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In the year 2023, we have witnessed significant developments in the realm of intellectual property law in India. Several landmark judicial pronouncements have reshaped the legal landscape in this field and have offered assistance on the interpretation of various unresolved aspects. We’ve selected and summarized some of such judicial findings below:
Casio, a renowned Japanese company, initiated legal proceedings alleging infringement of design of its musical keyboard by the defendant. The plaintiff contended that the defendant has adopted a nearly identical design for its musical keyboard, which is an obvious imitation of the plaintiff’s design. The defendant argued that the plaintiff’s design registration is liable to be cancelled as it suffers from lack of novelty (since it is similar to the design of several other keyboards readily available in the market and accessible on various third-party websites) thereby rendering Casio's design registration redundant.
While addressing the issue of design cancellation, while the Court acknowledged that the absence of novelty and originality could serve as a legitimate defense (in a suit for design infringement), the lack of novelty or originality has to be ascertained on the date when the design was granted registration. In other words, the Court observed that if a design, when granted registration, does not suffer from lack of novelty or originality, it cannot be invalidated solely because multiple producers decide to copy the said design subsequent to the grant of registration. The Court also pointed out that the defendant failed to adduce any valid evidence substantiating their claims of prior publication and lack of novelty in the plaintiff's keyboard design.
Based on the aforementioned reasoning, the Court ruled in favor of Casio, rejecting the defendant’s arguments and upholding the validity of its design registration.
In a case involving comparative advertising for toilet cleaners, the Division Bench of the Hon’ble Delhi High Court observed that it is not necessary to clearly mention the competitor's product and that mere inferences drawn from the advertiser’s depiction of a competitor’s brand, its products, or packaging can be sufficient grounds for a disparagement claim.
Furthermore, the Court clarified the distinction between acceptable “puffery” and actionable disparagement in comparative advertising. The Court observed that any comparative statement which claims that the competing product is inferior, and advertiser’s product is better or superior, is not puffery and in light of inference to the competing product, such statement would amount to disparagement.
[Hindustan Unilever Limited vs. Reckitt Benckiser (India) Private Limited, FAO(OS)(COMM) 157/2021]
The Delhi High Court issued a crucial judgment clarifying the obligations of intermediaries under the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 (“IT Rules”).
The plaintiff alleged that the defendant violated the statutory requirements of the IT Rules by failing to delete allegedly infringing listings from its website after receiving notice from the plaintiff. The Court rejected the argument, pointing out that Rule 3(1) of IT Rules only requires an intermediary to publish its rules, regulations, privacy policy, and user agreement before users access their platforms. It does not impose any obligation to actively remove infringing content upon receiving a complaint.
The Court further observed that under Rule 3(1)(b)(iv) of IT Rules, the intermediary is only obligated to advise the user to abstain from hosting, displaying, publishing any infringing material. The Court further clarified that the IT Rules do not mandate or require the intermediary to take any specific action upon receipt of the complaint of infringement as this constitutes a recommendation, and not a mandatory obligation.
[Samridhi Enterprises v Flipkart Internet Pvt. Ltd. & Ors, CS (COMM) 63 of 2023]
The Delhi High Court has broadened the permissible scope of amendment of claims under the Patents Act and allowed the amendments of claims in a patent application. The appellant sought to amend the original ‘method of treatment’ claims to ‘composition’ claims. While the respondent contended that the amendments sought are violative of Section 59(1) of the Patents, Act, 1970 as the amended claim did not fall wholly within the scope of the original claim, the Hon’ble Delhi High Court held that the Controller’s interpretation of Section 59(1) of the Patents Act was incorrect as the claims and complete specifications in a patent application have to be read together and as a whole.
The Court further held that while Section 59(1) indeed requires amended claims to be encompassed within the original scope of the claim, this does not preclude amendments that adjust the nature of the invention claimed (e.g. from a method to a composition) as long as the subject matter of the invention remains the same. In this case, the court found that the essence of the invention (i.e. its technical contribution) remained consistent across the amended claims, even though the form of the claim (method vs. composition) had changed. Hence, the applicant ought to be given a chance to have the product patented, and the Controller should not shut out the applicant on the tenuous ground under Section 59(1) of the Act. Therefore, the Court overruled the Controller’s decision and allowed the applicant to amend the originally filed claims.
[Allergan Inc. v The Controller of Patents, C.A.(COMM.IPD-PAT) 22/2021]
The Hon’ble Delhi High Court while dismissing a writ petition filed by Tata SIA Airlines Limited (“petitioner”) held that that even after declaration of a mark as “well-known” by judicial bodies, the proprietor of such mark would be required to file a request under Rule 124 of the Trade Marks Rules, 2017 (“Rules”) for inclusion of the mark in the list of well-known trademarks maintained by the Trade Marks Registry. In this particular case, the petition was filed seeking the issuance of a writ of mandamus directing the Registrar of Trade Marks (“Registrar”) to include the mark VISTARA in the list of well-known trademarks, by virtue of Section 11(8) of the Trade Marks Act, 2000 (“Act”).
The Hon’ble Court observed that the formal procedure of publication and inclusion of the mark envisaged under Rule 124 of the TM Rules cannot be dispensed with. Furthermore, the Court deliberated that it was beyond its purview to engage in evaluating the justifiability of the prescribed fee of INR 1,00,000, concerning the quantum of work expected to be undertaken by the Registrar.
[Tata Sia Airlines Limited v. Union of India, 2023:DHC:3659]
The Delhi High Court refused to grant an injunction in favor of the film producers in a copyright lawsuit against HarperCollins Publishers arising from the novelization of the screenplay of the film ‘Nayak’. This order clarifies the ownership of copyright in film adaptations and sets a precedent for future cases involving underlying works.
The plaintiffs, being producers of the movie ‘Nayak’, alleged infringement of their copyright as they claimed to be owners of the screenplay in the movie and argued that only upon commission by them, Satyajit Ray wrote the screenplay and directed the movie. On the other hand, the defendants decided to novelize the screenplay and argued that since the screenplay was written entirely by Satyajit Ray, the copyright vests with him first and upon his death, with his son and the society, from whom it had obtained a license before novelizing the screenplay.
The Hon’ble Court interpreted Section 13(4) of the Copyright Act, which distinguishes between the copyright in a film and any underlying works (such as the screenplay). In simple words, if a separate copyright existed in the screenplay of the film, such copyright remains independent and cannot be affected by the copyright held in the cinematographic film. The Hon’ble Court further relied on Section 17 of the Act read with the judgment of Sushilaben Indravadan Gandhi vs. New Assurance Co. Ltd. (2021) 7 SCC 151, wherein it was held that the “contract of service” under clause (c) to the proviso of Section 17 of the Act does not apply to cases of a contract between equals (like the one between the producers and Satyajit Ray) but is to be interpreted as an employment contract between master and servant. Therefore, the Court held that the plaintiff has no right to injunct the defendants from novelizing the screenplay of the movie ‘Nayak’.
[RDB and Co. vs. HarperCollins Publishers India Private Limited, 2023:DHC:3551]
The Delhi High Court provided a clarification regarding the filing of rectification petitions, emphasizing that seeking the removal of a trademark from the Trade Marks Register under Sections 47, 57, or 124 of the Trade Marks Act, 1999 ('the Act') is not restricted solely to the High Court with territorial jurisdiction over the office of Trade Marks Registry where the contested mark was registered. Rather, such a petition can be filed in any other High Court where the dynamic effect of the registration or use of the mark is felt.
The Court opined there was no express statutory restriction under the Act against any High Court exercising jurisdiction either under Section 47 or 57 of the Act. Further, relying on Girdhari Lal Gupta v. K. Gian Chand & Co., 1977 SCC OnLine Del 146, the Court opined that the cancellation or rectification petition could be initiated either in the High Court with jurisdiction over the office of the Trade Marks Registry that granted registration to the contested mark or in the Court where the dynamic effect of registration was felt.
[Dr. Reddy Laboratories Vs. Fast Cure Pharma, C.O. (Comm.IPD-TM) 8/2023]
The Delhi High Court clarified that the mere use of trademarks in the Google Ads program does not per se constitute infringement or passing off under the provisions of the Trademarks Act, 1999.
In this case, MakeMyTrip had filed a suit for permanent injunction against ‘Booking.com’ alleging the adoption or use of its registered word marks or any deceptive variant as keywords through the Google Ads Program, amounts to infringement. MakeMyTrip further sought a decree of mandatory injunction against Google India and Google LLC requiring them to ensure that Booking.com refrains from promoting its business by using MakeMyTrip’s trademarks as keywords in the Google Ads Program. The Single Judge restrained the defendants from using the mark ‘MakeMyTrip’ as a keyword on the Google Ads Program. Subsequently, Google LLC filed an appeal before the High Court.
While setting aside the single bench order, a division bench comprising Justices Vibhu Bakhru and Amit Mahajan cited their previous ruling in Google LLC v. DRS Logistics (P) Ltd & Ors., emphasizing that the utilization of trademarks as keywords by competitors, without causing confusion or deceit, does not inherently amount to infringement. The Court opined that “the use of trade marks as keywords cannot, by any stretch, be construed as applying the registered trade mark to any material intended to be used for labelling or packing goods, as a business paper, or for advertising goods or services."
The Court concluded that MakeMyTrip cannot claim any exclusive right based on trademark laws to prevent Booking.com’s advertisements or links from appearing as sponsored links. Additionally, the Court highlighted Booking.com’s well-known status and popularity in offering travel services and indicated that an internet user is unlikely to be misled into assuming an affiliation between Booking.com’s services and MakeMyTrip. Consequently, appeals were allowed, granting relief to the appellants.
[Google LLC v. MakeMyTrip (India) Private Limited and Ors., FAO (OS) (COMM) 147/2022]
The Division Bench of the Delhi High Court upheld the decision of a Single Judge, emphasizing the principle of territoriality in determining goodwill for trademarks. The Court observed that the transborder reputation of a trademark must be substantiated with adequate evidence of significant goodwill or reputation specifically within the Indian market.
The case centered on the plaintiff's assertion regarding the substantial international reputation of its “BOLT” brand, established in 2018. The plaintiff alleged that the defendant’s use of the “BOLT” mark for EV charging stations in India infringed upon its well-established reputation. Conversely, the respondents contended the matter from the standpoint of priority in the adoption and usage of the mark, coupled with the purported lack of substantial presence and consumer base of the plaintiff within India. The Single Judge Bench held that Bolt’s limited engagement in providing EV charging services in select locations across the globe did not warrant its trans-border reputation, particularly one extending to India. In the appeal, the Court took up the questions of ascertaining whether Bolt possesses a substantial reputation and goodwill in India for a claim of ‘passing off.’
The Division Bench relied on various judicial precedents including Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd, where the Supreme Court had observed that a mere global reputation or assertion of goodwill of the mark is insufficient to establish a transborder reputation. The Court was of the view that the appellant did not make a good case of substantial and recognized presence in India and that their presence did not amount to a trans-border spillover in India. The Court further held that in order to succeed in the claim of passing off, the claimant must prove and establish the existence of substantial reputation and goodwill in the concerned country among a sizable and noteworthy number of concerned consumer segments.
[Bolt Technology Ou vs Ujoy Technology Private Limited & Ors. FAO(OS) (COMM) 45/2023]
The Bombay High Court affirmed the rights of authors of literary and musical works to claim royalties while communicating a sound recording to the public through radio broadcasting.
It was contended by the plaintiff that the 2012 amendment to the Copyright Act, 1957 (“Act”) which added provisos to Sections 17, 18 and 19 of the Act, has reversed the position of law that was erroneously interpreted in the case of IPRS vs. Eastern Indian Motion Pictures Association and others wherein it was held that once the underlying works become a part of cinematograph film, authors of the underlying work forfeit their rights owing to Section 17 (b) and 17 (c) of the Act.
The Court held that every radio broadcast of a sound recording to the public constitutes a utilization of the underlying literary and musical works, entitling the authors to claim royalties on each occasion when such sound recordings are communicated to the public through radio stations. The Court further interpreted that the words ‘with the cinematograph film in a cinema hall’ in the proviso added to Section 18(1) of the Act made it clear that if works are utilized in any form other than in a cinema hall, the authors are entitled to receive royalties.
About the authors: Gaurav Bhalla is a Partner and Parag Singhal is an Associate at Ahlawat & Associates.