INTRODUCTION
As we reach the third quarter of 2022, we have witnessed no dearth of pathbreaking developments in the field of Intellectual property rights. One of the most noteworthy developments is that Supreme Court while interpreting Section 63 of the Copyright Act, 1957 held that Copyright Infringement is a 'Cognizable & Non-Bailable Offence', setting aside any ambiguity related to the section. This newsletter also tracks interesting jurisprudence and decisions taken by the Supreme court and various State High Courts in areas such as the invisible use of a trade mark, scope of patent linkages, the defence of De Minimis and Fair Use in context of Copyright Infringement, interpretation of 'term' of copyrighted works and several others.
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INTRODUCTION CASE ANALYSIS
Well-known trade mark" status conferred on DHL
The Delhi High Court ("Court") in the case of DHL International Gmbh v. DLH Express Services Private Ltd.1 , recently granted permanent injunction in favour of DHL International GmbH ("Plaintiff") and directed DLH Express Services Private Ltd. ("Defendant") to withdraw its trade mark application for the trade mark 'DLH EXPRESS SERVICES (P) LTD' ("DLH").
Sometime in January 2020, the Plaintiff came across the trade mark application filed by the Defendant for the trade mark 'DLH'. The Plaintiff thereafter opposed the Defendant's trade mark application before the trade marks registry
During the pendency of the opposition, the Plaintiff also filed a suit before the Court, seeking permanent injunction for restraining infringement of trade mark, trade dress, dilution and tarnishment, passing off, damages etc., against the Defendant. The case of the Plaintiff was that, apart from the rival trade marks being similar, the rival colour schemes were also identical. The Plaintiff further alleged that the trade channels for the rival trade marks, were also similar, and therefore, the possibility of confusion in the minds of the consumers was extremely high. The Plaintiff further submitted that an investigation carried out at the premises of the Defendant also revealed that while the Defendant was using 'DLH' as part of its company name and on different platforms including websites and hoardings, the actual trade mark of the Plaintiff was also being used by the Defendant in its premises. A depiction of the rival trade marks is provided below.
On December 22, 2020, the Court granted an ex-parte ad interim injunction restraining the Defendant from using the trade mark 'DLH' or any trade marks or logos similar to that of the Plaintiff.
In the subsequent hearing, the Defendant argued that it changed its name from DLH Express Services Pvt. Ltd. to M/s. Dogra's Cargo Express Private Limited with effect from January 29, 2021 and that the Defendant had no intention to use the trade mark 'DLH' or any trade marks or logos similar to that of the Plaintiff. The Defendant further submitted that they merely collect courier packages from customers and for dispatching such packages, they use the services of authorized channel business partners of the Plaintiff.
On perusal of the competing trade marks and logos, and the submissions made by the Plaintiff and the Defendant, the Court held that the Defendant's trade mark was almost identical to the Plaintiff's trade mark and logo. The Court also noted that the services for which the Defendant was using the trade mark 'DLH' were also identical to the services offered by the Plaintiff and that no defence was taken by the Defendant, except the fact that the Defendant used various channels of the Plaintiff. In this regard, the Court held that the fact that the Defendant used the authorized channels of the Plaintiff did not amount to a permission to use the Plaintiff's trade mark and logo. In light of the above, the Court granted permanent injunction in favour of the Plaintiff and directed the Defendant to withdraw its trade mark application for the trade mark 'DLH'
The Court also declared that the Plaintiff's trade mark "DHL" is a well-known trade mark, especially in the field of logistics, freight transport, courier services, international money etc., owing to the extensive evidence placed on record showing the global and continuous use of the Plaintiff's trade mark "DHL" as well as the multiple trade mark registrations, independent third-party write-ups and articles, and enforcement actions placed on record before the Court.
Delhi High Court observed, "Invisible" use of a trade mark as a keyword can constitute passing off.
The Delhi High Court ("Court"), in the case of MakeMyTrip India Private Limited vs. Booking.com B. V. & Ors.2 held that allowing entities who are not owners of a trade mark to buy a keyword which is a registered trade mark of another entity would amount to trade mark infringement or passing off. The Court also held that allowing use of parts of a trade mark combined with generic words in the ad-title or ad-text may also constitute infringement or passing off.
In this case, MakeMyTrip Pvt. Ltd. ("Plaintiff") filed a suit seeking protection of its various registered trade marks, which were being used by Booking.com B.V. ("Defendant") as keywords for its ("Google Ads Program").
The Plaintiff was aggrieved that the Defendant, who is in the same industry and is a competitor of the Plaintiff, was using its registered trade mark 'MakeMyTrip' and its variants as keywords for its Google Ads Program, for promoting its services. Accordingly, when searches were carried out for 'MakeMyTrip' on Google, the first advertisement displayed was that of Defendant. Thus, the Plaintiff submitted that the Defendant was infringing the Plaintiff's registered trade mark 'MakeMyTrip'.
The Defendant relied on the ratio of European Commission's judgment in the case of AT.40428-GUESS, that there could be no restriction on the use of a trade mark on the Google Ads Program as a keyword, including by competitors. The Defendant further contended that restriction on the use of 'MakeMyTrip' as a keyword would be contrary to competition law. Additionally, the use of generic words such as 'make', 'my', 'trip' is permitted as per Sections 34 and 35 of the Trade Marks Act, 1999.
Google India Pvt. Ltd. and Google LLC ("Google"), impleaded as a co-defendants, argued that the use of the trade mark as a keyword did not amount to any infringement across several jurisdictions and the alleged use of the Plaintiff's trade mark by the Defendant did not amount to infringement in terms of the judgment passed by the Court in DRS Logistics (P) Ltd & Ors. v Google India Pvt. Ltd.3 ("DRS Logistics").
After considering the arguments, the Court observed that the position of law was clear to the effect that the use of a registered trade mark as a keyword would constitute trade mark infringement. The Court added that a perusal of Section 29(4)(c) of the Trade Marks Act, 1999 showed that if any party takes unfair advantage of the distinctive character or repute of a registered trade mark, without due cause, then it would amount to infringement. Relying upon the judgment in DRS Logistics, the Court observed that even an invisible use of a trade mark would amount to infringement.
Further, the Court held that there was not much of a difference in the use of a trade mark in a metatag or a source code of a website which is not visible and in the use of a trade mark as a keyword for a Google Ads Program, in as much as the trade mark being used in a hidden manner did not take away the fact that it was, 'use' of the trade mark as defined under Section 2(2)(b) of the Trade Marks Act, 1999, in relation to those very services.
Keeping this view, the Court passed an order to grant interim injunction against the Defendant to restrain it from using the registered trade mark 'MakeMyTrip' with or without spaces for the purpose of using it as a keyword for its Google Ads Program till the next date of hearing. The Court further clarified this order shall be applicable in the territory of India and shall not prevent the Defendant from using words 'make', 'my', 'trip' not conjunctively on a standalone basis in a descriptive or generic sense on the Google Ads Program.
Delhi High Court orders for listing of all intellectual property suits before designated commercial Courts, and calls for review of cases valued below INR 3 lakhs for improper valuation
In a move directed at regulating intellectual property actions filed in Delhi, the Delhi High Court ("Court"), in the case of Vishal Pipes Ltd v. Bhavya Pipe Industry4 , passed certain directions with respect to suits filed before the district courts in Delhi (which entertain suits valued between INR 3,00,000 (Indian Rupees three lakhs) and INR 2,00,00,000 (Indian Rupees two crores).
The Court was dealing with an appeal against an order of the additional district Judge, Patiala House wherein the plea for ex-parte injunction was rejected (without prior notice to the defendant) along with the application for appointment of a local commissioner for seizing goods. During the hearing, the Court took notice of the fact that the case had been heard by a Judge not designated as a commercial Court under the Commercial Courts Act 20155 . While hearing the appeal, the Court observed that the pecuniary threshold for cases under the Commercial Courts Act 2015 is INR 3,00,000 (Indian Rupees three lakhs), however, there is lack of clarity regarding suits which are valued lower than the said pecuniary value?6
In order to resolve this confusion, the Court appointed amici curiae (friends of the court) to address this conflict and based on a review of case laws, the Court ruled that the district court having jurisdiction was rightfully the commercial Court so designated under the Commercial Courts Act, 2015. Therefore, in order to harmonise the issue of the Commercial Courts Act, 2015 not applying to cases valued below INR 3,00,000 (Indian Rupees three lakhs), the Court directed:
- that all intellectual property actions ought to be valued at INR 3,00,000 (Indian Rupees three lakhs) or above, and that they ordinarily be placed before the district Judge (commercial);
- where a suit is valued below INR 3,00,000 (Indian Rupees three lakhs), the district Judge (commercial) would assess the valuation independently, to check whether the suit was correctly valued;
- Where the suit was valued correctly, they would continue to be listed before the district Judge (commercial) for consistency in adjudication, but not be subject to the Commercial Courts Act 2015;
- All intellectual property rights' suits pending before the district Court were now to be listed before the district Judge (commercial).
These directions are likely to curtail the practice of plaintiffs deliberately undervaluing suits to reduce their liability to pay court fees (ranging from 0.3% – 1% of the ["]), which often deters smaller players from filing suits due to the significant cost. However, it remains to be seen how effectively this order can be implemented, given that valuation is usually a matter of trial.
The Calcutta High Court directs that patent linkages cannot be granted beyond the confines of the Patents Act, 1970.
In a significant decision, the Calcutta High Court ("Court") clarified the scope of granting patent linkages (coordination between patent regulatory authorities ("regulators") to prevent granting patent protection to technology or drugs which are likely infringe an existing patent until the validity of the patent expires) in India and ruled that where a right to seek damages or injunctions by way of filing infringement actions exist, patent linkages between the Patents Act, 1970 and other statutes were impermissible in law.
The Court was dealing with a writ petition filed by one Kanishk Sinha, a patentee ("Patentee"), against the order of the Secretary, Ministry of Road Transport & Highways (Government of India) declining the Patentee's request for linkage of the VAHAN e-Module for registration of electric vehicles to be given to the Patentee, prior to issuance of no-objection certificates for registration.
The Patentee's contention was that the electric vehicles were infringing Patent No 254875, in his name, and while there were infringement actions pending before various courts and inunction was granted in his favor, the injunction was modified to direct the Ministry of Road Transport and Highways to register battery-operated rickshaws in favour of assignees of the Patentee, and other writ petitions had directed the authorities to consider a patent linkage as well. In turn, the respondent Ministry i.e. the Ministry of Road Transport & Highways contended that the remedy of infringement was adequate, and to seek linkage under the Motor Vehicles Act, 1988 and Central Motor Vehicles Rules, 1989 would be granting remedies not contemplated by those statutes.
The Court agreed with the arguments put forth by Union of India and the Ministry of Road Transport and Highways ("Respondents") and their reliance on Bayer Corporation & Ors v Union of India7 . In this case, the Delhi High Court had held that the Patents Act, 1970 was a complete code that protected the rights of both the patentee and of the general public, and the drug control authority was not the appropriate forum to have a patent linkage.
Accordingly, the Court held that providing request for linkage to the Patentee in the present case would give him a 'controlling handle' beyond the remedies available under the Patents Act, 1970. It follows, therefore, that a grant for patent linkages would be subject to circumspection by the courts and would be unlikely to be granted except where a patentee can demonstrate clearly that the Patents Act, 1970 was truly unlikely to address the legal issues arising out of their case.
Deceptive similarity constitutes as an infringement under the Designs Act, 2000.
In the case of Havells India Ltd. v. Panasonic Life Solutions India Pvt. Ltd. & Anr.8 , the Delhi High Court ("Court") recently restrained a Japanese multinational conglomerate, Panasonic Life Solutions India Pvt. Ltd. & Anr., ("Defendant") from manufacturing, marketing, and selling the VENICE PRIME series of its ceiling fans as it was found to be deceptively similar to Havells India Ltd.'s ("Plaintiff") ENTICER ART series of ceiling fans.
In March 2022, the Plaintiff learnt that the Defendant was launching its new series of ceiling fans branded as VENICE PRIME and the fans thereunder were a blatant imitation of its ENTICER ART series of ceiling fans for which the Plaintiffs owned design registrations.
The Plaintiff's case was that the Defendant's VENICE PRIME series of ceiling fans were a near replica of its registered designs, and since both the parties belonged to the same field of activity and were, in fact, competitors of each other, the sale of VENICE PRIME series of ceiling fans would undoubtedly cause confusion as to their origin, causing serious prejudice to the consumers and the Plaintiff. Thus, the unauthorized imitation, identical reproduction, and piracy of the registered design of the Plaintiff by the Defendant constituted an infringement under Section 22 of the Designs Act, 2000. In the backdrop of the same, the Plaintiff prayed for an interim injunction to restrain the Defendant and its agents from manufacturing, marketing, and selling the VENICE PRIME series of ceiling fans.
Opposing the grant of interim relief, the Defendant argued that the VENICE PRIME series of ceiling fans was inspired by its earlier brand CAPTOR, launched in the year 2020 and not from the Plaintiff's design. The Defendant also tried to highlight the dissimilarities between the Plaintiff's ceiling fans with their own ceiling fans,. The Defendant submitted that the Plaintiff's pattern had thick intersecting yellow lines with greyish hazy or smoky background while the Defendant's fan had a colour combination of gold and silver in abstract lines and the other two also had abstract patterns in a different colour scheme.
The Court scrutinized the matter by comparing the design on the Defendants ceiling fan with the Plaintiff's ceiling fan and noted that (a) the shape and configuration, ornamentation on the blade, body ring on bottom cover, layout and placement of the ornamentation were same; (b) the idea of using marble on the blades of the fan had been copied by the Defendant; and (c) even the shape in which the marble was cut, the size and the metallic border as well as its placement and layout on the ceiling fan had also been substantially copied by Defendant. Thus, the Court concluded that the Plaintiff had satisfied that an infringement was made out as the Defendant had substantially copied the essential features of Plaintiff's design.
Doctrine of De Minimis and Fair Use in context of Copyright Infringement
The Bombay High Court ("Court") in the case of Shemaroo Entertainment Limited v. News Nation Network Private Limited 9 , held that since News Nation Network Private Limited ("Defendant") got its license terminated and proceeded to use the Plaintiff's content without a license, the Defendant had essentially given up its right to contend the defence of fair dealing, which is an exemption in Copyright law which allows persons to deal in and use limited copyrighted work without permission or payment of royalties and the defence of de minimis, which is a legal maxim that translates to 'the law is not concerned with insignificant or minor matters.' Shemaroo Entertainment Limited ("Plaintiff') and the Defendant had entered into a non-exclusive license agreement ("Agreement") in 2019 wherein the Defendant was granted a non-exclusive license to broadcast and exploit audio visual songs clips, scenes and dialogue clips on the Defendant's channels for the period commencing from July 01, 2019 to June 30, 2022.
Footnotes
1. SCC OnLine Del 1353
2. CS (COMM) 268/2022, Order dated 27 April 2022
3. 2021 (88) PTC 217 (Del)
4. FAO-IPD 1/2022, order dated 3 June 2022
5. Section 2(c)(xvii) of the Commercial Courts Act, 2015 stipulates that intellectual property actions are commercial disputes, and the corollary that these must be heard by a Commercial Court follows.
6. Section 134 of the Trade Marks Act 1999, Section 62 of the Copyright Act 1957, Section 104 of the Patents Act 1970, Section 22 of the Designs Act 2000 and Section 65 of the Protection of Plant Varieties Act 2001 all stipulate those suits arising under these statutes must be heard by a court not lower than the district court, notwithstanding the provisions of other statutes governing jurisdiction of the civil courts.
7. Kanishk Sinha & Anr. Vs. Union of India & Anr (2009) SCC OnLine Del 2469, judgement dated 27 April 202
8. 2022 SCC Online Del 1662
9. COM. IP SUIT (L) NO.434/2021
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