A paradigm shift – Intellectual Property Rights in India

Last year was driven by introducing new technologies in the IPR circuit in India, the most significant of them all being the proposal of the Controller General of Patents, Designs and Trademarks to Introduce AI, Blockchain, Internet of Things and other technologies in IP Enforcement. It also paved the way for the Union Government approving a proposal to accede to the WIPO Copyright Treaty, 1996 (‘WCT’) and the WIPO Performance and Phonograms Treaty, 1996 (‘WPPT’) for setting up a framework for the protection of authors’ rights in the digital environment mandatory . An amendment was also brought this year by the government, amending the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 which repudiated the power the custom officers to seize imports on the basis of mere complaints of patent infringement. This newsletter aims to include the latest updates in the IP segment through judicial pronouncements made in the year of 2018.

Supreme Court upheld Patent Rights of Mosanto Technology LLP

The Supreme Court in a recent case, ruled in favor of a Multinational Company restoring its patent rights for BT Cotton Technology in contrast with its judgment having impact over the farmers and other indigenous groups in India. In the matter of Mosanto Technology LLC and Ors vs. Nuziveedu Seeds Ltd. and Ors.,the Plaintiffs pursuant to their patent rights had entered into a sub-license agreement with the Defendants for an initial period of ten years. The agreement entitled the Defendants to develop “Genetically Modified Hybrid Cotton Planting Seeds” with the help of the Plaintiffs’ technology and to commercially exploit the same, subject to the limitations prescribed in the agreement. The agreement after extension was ultimately terminated by the Plaintiffs due to disputes regarding payment of license fee. The Supreme Court setting aside the order of the Division Bench of the Delhi High Court, invalidating the patent of the Plaintiff for BT technology as invalid under Section 3(j) of Patents Act, 1970 which prohibits the grant of patents for plants, plant varieties or seeds or any part thereof, restored the matter to be dealt by the Single Judge of the High Court and stated that, the suit involved complicated mixed questions of law and facts with regard to patentability and exclusion of patent which could be examined in the suit on basis of evidence.

Louboutin’s Red Sole qualified as a well-known trademark

The Delhi High Court deviating from its previous judgments, in the case of Christian Louboutin SAS v. Ashish Bansal granted a permanent injunction and punitive damages to the Plaintiff who owned the ‘RED SOLES’ trademark which qualified as a well-known trademark. The Plaintiff, Christian Louboutin is a well known French luxury brand known for its ‘RED SOLES’ shoes, filed a suit against the Defendants for permanent injunction to restrain the Defendants from infringing its trademark and passing off its goods as the Plaintiffs goods. The court deciding in favour of the Plaintiff contradicted its own judgment and the well known principle that a single color cannot qualify as a distinct trademark feature, and stated that the Plaintiff had acquired distinctiveness for the “RED SOLES” on shoes and therefore granted the Plaintiff permanent injunction against the Defendants for infringement of their trademark.

Decision of Delhi High Court on the ambit of the definition of the term ‘intermediary’

The Delhi High Court in the recent case of L’Oreal v Brandworld has dealt with the scope of the term ‘intermediary’. The Defendant is an online shopping forum consisting of various brands selling their products through different companies and distributors. Along with this, the website also comprised of a category under the head ‘replica’ through which counterfeit products of certain brands were made available to be purchased by the buyers. The Plaintiff being world’s largest cosmetic company sued the Defendants for infringing their trademarks and allowing counterfeit products of their brand to be sold on their website. The Defendants raised the argument that it was a mere intermediary and had no control over the sales. The court while passing the order in favour of the Plaintiff held that the website cannot avail the advantage of section 79 of Information Technology Act, and was thus held liable for aiding and abetment of violation of intellectual property rights of other brands. It was contended by the Delhi High Court that inclusion of the section ‘replica’ on its website, excluded Shopclues.com from the ambit of just being an ‘intermediary’.

Kajal Aggarwal loses claim for royalty

In the matter of Kajal Aggarwal vs. VVD & Sons, the Plaintiff, a well known actress filed a copyright infringement case against the Defendant’s company. According to the facts, a contract was made between the parties stating that hair oil commercial in which the actress acted would only be used for a period of one year. Use of the same beyond the stipulated period would amount a suit by the Plaintiff stating that it infringes the contract and even if used, the Defendant should be given the royalty earned from the commercial. The Madras High Court, rejecting the claim for royalty held that, a person who becomes the first owner of the copyright for his entire work has been conferred with a statutory right for a period of 60 years over the cinematograph of the film. This statutory right cannot be taken away by a performer in the cinematograph film by virtue of an agreement. Hence, VVD is entitled to exploit the work for the entire term prescribed under Section 26 of the Copyright Act and is not just restricted for a period of one year by the agreement.

Joinder for two causes of action is valid: Delhi HC

The Delhi High Court in a recent judgment of Carlsberg Breweries v. Som Distilleries has ruled that, a joinder under Order II Rule 3 of Civil Procedure Code, 1908 for two cause of actions arising in a composite suit was permissible, one for infringement of the registered design of the Plaintiff and the other being for the Defendant passing off its goods. The suit was filed with regards to infringement and passing off of a bottle that had the overall appearance of the famous mark ‘Carlsberg’ on them which belonged to the Plaintiff. The Defendant relying on the judgment of Mohan Lal v. Sona Paint contented that such a composite suit cannot be filed. However, the court refused to rely on the judgment in question and proceeded to allow joinder for two cause of actions on account of the goods of the Defendant being fraudulent or obvious imitation i.e., identical or deceptively similar, to the goods of the Plaintiff.

The Indian Performing Society vs. Vodafone Idea Ltd.

The Calcutta High Court in an interim order has directed the cellular company, Vodafone to pay an amount of Rs. 2.5 crore in the court registry over Indian Performing Rights Society Ltd’s (IPRS) mentioned copyright claim. The Plaintiff is a registered copyright society with Mr. Javed Akhtar as its chairman claimed that the Defendants, a telecom company, had used their songs in its value added services without obtaining permission of the Plaintiff. The court ruled in favour of the Plaintiff stated that, on deposition of such amount, the telecom service provider would be allowed to continue with the services provided to the consumers until the disposal of the matter. The court also held that, for further providing the services, Vodafone would ideally be required to obtain licenses from IPRS as it being the owner of these works, has rights over ‘music and lyrics’ of these songs and hence its permission would be mandatory.

Kaka-Ka Hotel wins trademark battle

The Delhi High Court in the case of Arun Chopra vs. Kaka-Ka Dhaba Pvt. Ltd. and Ors. granted an interim injunction to the Plaintiff who owned the trademark ‘Kake-Da-Hotel’. The Plaintiff, owner of the famous Connaught Place restaurant Kake-Da-Hotel registered their trademark for the above name in the year 1950 and also owns the trademark ‘K-D-H Kaku-Da-Hotel’ which is registered in the name of the Plaintiff. It was the case of the Plaintiff that, the Defendant’s restaurant under the name of Kaka-Ka-Dhaba was deceptively and phonetically similar to that of the Plaintiff and that it would cause confusion among the general public. The main contention of the Defendant was that the term ‘kaka’ was generic and therefore couldn’t be monopolized. The Plaintiff further filed an application seeking cancellation of Defendant’s registration. The court ruling in favour of the Plaintiff stating that, the Plaintiff is prior user of its name and on the balance the interim arrangement made by the court would serve the ends of justice.

Aashirvaad declared to be a well-known trademark

The Bombay High Court in the matter of ITC vs. Rani Sati Foods Pvt. Ltd., has recognized ITC’s trademark ‘Aashirvaad’ and its trade dress as well-known trademarks. ITC claimed that they had conceived the idea in 2001 and even got McCann-Erickson India Limited to create artwork for the packaging of the flour line. They got the trademark registered in 2003 and has been in the market since 2002. The court observed that, “The Plaintiff has also zealously protected its trademarks and successfully enforced its rights in the trade mark “AASHIRVAAD” and Aashirvaad Trade Dress over the years.” The Defendant in the matter agreed to discontinue the use of the impugned trade mark and trade dress. The court further ordered the Defendants to pay a sum of Rs 10 lakhs towards costs/damages for infringement of the trademark in favour of “Tata Memorial Hospital”.