INTRODUCTION
While the world continues to grapple with the coronavirus pandemic and its impact, we continued to witness some interesting case updates that took place in the field of intellectual property, particularly trademarks and copyrights, in the second quarter of this year. This newsletter brings to you the key intellectual property related updates in India for the second quarter of the year.
In an interesting case, the Bombay High Court, in a suit for trademark infringement declared ISKCON the registered trademark of International Society for Krishna Consciousness to be a "well-known trademark" in India.
In another significant case, the Madras High Court had to answer the question as to whether trademark protection can be extended to words which are laudatory and common to trade as in the case of ITC Limited's brand "Magic Masala".
The Bombay High Court also had before it two interesting cases touching upon different corners of the copyright law. In the first case, the court had to answer whether the messaging app Telegram was guilty of copyright and trademark infringement by allowing the unauthorised circulation of the e-newspaper Dainik Jagran on their platform. In this case, the court also examined the liability of Telegram as an internet intermediary for any copyright and trademark violations under the Information Technology Act, 2002 and related Rules. In the second case, the court had the opportunity of deciding a case involving claims of copyright infringement of the story and screenplay of the web-series 'Betaal' by the famous OTT platform Netflix.
In yet another case concerning breach of copyright as well as breach of confidentiality before the Delhi High Court, the court had the occasion of analysing whether the reproduction of architectural drawings would tantamount to copyright infringement, and also regarding the applicability of the fair dealing provisions in such cases.
The above-mentioned notable cases are discussed below.
NOTABLE CASE LAWS
International Society for Krishna Consciousness (ISKCON) vs. Iskcon Apparel Pvt. Ltd and Ors1
Recently, the High Court of Bombay ("the Court") declared ISKCON the registered trademark of International Society for Krishna Consciousness a "wellknown trademark" in India.
Background:
The matter pertains to a trademark infringement and passing off suit against a certain Iskcon Apparel ("IA"), an apparel company, selling products using the brand name ISKCON. When ISKCON approached the Court claiming trademark infringement of their organisation's registered brand name, the Court also delved into the question of whether "ISKCON" qualifies as a well-known trademark within the ambit of Section 2(1)(zg) of the Trade Marks Act, 1999 ("TMA").
Findings of the Court:
While taking serious steps against IA for misusing their brand name through the civil action (in which, IA gave an undertaking before the Court that it will not use the brand name at all), ISKCON also prayed for declaring ISKCON to be a well-known trademark. In order to support their case, ISKCON proved before the Court that they created the name for the first time, were established in the year 1966 in New York, and with the passage of time they have created a global presence, including in India. Furthermore, ISKCON also proved that the prominence of the ISKCON brand was not restricted to any particular goods, services or activities, but to a diverse range of categories.
On the basis of the above-mentioned reasonings, the Court was of the opinion that the trademark "ISKCON" fulfils all the requirements stipulated in the TMA and qualifies to be recognised as a well-known trademark.
M/s ITC Limited vs. Nestle India Limited2
Recently, the Madras High Court ("the Court") in a suit of passing off, rejected M/s ITC Limited's ("ITC") claim over their used trademark "Magic Masala" and held that no party can claim monopoly over laudatory terms or terms which are common to trade.
Background:
In the year 2010, ITC had launched their Sunfeast Yippee! Noodles in two varieties and one of them was "Magic Masala". Subsequently, Nestle India Limited ("Nestle") in 2013, adopted the expression "Magical Masala" in relation to their instant noodles and marketed the same under the label "Maggi xtra-delicious Magical Masala".
ITC claimed that "Magic Masala" formed an essential feature of their composite trademark "Sunfeast Yippee! Noodles Magic Masala" and that Nestle had copied their brand "Magic Masala" and were selling their instant noodles under the slightly modified brand "Magical Masala". It is pertinent to mention that ITC never registered the said expression containing "Magic Masala" for its products. Thus, ITC filed a suit of passing off before the Court and sought permanent injunction against the use of the trademark "Magical Masala" by Nestle.
Findings of the Court:
During the court proceedings, Nestle contended that "Magical Masala" was not used by them as a trademark; rather it served as a flavour descriptor. Nestle further contended that terms such as "Magic" and "Masala" are common expressions used in the food industry and cannot be subjected to any proprietary right by any member of the trade to the exclusion of others.
The Court took note of Nestle's contention and was of the opinion that, "Both the words 'Magic' and its derivative 'Magical' are common to the trade. Therefore, neither the plaintiff nor the defendant can claim any monopoly over the expression 'Magic' or 'Masala' for they are common words in Indian culinary and Indian food industry". Moreover, the Court also observed that ITC similar to Nestle was using "Magic Masala" as flavour descriptor and not as a trademark or a sub-brand as no trademark application was filed by them with the Trade Marks Registry to register the said phrase. The Court went on to state that "ITC has used the expression "Magic Masala" in a laudatory manner to praise the "Masala" in the sachet. Laudatory epithet cannot be given monopoly or protection as has been held by Courts... Since it is a laudatory word, it can never be monopolised."
On the basis of the above-reasonings, the Court dismissed the suit and held that neither party could claim trademark rights over laudatory words such as "Magic" or "Magical" along with a common word "Masala" to the exclusion of others. Thus, ITC cannot claim monopoly over the phrase "Magic Masala".
Jagran Prakashan Ltd. vs. Telegram FZ LLC & Ors3
Recently a Single Judge of the Delhi High Court, while passing an interim injunction in a suit for copyright and trademark infringement, directed the messaging app, Telegram to disclose the identity of users who were running channels on its platform to illegally share e-newspaper of Jagaran Prakashan Limited ("JPL") on a daily basis. The High Court also directed Telegram to take down the channels which were indulging in similar infringement activities against JPL's newspaper, within 48 hours of passing of the order.
Background:
The present suit for infringement of copyright and trademark was filed by JPL which publishes a daily newspaper in Hindi namely, Dainik Jagran ("Newspaper") against Telegram and the unidentified administrators of certain Telegram channels. It was submitted by JPL that its Newspaper is circulated through physical as well as digital means and the e-Newspaper of JPL is available on its website www.jagran.com. According to JPL, the readers of its Newspaper have the option to either subscribe the physical/print newspaper or they can log on to its website to read the daily newspaper in the digital format on the web page itself. As per JPL, its website has a security feature whereby a reader could read the Newspaper in the digital form on the website itself but could not download the same in the PDF format. Further, it was claimed that JPL was the exclusive owner of the trademark 'Dainik Jagran' and its variations.
JPL argued that certain anonymous users of the Defendant No. 1 platform i.e. Telegram have created channels on the platform whereby e-papers of JPL are being shared in PDF format daily. As per JPL, Telegram through these anonymous users, was not only permitting the availability of current editions of the e-paper but permitted its users to download all the previous editions of JPL's Newspaper published in the past, which is otherwise available to a user only if he/she pays a subscription fee.
It was the grievance of JPL that given the fact that Telegram, through these unknown users, was indulging into reproducing, adapting, distributing, transmitting and disseminating its e-Newspapers, there was not only a serious financial loss caused to JPL but also violation of its trademark rights and copyrights in its e-Newspaper.
JPL had also placed reliance on Section 79 of the Information Technology Act, 2000 to state that Telegram could not escape from its liability on the ground that it is an intermediary for the reason that it was required to conduct due diligence and in terms of Rule-3 (4) of the Information Technology (Intermediaries Guidelines) Rules, 2011, and on being informed about the misuse, Telegram is required to pull down the said channels within 36 hours. Despite repeated take down notices and reminders from JPL to Telegram, the said channels of the anonymous users which have been circulating the Newspaper were not pulled down.
Findings of the Court:
Considering the facts presented by JPL and perusing the evidence on record, the Ld. Single Judge found a prima facie case in favor of JPL and granted an ad-interim injunction in its favor. The striking feature of this order is that while granting an injunction in favor of JPL, Telegram was also directed to disclose the basic subscriber information/identity of the users/administrators of the channels where the e-papers of JPL are being uploaded.
In light of the fact that the issues such as liability of the administrator of online groups and the legality of circulation of e-papers on social media are widely debated issues in today's day and age, the order passed by the Ld. Single comes at a very crucial time. One can only hope that this order will pave way for other newspapers to initiate similar proceedings against such entities/users/social media platforms which have been actively participating in illegal circulation of their e-newspapers.
Sameer Wadekar & Anr. v. Netflix Entertainment Services Pvt. Ltd and Ors.4
In a suit filed by a writer claiming copyrights over the story of web-series BETAAL that was originally created for exclusive telecast on Netflix Entertainment Services Pvt. Ltd. ("Netflix"), the Bombay High Court (the "Court") refused to grant interim injunction to stay the release of the web-series BETAAL which was to happen shortly.
Background:
In early May 2020, the suit was filed by writer named Sameer Wadekar ("Wadekar"), claiming to have recently become aware of a YouTube trailer video of an upcoming web-series titled BETAAL to be released on Netflix's Over the Top platform on 24.05.2020, which according to Wadekar was a copy of his unpublished literary work VETAAL. This suit was thus instituted by Wadekar claiming infringement of his registered copyright in the unpublished literary work VETAAL by Netflix. The producer and director of the web-series BETAAL and the writer of the story BETAAL were also made a party to the suit (collectively the "Defendants").
The case of Wadekar in the suit was that the trailer video of the web-series BETAAL depicted at least 13 similarities to Wadekar's literary work titled VETAAL, his original fictional story from 2013-14 that he registered under the Copyright Act, 1957, as a literary work in 2015. Wadekar also contended that since 2015, he had shared his literary work VETAAL with many known and established producers including one film maker/ director Wilson Louis, who according to Wadekar had few contacts in Netflix. Few e-mails exchanged between Wadekar and Wilson Louis in July 2016 were produced before the Court.
During the hearings through videoconferencing, the attorneys for Defendants argued that the similarities outlined by Wadekar were mere concepts that are generic and that they do not have any original or copyrightable elements. The attorneys for Netflix additionally submitted before the Court several print and online publications dated July 2019, wherein Netflix had disclosed the story line of the web-series BETAAL and the suit just before the release of the web-series amounted to delay.
Findings of the Court:
After hearing the submissions, the Court held that the mere claim made by Wadekar that he shared his work with someone who had some contacts in Netflix was not sufficient to grant interim injunction to stay the release of the web-series BETAAL, and there was no prima facie case made by Wadekar to show there has been any copyright infringement by the Defendants. The email communications submitted by Wadekar did not show any link between Wilson Louis and Netflix and there was nothing else to show that the Defendants have copied from the Wadekar's literary work VETAAL. The Court further held that the claim of Wadekar was hit by delay and latches because Wadekar approached the Court only in May 2020, while the information regarding the Netflix web-series BETAAL were available on the public domain since July 2019 itself. The Court also explored the Hindu Methodology angle and held that the word 'Betaal' originates from 'Vetalam' relevant in Hindu Methodology and is a part of folklore.
While the interim application was dismissed, the suit's trial is pending disposal.
GE Power India Limited v. NHPC Limited 5
Recently, a Single Judge bench of the Delhi High Court (the "Court") refused to grant an injunction in a case for the infringement of copyright relating to the architectural drawings of GE Power India Limited ("GEPIL").
Background:
The suit was instituted by GEPIL in May 2020, against infringement of GEPIL's alleged copyright in six architectural drawings ("drawings") and breach of the requirement to maintain confidentiality by NHPC Limited ("NHPC"). Such violations were alleged to be vis-à-vis contracts for project named Teesta VI Project ("Project", for which the subject architectural drawings were licensed to be used) initially entered by the predecessors of the suit parties. The contracts were eventually assigned to the suit parties (due to the acquisition of business (in case of GEPIL) and upon transfer of the Project pursuant to the insolvency of the special purpose vehicle company managing the project (in case of NHPC)).
The issue arose when NHPC and GEPIL could not continue with the Project successfully due to pricing considerations, due to which NHPC went ahead with issuing an open tender for the Project and uploaded it on its website. GEPIL initiated the suit against NHPC wherein the main contention was that NHPC impermissibly and without a license from GEPIL published on the worldwide web the copyrighted and highly confidential drawings of GEPIL in an open tender for the Project, resulting in not only the infringement of the GEPIL's copyright but also the right of GEPIL to control the use and to preserve the confidentiality of the drawings and data. GEPIL claimed that the said actions of NHPC is causing irreparable harm to GEPIL and NHPC is liable to immediately pull down the said drawings and data from its webpage.
NHPC, on the other hand, took the plea of fair dealing under Section 52(1)(a) of the Copyright Act6 . The main contention of NHPC was that its actions did not constitute an infringement of copyright since under the terms of the contract, it was free to reproduce all drawings, documents and other material for the purpose of contract, including if required for the maintenance and operation of the facilities. NHPC also denied GEPIL's claim of any exclusive copyright in respect of the drawings.
Findings of the Court:
The Court rejected NHPC's claims of fair dealing under Section 52(1)(a) of the Copyright Act on the grounds that fair dealing is only applicable to private or personal use including research and does not apply to the commercial for which NHPC had published the drawings on the worldwide web.
The Court also asserted that there is no exception prescribed under Section 52 of the Copyright Act which permits completion of the unfinished Teesta VI Project by NHPC via the use of GEPIL's copyright drawings to be used by a third party without a license issued by GEPIL. Adding that even Section 52(1)(x) of the Copyright Act7 which is also in relation to architectural drawings, applies only to such drawings or plans that are used for reconstruction of a building or structures "originally constructed" and therefore stipulates that the building or structure with the said drawings was made with the consent or license of the owner of the copyright in such drawings and plans.
However, the Court also took note of the fact that GEPIL neither made out a prima facie case that any copyright vested in the subject architectural drawings nor even a case of irreparable harm/loss, and therefore, the Court refused to grant injunction.
Footnotes
1. COMMERCIAL IP SUIT (L) NO. 235 OF 2020
2. C.S No. 231 of 2013
3. Order dated 29.05.2020, passed in CS(COMM) 146/2020
4. 2020 SCC Online Bom 659
5. 2020 SCC Online Del 667
6. Section 52(1)(a) - The following acts shall not constitute an infringement of copyright, namely, a fair dealing with any work, not being a computer programme, for the purposes of—
- private or personal use, including research;
- criticism or review, whether of that work or of any other work;
- the reporting of current events and current affairs, including the reporting of a lecture delivered in public.
7. Section 52(1)(x) - The following acts shall not constitute an infringement of copyright, namely, the reconstruction of a building or structure in accordance with the architectural drawings or plans by reference to which the building or structure was originally constructed: Provided that the original construction was made with the consent or license of the owner of the copyright in such drawings and plans.
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