India: Intellectual Property & Information Technology Laws (September 2012)

Article by Vijay Pal Dalmia, Advocate, Supreme Court of India and Delhi High Court, Partner & Head of Intellectual Property Laws Division, Vaish Associates Advocates, India

In This Issue

Latest IP Case law

PRINCIPLE OF INTERNATIONAL EXHAUSTION:

India does not follow!

• Samsung Electronics Vs. Kapil Wadhwa
  
  Prior use of trademark has to be established by production of clear and cogent evidence!
• Premier Tissues India Ltd. v. Rolia Tissues Industries and Anr.
  
  No objection certificate by company not having right cannot entitle Respondent to use trade mark and copyright.
• Hahnemann Laboratory Ltd. & Ors. v. The Hahnemann India Laboratories (BN) & Ors.
• Carlsberg India Pvt. Ltd. v. Radico Khaitan Ltd.
• Super Cassettes Industries Limited v. Mr. Chintamani Rao & Ors.

CAUTION!

Notarization outside India and Stamping of Power of Attorney in India is mandatory for Filing of Trademark, Patent and Design Applications in India, when power of attorney is executed outside India

Knowledge Update

• The Copyright Amendment Bill, 2010 gets passed by both Rajya Sabha and Lok Sabha!
• The Trademark Registry comes out with a list of international non proprietary names.

INDIAN IP DECISIONS

India does not follow!

Samsung Electronics Vs. Kapil Wadhwa

http://lobis.nic.in/dhc/MAN/judgement/18-02- 2012/MAN17022012IA77742011.pdf

The Plaintiff (Samsung) filed a case against the defendants who were selling grey market printers of the plaintiff in the market and operating a website selling a varied range of genuine printers under the plaintiff's mark SAMSUNG at prices much lower than offered by the plaintiff. The plaintiff alleged that the defendants were guilty of infringement & passing off the goods by way of parallel imports.

The single Judge granted an interim injunction in favour of the plaintiff restraining the defendants from importing, exporting, distributing, selling, offering for sale, advertising, directly or indirectly dealing in the grey market ink cartridges/toners, or any other products of the plaintiff under the mark SAMSUNG or any mark as may be deceptively similar to the plaintiff's trademarks amounting to infringement of the plaintiff's registered trademarks.

The Defendants contended that they were importing and selling genuine SAMSUNG printers which had been purchased and imported through the legitimate channels thus disqualifying any infringement of the Plaintiff's products. Defendants claimed that the plaintiff failed to disclose that the Plaintiff was aware that the defendants were selling openly on its premises since 1998, parallel imported products that were not purchased from plaintiff.

The plaintiff was prima facie able to demonstrate a case of infringement of the registered trade mark under section 29(1) and (6) of the Trademarks Act, 1999.

The court held that "any importer who is not a registered proprietor or permissive right holder, if imports the goods under the mark which is identical or similar to a trademark in relation to the goods in respect of which the trademark is registered so as to render the use of the mark likely to be taken as a trademark, then the said act of importation amounts to infringement."

It was further held that Section 29(1) does not distinguish between persons either importing genuine goods or non genuine goods for the purposes of attracting the provisions of infringement.

The contention raised by the defendants that India follows the principle of international exhaustion was wrong as the court held that there is no mention of international market or international exhaustion in Section 30(3) & (4) or anywhere in the Trademarks Act,1999.

Once goods are acquired by a person from the registered proprietor within the same market, the registered proprietor cannot claim that there is an infringement of his trademark on the count that there is change of ownership by way of an assignment between the registered proprietor and some other person. However, this will not apply in favour of a person acquiring goods from a foreign market since the court's interpretation of the words "in the market" in sub section 30(3) is that it refers only to the domestic market.

Prior use of trademark has to be established by production of clear and cogent evidence!

Premier Tissues India Ltd. vs. Rolia Tissues Industries and Anr.¹ 2012 (50) PTC 206(DEL.)

PREMIER Vs. PREMIUM for tissue paper products was held to be deceptively similar in the above mentioned, leading to an ad interim injunction in favour of the Plaintiff.

The plaintiff manufactures tissues under the registered trademark PREMIER and sold its products in boxes/cartons with peculiar artwork and design, over which it claimed to have copyright. The Defendant started manufacturing and selling tissues under the registered trademark of PREMIUM in the packing distinctly similar to that of the plaintiff's packing. The plaintiff filed the suit against the defendant for infringement of trademark and copyright, and passing off. The defendant by way of a counter-suit against the plaintiff claimed that the plaintiff infringed the Defendant's trademark PREMIUM as well as the copyright of the artistic work of its packing.

The court while passing the interim injunction in favour of the Plaintiff observed that since the Defendants claimed prior user of the trademark and the copyright in the artwork of the packing seeking the interim injunction against the Plaintiff, it became necessary for the Defendants to present clear and cogent evidence which could not be challenged at the prima facie stage. Inconsistent stand before the court and the trademark registry was also abhorred by the court. The court took the view that there was a prima facie case and balance of convenience in favour of the Plaintiff.

It has been held by the Court that solid evidence is the foundation of case for grant of interim injunction. The court held that both the marks PREMIER and PREMIUM are deceptively similar, and the Defendants could not have designed their packaging without having placed the packaging of the Plaintiff side by side.

No objection certificate by company not having right cannot entitle Respondent to use trade mark and copyright!

Hahnemann Laboratory Ltd. & Ors. v. The Hahnemann India Laboratories (BN) & Ors.²

The petitioner owned the trademark Arnimax and had copyright over the artistic work in the trade dress. A dealership was given to the Respondents by the Petitioners. The Petitioners also issued a licence to one Das Homeo Laboratories to market some of the petitioner's products. The Respondents used the trade mark Arnimax coupled with the trade dress for its products, by relying on a No Objection Certificate issued by Das Homeo. The petitioners filed civil suit against the respondents and obtained interim order against the Respondents restraining them from using the trademark. The Petitioner also contended that Das Laboratories were only given licence to market the petitioner's products, but no right over the label, and as such they had no right to issue the No Objection Certificate.

The Court accepted the Petitioner's contentions and stated that the trademark label and copyright over the trade dress vested with the petitioner and the licensee had no right to issue the No Objection Certificate to the Respondents. Therefore, the use of such label and trade dress was held to be an infringement of the vested right of the Petitioner.

8 PM Vs. 8

Carlsberg India Pvt. Ltd. (Appellant / Defendant) vs. Radico Khaitan Ltd.^3,4 (Plaintiff/ Respondent)

Radico (Respondents/Plaintiffs) are whiskey manufacturers and registered owners of the trademark "8 PM" and contended that the numeral "8" is an essential, distinguishable and identifying feature of its mark in relation to the font size and colour with which the numeral is printed.

Radico's grievance pertained to the Carlsberg's (Appellant / Defendant) sale of products under the trademark " ", with the numeral printed in the same font, size and colour and styling as that of Radico. Radico filed a suit against Carlsberg and Carlsberg contended that the use of the numeral "8" was a descriptive use and it was used in such capacity by other alcohol manufacturers also in common trade practice. Carlsberg also contended that Radico has trademark rights over the label "8 PM" and not over the numerical "8".

The learned Single Judge accepted the contentions of Carlsberg stating that trademark cannot be awarded for a single numeral, and that the use of the numeral "8" by the Carlsberg is in a descriptive sense, as is used by other alcohol manufacturers in common trade practice. However, the court awarded limited injunction against Carlsberg from using the numeral "8" in the same style, font and design as that of Radico, which resulted in an appeal against the decision of the learned Single Judge.

The Appellate court held that the limited Injunction granted by the learned Single Judge to "avoid any bleak chances of misrepresentation" is not sound since the injunction was not granted for an action for infringement of registered trademark or an action for passing off.

The Appellate court held that Radico has a registered trade mark for "8 PM" as a composite mark and cannot claim exclusivity over the single numeral "8", as there was a difference between using the numeral in its descriptive sense and as a trademark. It was held that the numeral "8" was not used in its descriptive sense since it did not indicate any quality, functionality, property, content etc. of the product itself. It was the most prominent component of the label and the consumers are most likely to identify the product with the label "8". It was further held by the Court that the unique elements of Radico's label had not been copied by Carlsberg and there was prima facie no likelihood of consumer confusion, simply because the style of writing the numeral "8" was similar. Therefore, order passed by the learned single judge was set aside and this injunction was vacated.

COPYRIGHT

Super Cassettes Industries Limited v. Mr. Chintamani Rao & Ors.⁵

The two plaintiffs in the suit, namely, Super Cassettes Industries Limited and Yash Raj Films, own copyright in cinematographic films and sound recordings in a large number of literary, musical and cinematographic works of T-Series and Yash Raj Films, respectively. The Plaintiffs filed the suit against the Defendants for permanent injunction to restrain them from engaging in public performance, reproduction, recording, distributing etc. of any works over which the plaintiffs have copyright.

The plaintiffs contended that the Defendants being a news channel named India TV, have used video recordings and sound recordings of cinematographic films and musical works over which they have copyright, during the telecast of their programmes and a substantial portion of these works has been directly lifted by the Defendants, without obtaining licence for the same. They also contended that in some cases the use of video clippings or sound recordings did not serve any purpose in the airing of the program.

The Defendants not denying the usage of portions of such cinematographic and musical works, contended that the said acts were protected by S. 52 of the Copyright Act, and amounted to fair dealing and fair comment for the purpose of fair criticism and review. Moreover, only a small portion of the works was used in a completely different context to denote instances from the life of the singer/performer. Defendants also contended that lifting such small portion did not affect the business of the plaintiffs. And the denial of telecast of these works by India TV amounts to infringing their right under Article 19 (1) (a) of the Constitution. They also stated that the said works being derivative automatically do not fall within the ambit of S. 52 (1).

The Court held that just because the works in question were derivative, their exclusion from S. 52 (1) did not cause any confusion in the interpretation of the section, and that the section refers to use of works rather than the nature of the works in question. Also, the denial of usage by the plaintiffs without permission did not constitute any infringement of the fundamental right under Art. 19(1)(a). Freedom of speech and expression does not confer a right to infringe another's right under the Copyright Act. Also since the plaintiffs had expressed their desire to grant the defendants the license, the contention of the defendants that the terms of granting license by the plaintiff are onerous and tantamount to not granting a license, was automatically rejected. If such was the case, they should have filed an application in the Copyright Board under S. 31.

The Court also held that the usage of the video recordings and clippings in the news programs did not amount to a review or fair criticism, and therefore their use without the plaintiff's permission was held illegal. Therefore, the contentions of the defendant that their actions amount to fair use under S. 52 (1) were not sustained. The court subsequently ordered the payment of costs by the defendant towards the plaintiff.

BIRD'S EYE VIEW

In this section, we give you a Bird's Eye View of the cases relating to trademarks in which Indian Courts have granted injunction or refused to grant injunction.

CAUTION!

Notarization and Stamping of Power of Attorney in India for Filing of Trademark, Patent and Design Applications in India

A lot of foreign applications for grant of patent, registration of designs and trademarks are being filed by the applicants and attorneys across India without following the due process of law relating to notarization and stamping of power of attorneys, which may jeopardize the applications leading to invalidation of grants and registrations etc.

NOTARIZATION REQUIREMENT:

¹⁸Under the Indian laws, any power of attorney executed outside India needs authentication by notarization and stamping by the Collector of Stamps. Under the Indian laws, any power of attorney executed outside India needs authentication. It is a requirement that a power of attorney has to be executed in the presence of certain designated officers. So, any power of attorney executed outside India should be authenticated by a notary public of that country or the Indian consul.

Section 85 of the Indian Evidence Act, 1872 creates a presumption of authenticity in favour of a notarized power of attorney. It states as under

"Section 85 - Presumption as to power-of-attorney:

The Court shall presume that every document purporting to be a power-of-attorney, and to have been executed before, and authenticated by, a Notary Public, or any court, Judge, Magistrate, Indian Consul or Vice-Consul, or representative of the Central Government, was so executed and authenticated."

STAMPING REQUIREMENT as per Indian Stamp Act, 1899 ¹⁹

Under Section 3(c) of the Indian Stamp Act, 1899, stamp duty is payable on every instrument (other than a bill of exchange or promissory note) mentioned in the Schedule, which is executed out of India relates to any matter or thing done or to be done in India and is received in India.

"Power of Attorney", being an instrument falls under Article 48 of Schedule I of the Stamp Act. Therefore, the power of attorney, though executed outside India, is sought to be used in India, for filing a PCT national phase patent application, convention application, registration of trademark and designs are liable to stamp duty under the Indian Stamp Act. This legal proposition is applicable on power of attorneys for all purposes.

In the case of Malaysian Airlines Systems BHD vs. M/s. Stic Travels (P) Ltd., the Hon'ble Supreme Court of India had held that:

"Power of attorney is liable to stamp duty for proceedings in India under Indian Stamp Act, though executed outside India"

Further Section 18 of the Indian Stamp Act, 1899 read with Rule 12 of the Indian Stamp Rules, 1925 provides that every instrument chargeable with duty executed only out of India may be stamped within three months after it has been first received in India.

Further, where any such instrument cannot, with reference to the description of stamp prescribed therefore, be duly stamped by a private person, it may be taken within the said period of three months to the Collector, who shall stamp the same, in such manner as the State Government may by rule prescribe, with a stamp of such value as the person so taking such instrument may require and pay for. It is pertinent to note that different states in India have different rates of applicable stamp duties.

It is further important to note that even if the Indian Patent and Trade Mark Office is accepting power of attorney on a plain paper, such legal infirmity may be fatal to the applications, which have been prosecuted on the basis of power of attorney, without any notarization or stamping. Due process of law is required to be followed to avoid unnecessary complications and threats to valuable IP rights.

KNOWLEDGE UPDATE

COPYRIGHT

The Copyright (Amendment) Act, 2012²⁰ comes into effect w.e.f. 8th June, 2012

A new era of extended rights have begun for Artists under the amended copyright Act ²¹, by the notification of the amendments to the Act. Lobbyists have been pushing for an amendment in the copyright laws to give music directors and lyricists a share of the profits earned on their work.

The amended Act declares authors as owners of the copyright, which cannot be assigned to producers as was the practice till now.

There are seven broad areas that are reflected in the amended Act. These include right of

• author and music composer,
• visually impaired,
• extending compulsory regime to unpublished work, and imposition of punitive actions among others.

TRADEMARK

The Trademark Registry comes out with a list of International Non Proprietary Names.²²

The Controller General of Patents, Designs and Trade Marks (CGPDTM) has finally published a list of International Non- Proprietary Names (INNs) as declared by the World Health Organization (WHO). Hopefully, this publication will be followed up by an official notification, following which Trade Marks Examiners will be mandated to examine pharmaceutical trademarks for any similarities to the INNs published in the list. Any names which are identical to those on the INN list will not be registered as a pharmaceutical trademark.

INNs are particularly relevant in the field of pharmaceutical trademarks. In most instances INNs refer to the generic name of a pharmaceutical drug. However INNs can also refer to the common 'functional group' or 'active ingredient' of a particular class of pharmaceutical drugs.

Section 13 of the Trade Marks Act, 1999 prohibits the registration of names of chemical elements or INNs which have been declared by the World Health Organization (WHO) and notified by the Registrar of Trade Marks.

The list of INNs can be accessed from the following link: http://ipindia.nic.in/list_INN_08February2012.pdf

Footnotes

^{1 http://lobis.nic.in/dhc/MAN/judgement/23-02- 2012/MAN22022012IA108462011.pdf}

^{2 http://indiankanoon.org/doc/166124964/}

^{3 http://delhicourts.nic.in/SEP11/RADICO%20KHAITAN%20LIMITED% 20VS%20CARLSBERG%20INDIA.pdf}

^{4.http://indiankanoon.org/doc/49386818/}

^{5 http://delhicourts.nic.in/nov11/Super%20Cassettes%20 Industries%20Limited%20Vs.%20Chintamani%20Rao.pdf}

^{6 2012 (50) PTC 433 (Del.)(DB)}

^{7 2012 (50) PTC 493 (Karn.)}

^{8 2012(50)PTC 501(Del.)}

^{9 2012(50)PTC 528 (Bom.)}

^{10 2012(51)PTC 133 (Del.)}

^{11 2012(51)PTC 195 (Del.)}

^{12 2012 (51) PTC 210 (Del.)}

^{13 2012(50)PTC 27 (Del.)}

^{14 2012(50)PTC 27 (Del.)}

^{15 2012(50)PTC 112 (Bom.)}

^{16 2012(50)PTC 112 (Bom.)}

^{17 2012(49)PTC 82 (Del.)}

^{18 http://en.wikipedia.org/wiki/Notary_public}

^{19.http://finmin.nic.in/law/Stamp%20Act%201899.pdf}

^{20 http://copyright.gov.in/Documents/CRACT_AMNDMNT_ 2012.pdf}

^{21.http://copyright.gov.in/Documents/CopyrightRules1957.pdf}

^{22 http://ipindia.nic.in/list_INN_08February2012.pdf.}

© 2012, Vaish Associates, Advocates,
All rights reserved with Vaish Associates, Advocates, 10, Hailey Road, Flat No. 5-7, New Delhi-110001, India.

The content of this article is intended to provide a general guide to the subject matter. Specialist professional advice should be sought about your specific circumstances. The views expressed in this article are solely of the authors of this article.