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Yashvardhan Rana

Yashvardhan Rana is an Intellectual Property Lawyer based out of New Delhi

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[Exclusive] India's Top IP Judgements/Orders in the Time of COVID-19

IP Lawyer Yashwardhan Rana throws light on some of the most talked-about IP judgements during COVID-19 and analyzes the crux of the issue and its impact on trademark jurisprudence prevalent in India.

IPR Judgements | BW Legal World

The following orders/judgments delivered by various Indian courts and tribunals during these horrid times are not designed to be read in a single sitting, or even in a week’s time. However, the reader should familiarize himself or herself with the general crux and the approach taken by our judiciary during COVID-19 so as to turn to this piece when facing a particular problem or set of facts. 

This is not an exhaustive list; however, the following cases present a brief outline and rather a decidedly improved understanding of the prevalent key case laws and most talked about issues in the domain of Intellectual Property Law in India in the time of the pandemic. They are as follows: 

Arudra Engineers Private Limited and Ors. vs. Patanjali Ayurved Limited and Ors. (O.A. No. 258 of 2020 in C.S. No. 163 of 2020, Madras High Court)1 and Patanjali Ayurved Limited and Ors. v. Arudra Engineers Private Limited (O.S.A. No. 169 of 2020, Madras High Court) - ‘CORONIL’ trademark dispute 

In a recent trademark legal dispute between two companies - M/s. Arudra Engineering Private Limited, subsequently, amended to M/s. Arudra Engineers Private Limited, Chennai (“Plaintiff”) filed a suit alleging trademark infringement against M/s. Patanjali Ayurved Limited, New Delhi, a consumer goods company, and subsequently, by amendment also against Divya Yog Mandir Trust, Haridwar, Uttarakhand (“Defendants”) before the Hon’ble Madras High Court. The court was inclined to grant the injunction since the plaintiff was successful in fulfilling the ingredients as laid down in S. 29(4)(b) of the Trademarks Act, 1999 which states that even if the infringing trademark is used to trade goods or services which are unrelated to goods or services traded under the infringed trademark still it will amount to infringement of the trademark.  

Consequently, an appeal against the order dated 06.08.2020 was passed recently in O.A. No. 258 of 2020 in C.S. No. 163 of 2020, whereby the learned Single Judge overturned the decision and was of the view that the use of the word 'Coronil' in the process of manufacture and sale of a tablet as an immunity booster, will not be detrimental to the distinctive character or repute of the registered trademark of the plaintiff. 

Delhivery Private Limited v. Treasure Vase Ventures Private Limited (CS (COMM) 217/2020, Delhi High Court) 

It was held by the Delhi High Court that the registered trademark ‘DELHIVERY’ is phonetically similar to the English dictionary word ‘delivery’ and is generic in nature, thus, not being eligible for trademark protection. It was observed that a generic mark that has achieved distinctiveness through long, continuous and extensive commercial use can only enjoy the benefit of trademark statutory rights and be accorded protection.  

The position of law is well settled that a generic word cannot be registered, that is, a generic word cannot be appropriated by one party to the exclusion of others. Exclusivity claims based on secondary meaning acquisition must be established by cogent material. References to sales and promotional expenses may be used to establish the acquisition of reputation and goodwill, i.e., to show the popularity of a mark. 

Vinay Vats v. Fox Star Studios India Pvt. Ltd. & Anr. (I.A. 6351/2020 in CS(COMM) 291/2020, Delhi High Court) 

The Delhi High Court, vide order dated July 30, 2020, refused to grant an interim injunction against the Defendants in a copyright infringement suit, and re-affirmed that there can be no copyright in an “idea”. Plaintiff claimed to be the author and the first copyright owner of a script for a film titled - “Tukkaa Fitt”, written back in the year 2010/11. As per Plaintiff, a trailer of a film based on this script was released on YouTube and other public media platforms in March 2011. 

The Defendants allegedly released the official trailer of a film titled “Lootcase” on July 16, 2020. Plaintiff asserted that the plot of the Defendants’ film (that was released on July 31, 2020), as ascertained from the trailer, bear substantial similarities between the plot of the said film ― “Lootcase” and his script. It is on this foundation that the plaintiff sought an interim injunction for copyright infringement, against the release of the Defendants’ film “Lootcase”. The Defendants, however, contended, inter alia, that there is no sustainable cause of action as the Plaintiff’s script was never in the public domain, and the movie based on the script was never released. 

The Court, placed reliance on RG Anand v. M/s Delux Films, 1978 (4) SCC 118, and rejected the Plaintiff’s interim application and held, “..that there is no copyright in any idea, subject matter, theme or plot, and violation of copyright is confined to the form, manner and arrangement and the expression of the idea by the author of the copyright at work. In the present case, there is no earlier film, based on the script of the plaintiff, which could for the basis of a claim to copyright.” 

ITC Limited v. Nestle India Limited (C.S. No. 231 of 2013, Madras High Court)  

A seven-year-old legal dispute between two FMCGs was finally disposed of by the Madras High Court on June 10, 2020. The suit was filed by ITC (“Plaintiff”), a well-known company originally engaged in the tobacco business which had successfully diversified into Hospitality Industry, Paper & Paper Board Industry, Agri Based Business Industry and later forayed into the Fast Moving Consumer Goods Sector (FMCG), in 2010 to claim that Nestle (“Defendant”), a pioneer in the instant noodles category, has been using the expression “Magical Masala” for its instant noodles brand Maggi since 2013 and so had been passing off their product, as against the brand Sunfeast Yippee! which had adopted the same expression in the year 2010. A single-judge bench of Justice C. Saravanan, after exhaustive scrutiny of arguments and evidence, held that there was no passing off by Defendant and accordingly, dismissed the suit. 

Hindustan Unilever Limited v. Emami Limited (2020 SCC OnLine Bom 764) 

In Hindustan Unilever Limited (Plaintiff) v. Emami Limited (Defendant), Hon’ble Justice B.P. Colabawalla of the Bombay High Court on 6th July 2020 via video-conferencing granted an ad-interim injunction (to maintain status quo) in favor of Hindustan Unilever Limited (HUL) with respect to use of the ‘Glow & Handsome’ trademark. HUL approached the Bombay High Court under Section 142 of the Trade Marks Act, 1999 (which prohibits groundless threats of legal proceedings against holders of registered trademarks) seeking an injunction against Emami. In India, the ownership of a trademark is determined on a first-to-use basis as per Section 34 of the Trade Marks Act, 1999.  

The principle of “Priority in adoption' and use prevails over priority in registration” and thus is usually applied in these circumstances (legal milieu that a corporation can get when it’s first to launch or commercially launch its products in the market). Further, any entity that can establish ownership over a trademark by using the mark in the course of its trade and by substantiating upon its prior commercial use of the mark (marketed and sold) by adducing evidence such as extensive publicity and promotion via social media presence, print media, invoices, expenditure incurred, etc. and in such a way that the public associates the trademark with that of the prior user of the trademark – shall prevail as per trademark law. 

Bayerische Motoren Werke Ag vs Om Balajee Automobile (India) (CS(COMM) 292/2017, Delhi High Court) 

The Hon'ble Delhi High Court on March 23, 2020, granted an interim injunction in favour of the plaintiff restraining the defendants from manufacturing, exporting or otherwise dealing with goods including but not limited to E-rickshaws, bearing the mark DMW, as the same is either identical or deceptively similar to the plaintiff’s BMW Marks and thus, amounted to an infringement of the Plaintiff's rights subsisting in its reputed and well-known trademark BMW. 

Rb Health (Us) Llc & Anr. vs Dabur India Limited (CS(COMM) 319/2020, Delhi High Court) 

The Plaintiff (Reckitt Benckiser Health, US LLC and its Indian subsidiary RB Health) approached the High Court of Delhi seeking a permanent injunction against Dabur (Dabur India Limited) to prohibit Dabur from manufacturing, importing, marketing, advertising, promoting, selling and/or using plaintiff no. 1/RB Health (US) LLC's registered design i.e. design no. 271671, falling in class 28-02, in relation to a soap bar. 

The Court opined that there are several soap bars in the market with similar features if not identical features in relation to the colour, shape, and smell. Moreover, the taglines and the indications/signs by Dabur are still not yet registered as trademarks. The Court also observed that since the competing products, like others products in the market, are hygiene-products, the taglines and indications/signs used by the plaintiffs appear to be "customary" in the "current language" of the trade for the purpose of designating hygiene-products which includes soap bars - one cannot quibble with the proposition that taglines or indications/signs, over a period of time, by their constant use, can get embedded in the minds of the customer so as to remind them of the origin of the goods. 

The Court noted considerable differences in the packaging of two soaps, with Sanitize’s background colour being dark green as opposed to Dettol’s packaging, which is a mixture of white and light green colour. The packaging of Dabur bears a cross and a shield while there is a plus (+) symbol in the Plaintiff’s product. The court refused to grant an injunction in favour of the Plaintiffs holding that “even a person with imperfect recollection/memory” could not confuse Dabur’s product with that of the Plaintiff’s”. The matter is ripe for hearing before the court on 2nd March, 2021. 

Hindustan Unilever Limited vs Reckitt Benckiser (India) (COMM IP SUIT (L) NO. 300 of 2020, Bombay High Court) 

In March 2020, Hindustan Unilever Ltd. (HUL) approached the Bombay High Court against Reckitt Benckiser (India) Pvt. Ltd. (RB) claiming the latter allegedly tried to denigrate their product, Lifebuoy. Specifically, HUL stated that RB had advertised its product, Dettol, in a way that allegedly mocked Lifebuoy’s utility, even as India’s COVID-19 epidemic was getting underway. 

In RB’s advertisement, a doctor asks his patients to keep away from soaps and depicts their liquid hand-wash to be more effective. The soap is shown as a red bar that resembles the shape, colour and configuration of Lifebuoy soaps. Shortly after, HUL approached the High Court and sought Rs 1 crore in damages and a permanent injunction against RB. 

A single-judge bench of the Bombay High Court, headed by Justice K.R. Shriram, heard the case before the matter could venture into substantial claims and averments. RB subsequently agreed to suspend the use of the impugned ad for one month. 

Cutis Biotech v. Serum Institute of India (Commercial Suit No.1/2021, District Court, Pune)  

Recently, a commercial court in Pune refused to pass an interim injunction order to restrain the Serum Institute of India (SII) (defendant) – the world’s largest vaccine manufacturer, from using the trademark “COVISHIELD” for its vaccine for the coronavirus pandemic. Cutis Biotech (plaintiff), a Nanded-based pharmaceutical and medicinal products company operating since 2010, had filed the suit in the civil court on 4th January 2021, seeking to restrain the SII from using the trademark “COVISHIELD” or any other identical and/or similar name for its Covid-19 vaccine. 

Astrazeneca Ab & Anr. vs Alkem Laboratories Limited (CS (COMM) No. 410/2020, Delhi High Court) 

The Delhi High Court refused to grant an interim injunction in favour of the plaintiffs and ruled that manufacturers of generic drugs should be in a position to commence their activities immediately upon the expiry of the patent in the interest of the public at large. The court opined that there cannot be any dichotomy between disclosure and coverage in the context of section 3(d) of the Patents Act, 1970. It also noted that owing to the COVID-19 pandemic, the probability of a diabetic person being afflicted with the virus is exponentially high and thus, affordable diabetes medication was in public interest. The court also clarified that disclosure requirements at the time of application had to be strictly followed by patent applicants as general or fleeting disclosure is not countenanced under patent law. 

SASSOON FAB INTERNATIONAL PVT. LTD. v. Sanjay Garg (ORA/171/2020/TM/DEL, IPAB, Delhi Registry-Cum-Bench

In a recent order, the IPAB issued an interim stay of the operation of the trademark registration for the word ‘N95’ (registration number 4487559 in class 10). The IPAB prima facie held that ‘N95’ is a generic word and could not have been registered under section 9 of the Trade Marks Act. 

 

Disclaimer: The views expressed in the article above are those of the authors' and do not necessarily represent or reflect the views of this publishing house



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