Delhi High Court restrains threats of infringement of Burj Al Arab’s shape

In the matter of Designarch Consultants Pvt. Ltd. & Anr. v. Jumeirah Beach Resort LLC [I.A. No. 7792/2020 in CS(COMM) 366/2020], the Delhi High Court, vide its order dated September 10, 2020, has granted an ex parte ad interim injunction restraining Jumeirah Beach Resort LLC (Defendant) from threatening Designarch Consultants Pvt. Ltd. (Plaintiff) with respect to the shape of the Plaintiff’s building.

The Plaintiff is engaged in the construction business and is the proprietor of trademark BURJNOIDA in class 37 (for building and construction services) as of February 2, 2011, which it claims to have been using since December 24, 2010. The Plaintiff is in the process of constructing the “Burj Noida” tower and owns several copyright registrations for BURJNOIDA, including for the shape of the planned building, as well as a trademark registration for.

The Defendant issued a legal notice to the Plaintiff on August 13, 2020, alleging infringement of its trademarks BURJ AL ARAB and

 and its copyright in the shape of the ‘Burj Al Arab’ hotel building located in Dubai, UAE. The Defendant owns various trademark registrations for its mark BURJ AL ARAB in India, but allegedly not in respect of construction services. The Plaintiff had filed the instant suit seeking a permanent injunction against the Defendant, to restrain it from making allegedly groundless threats of trademark and copyright infringement.

The Plaintiff contended that there is no infringement as the word ‘Burj’ means ‘tower’ in Arabic and it is a commonly used dictionary term, thereby being publici juris. The Plaintiff further contended that the shape of its planned BURJ NOIDA building is dissimilar to the shape of the Defendant’s BURJ AL ARAB building.

The Court held that “the Plaintiffs have also placed on record material to show that the shape of defendant’s building is also not unique and there are other buildings with similar shapes. Considering the averments in the plaint and the documents filed therewith, the plaintiff has made out the prima facie case in its favour”. Accordingly, the Court directed the Defendant to give the Plaintiff 7 days’ notice before initiating any proceeding claiming infringement of the Defendant’s trademarks or shape marks. The Court also granted an ex parte ad interim injunction restraining the Defendant from extending any threat to the Plaintiff in respect of the Plaintiff’s registered mark/ logo or designs of the Plaintiff’s building until the next hearing.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Differences in font and style sufficient to render trademarks dissimilar

In the matter of Shri Shakti Schools Private Limited v. M/s. Chirec Public School [Civil Miscellaneous Appeal No. 160 of 2020], the Telangana High Court, vide its order dated July 3, 2020, refused to grant an interim injunction to Shri Shakti Schools Private Limited (Appellant) in a trademark infringement suit, finding that there is prima facie dissimilarity between the font and stylization of the parties’ trademark CHIREC.

The Appellant provides educational services at its schools ‘CHIREC PUBLIC SCHOOL’ and ‘CHIREC INTERNATIONAL SCHOOL’ in Hyderabad. The Appellant claimed that it has been using the trademark CHIREC since 1989 and has acquired exclusive rights therein. The Appellant alleged that in February 2017, it learnt of the Respondent’s use of an identical mark – CHIREC PUBLIC SCHOOL, for educational services offered at a school in Karnataka. The Appellant claimed that the Respondent’s unauthorized use amounts to infringement of the Appellant’s registered trademark CHIREC. After a cease-and-desist notice issued to the Respondent did not yield compliance, the Appellant filed the instant suit for trademark infringement. The District Court refused the Appellant’s application for interim injunction. Thus, the Appellant filed the present appeal.

The Respondent denied the Appellant’s alleged longstanding use of the trademark CHIREC in respect of educational services and claimed that the Appellant had not acquired any reputation beyond Hyderabad. The Respondent contended that it adopted the trademark CHIREC in respect of its school/educational activities in 2005 and that it was an honest and concurrent user. The Respondent further contended that the fonts and colour combination in the respective marks are entirely dissimilar. On these grounds, the Respondent asserted that it had not infringed the Appellant’s mark.

On a comparative study of both parties’ trademarks, the Court found significant differences in the font, style and colour combination applied therein, holding that “…it appears that the respondent is using the word ‘CHIREC’ with a logo and its name is written only in blue colour with same font, but the appellant is using the said trade name with different style and with different font without any logo. Therefore, it is unlikely that the parents of the children who would admit their children into the schools would be misled into thinking that the respondent is using the appellant’s trade mark…”. The Appeal was accordingly dismissed.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Delhi High Court reaffirms that copyright infringement is a non-cognizable offence

In the matter of Anurag Sanghi v. State and Ors. [W.P. (Crl.) 3422/2018 and Crl. M.A. 35858/2018], the Delhi High Court, vide its judgement dated November 25, 2019, held that the criminal offence of infringement of copyright under Section 63 of the Copyright Act, 1957, is non-cognizable.

The Petitioner filed the instant Writ Petition praying for quashing of the FIR and resulting criminal proceedings against him. The FIR was registered for violation of an ex-parte injunction restraining the Petitioner from manufacturing “Lykke Knitting Needles” and thus infringing Knit Pro’s (Respondent No. 2) copyright therein. The Petitioner contended that Section 63, which provides for imprisonment from 6 months to 3 years, falls within the third category under Part II of the First Schedule to the Code of Criminal Procedure, 1973, which states that offences punishable with imprisonment less than three years are non-cognizable and bailable.

The Respondents countered that the offence falls within the second category, which provides that offences punishable with imprisonment for 3 or more years and up to 7 years, are cognizable and non-bailable.

The Delhi High Court, while considering the punishment under Section 63, observed that “the maximum term of sentence that can be imposed must be considered”, which in the instant case being three years, would render the offence cognizable. However, inspite of this obiter, the Court relied on the decisions in Avinash Bhosale v. Union of India, (Supreme Court, 2007) and State Govt. of NCT of Delhi v. Naresh Kumar Garg (Delhi High Court, 2013), according to which an offence punishable by imprisonment of upto 3 years is non-cognizable and bailable.

Thus, the Court, while admitting that the Supreme Court “has not indicated any reasons for its conclusion/observation” in Avinash Bhosale, held that the offence under Section 63 of the Copyright Act was non-cognizable, thereby quashing the FIR registered against the Plaintiff.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Opposing a trademark application cannot constitute a “groundless threat” under the Trade Marks Act

In the matter of The Chartered Institute of Taxation vs. Institute of Chartered Tax Advisers of India Ltd. [CS(COMM) No. 448/2019], the Delhi High Court vide its order dated August 22, 2019, dismissed The Chartered Institute of Taxation’s (hereinafter ‘CIT’) plaint seeking permanent injunction, damages and declaration for groundless threats under Section 142 of Trade Marks Act, 1999. The relief was sought against, inter alia,the Defendant’s opposition against CIT’s trademark application, allegedly filed on frivolous, misleading and concocted grounds. The Court held that the Defendant could not be injuncted from filing oppositions, as that would impede the Defendant’s access to justice.

CIT is a professional body based in the UK that offers two renowned professional taxation qualifications viz. “Advanced Diploma in International Taxation” (hereinafter ‘ADIT’) and “Chartered Tax Adviser” (hereinafter ‘CTA’). The Defendant, viz. the Institute of Chartered Tax Advisers of India Ltd. (hereinafter ‘ICTAIL’) owns registrations for the marks ‘CTA (Logo)’ and ‘CHARTERED TAX ADVISER’ in India. On the basis of these marks, ICTAIL had opposed CIT’s application for the mark ADIT in class 41.

In the opposition, ICTAIL also alleged (inter alia) that the Plaintiff’s use of the mark ADIT would amount to passing off and infringement of ICTAIL’s device mark for CTA. CIT argued that in view of the evident dissimilarity between the marks, ICTAIL’s opposition was baseless and meritless, thereby constituting a “groundless threat” under Section 142.

The Court, while dismissing the plaint, held that “that anyone having a right that is a legally protected interest and complaining of its infringement and seeking relief through Court, must have an uninhindered, uninterrupted access to law Courts and that Courts ordinarily will not impede access to Courts”. The Court also clarified that Section 142 provides a remedy against mischievous acts by means of circulars, advertisements or otherwise, threatening a person with an action for infringement of trademarks. It was held that “…oppositions filed in statutory proceedings cannot be equated with circulars or advertisement…The intent of the legislature in drafting Section 142…appears to be, to provide remedy against a person, who without instituting legal proceedings, metes out threats of legal proceedings…The Scheme of the Section is, that adjudication of rights asserted should be through legal proceedings and not in public arena”.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Substantial resemblance sufficient to constitute copyright infringement of cinematograph work

In MRF Limited v. Metro Tyres Limited [CS(COMM) 753/2017], the Delhi High Court vide its interim order dated July 1, 2019, dismissed MRF Limited’s application to restrain Metro Tyres Limited from airing an allegedly similar advertisement. While holding that substantial resemblance would be sufficient to constitute copyright infringement, the Court held that the Defendant’s advertisement was “neither substantially nor materially or essentially similar” to the Plaintiff’s advertisement.

The Plaintiff averred that the Defendant’s advertisement imitated the sequencing, form, treatment and expression of Plaintiff’s advertisement. Relying on R.G. Anand v M/s Deluxe Films and Ors. (1978) 4 SCC 118, the Plaintiff argued that the test for copyright infringement of a cinematograph film is by way of the overall impression of an average viewer, and not a minute dissection that underscores differences.

The Defendant submitted that a prerequisite to establish copyright infringement of a cinematograph film is that the allegedly infringing work be made by a process of duplication. The Defendant added that ‘mere resemblance’ to the original work would not constitute copyright infringement. The Defendant further contended that the judgment in R.G. Anand was inapplicable, as it pertained only to literary works.

Holding that the R.G. Anand decision was not confined to literary works, the Court concluded that “‘to make a copy of the film’ does not mean just to make a physical copy of the film by a process of duplication, but it also refers to another film which substantially, fundamentally, essentially and materially resembles/reproduces the original film” and added that Courts would need to “compare “the substance, the foundation, the kernel” of the two advertisements to consider whether one was “by and large a copy” of the other and whether an average viewer would get an unmistakable impression that one work was a copy of the other”.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

  • Non Solicitation
  • Data Privacy & Protection
  • Conflict of Interest Policy
  • Data & Document Retention Practice
  • Firm Management Policy
  • Liability
  • Disclaimer
  • Privilege
  • Copyright
  • Billing Policy