present case could not be ignored.
“The perception, whether in the case of infringement or passing off, is to be that of a person of average intelligence and imperfect recollection- not of an idiot, or an amnesiac. The average human mind has not been particularly conditioned to observe only similarities, and overlook dissimilarities. If the pack of the plaintiff and the defendant’s biscuits are stored side by side, then unless, the customer is situated at a great distance that he can only see the packs and not the distinctive features thereof, he is unlikely to be confused between the two”.
Reference: Britannia Industries Ltd v/s ITC Ltd. & Ors CS(COMM) 553/2020, https://indiankanoon.org/doc/195148543/
PRINCE PIPE TRADEMARK INFRINGEMENT SUIT: BOMBAY HIGH COURT RULES IN FAVOUR OF PRINCE PIPE
The Bombay High Court has restrained Prince Platinum Pipe and Fittings, Vigor Plast India and Dhananjay Brass Products from using the Prince trademark in their products. Granting an ad-interim injunction on the trademark infringement suit filed by Prince Pipes and Fittings, Justice GS Patel ruled that use of trademark Prince Platinum by Prince Platinum Pipes and Fittings, Vigor Plast India and Dhananjay Brass Products is an obvious attempt to trade upon and cash in on the reputation and goodwill built up by Prince Pipes and Fittings.
The Prince mark has been in use since 1966 and has attained a distinct name and strong goodwill in trade circles. Justice Patel accepted Prince Pipe’s argument and maintained that the word ‘Prince’ is being used to create deception in minds of the general public. Besides the injunction, the Bombay High Court also appointed a Court receiver to carry out a search and seizure at the business premises of the Prince Platinum Pipes and Fittings, Vigor Plast India and Dhananjay Brass Products situated in Jamnagar, Gujarat.
Reference: Prince Pipes And Fittings Limited v/s Prince Platinum Pipes, Commercial IP Suit (L) No. 5286 of 2021, https://indiankanoon.org/doc/64355958/
PHONE PE V/S BHARAT PE
In the court order dated October 22, the Bombay High Court noted that PhonePe has no registration of the word ‘Pe’, instead, it has a label with the Devanagari word Pe. PhonePe has claimed that while the word ‘Phone’ is not unique, the word ‘Pe’ is a distinctive and memorable part of its name. It then claimed that the use of the word ‘Pe’ in BharatPe’s new ‘buy now pay later’ offering PostPe is an infringement.
In response to this, the court said that “if the law is that the mark must be taken as a whole, then one must look at PhonePe as a whole and then set it against PostPe. Then one would test for visual, structural and phonetic similarity”. The Court dismissed the application and denied to grant an interim injunction against the defendants and rightly held that parties cannot misspell descriptive/generic words in order to claim exclusivity over them, especially at this prima facie stage, unless there is extensive evidence that such misspelling has acquired secondary meaning through continuous commercial use, that is, different from the literal meaning, which is an aspect the High Court has held to be a matter of trial and evidence when the suit is finally heard and decided.
Reference: Phonepe (P) Ltd. v/s Ezy Services, CS (COMM) No. 292 of 2019, https://indiankanoon.org/doc/17509216/
KSRTC – THE BATTLE OF TWO STATES OVER TRADEMARK
After the long-drawn-out battle over intellectual property rights, between the Karnataka State Road Transport Corporation and the Kerala Road Transport Corporation, the latter has got the legal right to its trademarks – acronym KSRTC, the logo of two elephants and the name Anavandi — associated with the state-run transport corporation.
The Controller General of Patents Design and Trade Marks under the Ministry of Commerce and Industry approved Kerala’s claim. The registration will make Kerala RTC the sole custodian of the trademarks. All buses of the corporation will display KSRTC with the mark to indicate the registration (R).
The tussle over ‘KSRTC’ began when Karnataka RTC made a move for trademark registration in 2014. A legal notice from Karnataka RTC woke Kerala up and made it to speed up proceedings to get custody of the trademark properties.
DELHI HIGH COURT RESTRAINS DOMEX FROM AIRING COMMERCIALS THAT TARGET HARPIC [RECKITT BENCKISER INDIA PVT LTD. V/S HINDUSTAN UNILEVER]
In the current case, Reckitt Benckiser India Private (Harpic) had alleged that Hindustan Unilever Limited (Domex) had published a disparaging advertisement campaign comparing their own product with the plaintiff’s (Harpic).
Harpic contended that the bottle is used to depict ‘ordinary toilet cleaner’ and can be clearly identified as its bottle/product. The court examined the advertisements under the campaign and concluded that one advertisement of Domex’s campaign certified the product of the defendant (Domex) as superior to that of the Harpic’s and tends to denigrate the plaintiff’s product.
Thus, the court restrained Domex from publishing the afore-noted advertisement in any forum till they remove all references to the product of the plaintiff ‘HARPIC’.
Reference: Reckitt Benckiser India Pvt Ltd. v/s Hindustan Unilever, CS(COMM) 340/2021, https://indiankanoon.org/doc/69299601/
Agatha Christie Ltd., a company set-up by the well-known author herself, had applied for seeking registration for the mark “AND THEN THERE WERE NONE” in 2017 under classes 9, 16 and 41 at the Trademark Registry. The plaintiff had claimed that at the time of application, no other trademark was even remotely similar to the applied for was a trademark.
The applied for trademark was refused trademark protection stating “applied mark is a kind of mark where one needs to educate the people that it’s not just any phrase but a trademark and is intended to be so used. Applied mark is only proposed to be used. There is no substantive evidence that the applied mark has been used as a trademark ever. Applied mark lacks distinctiveness”.
The plaintiff approached the court, which finally set-aside the impugned order citing an applied for trademark can only be refused protection when it is not distinctive or identical to an already existing trademark. Moreover, owing to the popularity of the author, and the applied for trademark being the title of a well-known work of fiction by the author, Agatha Christie, it might create an association between the name and plaintiff. Thus, the impugned order was quashed and set-aside and the appeal was allowed.
Reference: Agatha Christie Ltd. v/s Registrar of Trade Marks, CA (COMM. IPD-TM) 10 of 2021, https://indiankanoon.org/doc/183502564
For the background of the matter; Agricultural and Processed Food Products Export Development Authority (“APEDA”) filed an application to register ‘Basmati’ as a Geographical Indication in class 30. APEDA 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 state of Madhya Pradesh has so far been unsuccessful in joining the elite group of seven states – Punjab, Haryana, Delhi, Himachal Pradesh, Uttrakhand and 26 districts of Uttar Pradesh and parts of Jammu & Kashmir – which on May 31, 2010 got GI status for Basmati. The Agricultural and Processed Food Products Export Development Authority (APEDA) was granted the GI tag for 108 districts across these seven states spanning 2,89,576 sq kms. Omitting MP had triggered protest from Daawat Foods and farmers from the state, as well as opposition from the state government itself.
MP and the Madhya Kshetra Basmati Grower Association Samiti have challenged the HC’s order that upheld the IPAB order granting a GI certificate for Basmati to APEDA. While dismissing MP’s plea seeking a GI tag for Basmati rice grown in its 13 districts, the HC had noted that the two GI certificates of registration cannot be issued for the same produce and had suggested that the state had an “alternative and efficacious remedy” to move the registrar of trademark for cancellation or varying the GI certificate issued to APEDA. The matter is yet to be heard in the courts since the IPAB is now abolished.
Reference: Madhya Kshetra Basmati Growers Association Samiti v/s Intellectual Property Appellate Board Petition(s) for Special Leave to Appeal (C) No(s).8461/2020, https://www.legitquest.com/case/madhya-kshetra-basmati- growers-association-samiti-v-the-intellectual-property-appellate-board-chennai-ors/1FC211.
In H Lundbeck A/S v. Hetero Drugs Ltd., the Delhi High Court ruled that under section 107 of the Indian Patents Act, 1970, the export of products from India amounted to the use of the product in India. H Lundbeck alleged that Hetero Drugs imported their drugs and subsequently exported them. Hetero Drugs claimed that the drug was not being used in India and the export was only for research and development purposes. In rejecting Hetero Drugs’ defense, the Court stated they had not provided sufficient proof that the exports were being used for research. In reading the term ‘export’ to include ‘use’, the Court expanded the ambit of rights accorded to a patentee under section 48. Such an interpretation allows for a patentee to claim a right to prohibit another party’s export of allegedly infringing goods, thus going beyond what the statute actually offers.
Reference: H Lundbeck A/S v/s Hetero Drugs Ltd., https://indiankanoon.org/doc/27866573/
The Supreme Court looked into a wide variety of issues such as Oxygen and Covid-19 drugs shortage, equitable pricing of vaccines, protection of health workers, possibility of invoking compulsory licenses and the clampdown on free speech on social media platforms. The matter looked into the differential pricing of Covid vaccines for the Central Government and the State Governments and recommended that the Government consider compulsory licensing for Covid drugs with sunset clauses while referring to the Doha Declaration on TRIPS and sections 92 and 100 of the Patents Act. The Supreme Court also touched upon issues relating to Covid drug procurement through importation. Further, the Court specifically addressed the use of social media platforms by citizens to voice their grievances and stated that such use during a crisis can in no way be termed misinformation and it noted that it would treat any clampdown on the free exchange of information as contempt of court.
In a matter related to the patent for its fully liquid Whole Cell Pertussis-based fully liquid Hexavalent Vaccine, EasySix™.
Panacea Biotec announced that the company has instituted a suit before the Hon’ble Delhi High Court seeking to restrain Sanofi Healthcare India from marketing a fully liquid Hexavalent vaccine that would infringe the company’s patent for its fully liquid Whole Cell Pertussis based fully liquid Hexavalent Vaccine, EasySix™.
The suit filed against Sanofi comes at the heels of the Sanofi having received marketing approval for a Whole Cell Pertussis based Hexavalent vaccine (DTwP-HepB-Hib-IPV) by the Drugs Controller General (India). On 11.05.2021, when the suit was listed before the Hon’ble Delhi High Court, after elaborate submissions from both parties, Sanofi undertook that it would not manufacture or market any product which infringes the amended claims of Panacea patent, IN272351, at this stage.
Reference: Panacea Biotec files suit before Delhi HC against Sanofi Healthcare, https://www.business-standard.com/article/news-cm/panacea-biotec-files-suit-before-delhi-hc-against-sanofi-healthcare-121051700620_1.html