Delhi District Court Imposes Punitive Damages Against Counterfeiter

In the matter of Adidas India Marketing Pvt. Ltd vs Kumar Garments [TM No. 23/2018], the Delhi District Court, videOrder dated August 27, 2020, granted an ex-parte injunction and imposed punitive damages amounting to Rs. 5,00,000/-, after finding the Defendant to be infringing the Plaintiff’s “ADIDAS” marks.

The Plaintiff claims to be the registered proprietor and user of the “ADIDAS” marks (word and logo) in India, in relation to, inter alia, sportswear. As claimed by the Plaintiff, in January 2018, it became aware of the Defendant and its wholesale business of stocking, distributing and selling of counterfeit apparels bearing the falsified “ADIDAS” marks (word and/or logo), and other marks deceptively similar to the Plaintiff’s “ADIDAS” marks.

The instant suit was filed by the Plaintiff alleging, inter alia, passing off and infringement of its marks “ADIDAS” (word and logo). The Plaintiff placed on record several documents in support of its claims, including photographs of the counterfeited product(s), and sought a permanent injunction, rendition of accounts as well as damages against the Defendant.

During the course of trial, on two separate occasions, Orders were passed imposing costs amounting to Rs. 20,000/- on the Defendant. The Defendant did not comply with these Orders. Following the non-compliance, the suit proceeded ex-parte.

After due consideration of the evidence adduced by the Plaintiff, the Court imposed punitive damages amounting to Rs. 5,00,000/-, and also granted an injunction against the Defendant. Placing reliance on the decisions in Times Incorporated Vs. Lokesh Srivasta & Anr. [2005 (30) PTC 3] and Microsoft Corporation Vs. Rajendera Pawar & Anr., [2008 (36) PTC 697], the Court held  “…though the damages as claimed by the plaintiff cannot be granted in absence of any substantive evidence to the contrary…punitive damages should be granted in favour of plaintiff. Therefore, in my considered opinion an amount of Rs.5,00,000/­…is granted to the plaintiff in the form of punitive damages…along with interest @ 12% per annum during the pendency of the suit till its realization alongwith costs of the suit… Defendants, their its associates and agents are restrained from using the mark “adidas” and its logo and other registered trade­marks and copyright of 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.

Injunction granted against use of ‘CORONIL’ in relation to immunity boosting tablets

In the matter of M/s. Arudra Engineers Private Limited v. M/s. Pathanjali Ayurved Limited & Anr. [O.A. No. 258 of 2020, A. Nos. 1532 and 1533 of 2020 in C.S. No. 163 of 2020], the Madras High Court, vide its order dated August 6, 2020, granted an interim injunction restraining the Defendants from using the mark ‘CORONIL’ in relation to immunity boosting tablets for cold, cough and fever.

The Plaintiff is the registered proprietor of the marks ‘CORONIL-92 B’ and ‘CORONIL-213 SPL’ since 1993, in relation to chemical cleaning agents used for preventing corrosion of machinery. The Defendant No. 2 (Divya Yog Mandir Trust) is the applicant for the mark CORONIL in relation to tablets which were manufactured and initially marketed by Defendant No. 1 as the cure for COVID-19. Upon seeing such marketing, the Plaintiff filed the instant suit for infringement of its CORONIL marks under Section 29(4) of the Trade Marks Act, 1999. This Section provides that a registered trademark having a reputation is infringed by an identical or similar mark being used in respect of dissimilar goods and services and use of which “without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark” (emphasis supplied). The plaintiff was granted an ex parte interim injunction, which the Defendants subsequently applied to have suspended and vacated.

The Plaintiff argued that owing to lack of evidence of efficacy of the tablets in treating/preventing COVID-19, the Defendants lacked “due cause” for adoption and use of ‘CORONIL’, which was resulting in dilution of the Plaintiff’s mark. The Defendants contended that there was no infringement as their goods were completely dissimilar to the Plaintiff’s goods and their adoption of the mark CORONIL was justified as it is an immunity booster against the Coronavirus.

The Court held that in the absence of evidence of efficacy against COVID-19, the Defendants’ adoption and use of CORONIL was without “due cause” under Section 29(4)(c) of the Act. Further, while confirming the interim injunction, the Court recognized the Plaintiff’s reputation and rights in the mark and held:“It is also detrimental to the repute of the registered trademark Coronil of the plaintiff since…the general public might question whether the trademark ‘Coronil’ of the plaintiff would also not prevent corrosion by drawing the analogy of the ‘Coronil’ of the defendants, which does not cure Coronavirus…”.

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.

Defendant ordered to give prior notice of initiation of legal proceedings in a suit in which the Plaintiff alleged groundless threats by the Defendant

In the matter of Hindustan Unilever Limited v. Emami Limited [LD/VC/IA/1/2020 in LD/VC/144/2020], in which the Plaintiff alleged groundless threats by the Defendant, the Bombay High Court granted ad-interim relief to the Plaintiff vide ex-parte Order dated July 6, 2020. As per the Order, the Defendant is required to give at least 7 clear working days’ notice to the Plaintiff before initiating legal proceedings against Plaintiff’s use of the trademark ‘GLOW & HANDSOME’.

The Plaintiff claims to be the proprietor of the trademarks ‘Fair & Lovely’ and ‘Men’s Fair & Lovely’ for fairness creams. Further, the Plaintiff claims to have made a formal announcement on July 2, 2020, regarding re-branding of the aforementioned trademarks as ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME’ respectively, and also claims to have had filed trademark applications for the rebranded marks (in word and stylized forms) in 2018 and 2020.

Following the rebranding announcement, the Defendant allegedly released statements in newspapers, threatening to initiate legal action against the Plaintiff for violating its alleged rights in ‘Emami Glow and Handsome’.

The Plaintiff filed the instant suit, contending that the Defendant’s statements amount to groundless threats within the meaning of Section 142 of the Trade Marks Act, 1999. The Plaintiff sought the limited ad-interim relief of a prior notice from the Defendant, if the Defendant were to initiate any proceedings against the Plaintiff, as threatened.

Considering the evidence on record, the Court was of the prima facie view that the Plaintiff is the prior adopter of the mark ‘GLOW & HANDSOME’. Granting the limited ad-interim relief to the Plaintiff, the Court observed: “…The statements made by the Defendant…do amount to a threat…the Plaintiff is pressing for a limited relief that the Defendant should give at least 7 clear days prior written notice to the Plaintiff before initiating any legal proceedings in any court or claiming any interim or ad-interim reliefs against the Plaintiff as threatened in the statements issued / made on behalf of the Defendant against the Plaintiff’s use of the trade mark ‘GLOW & HANDSOME’. Considering the facts and circumstances of the present case, I believe that no harm or prejudice would be caused to the Defendant if the said limited relief is granted.”

An Appeal to the Order (granting the ad-interim relief) was preferred by the Defendant, but the same was dismissed by the Division Bench.

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.

Dynamic injunctions against digital piracy in India

The rapid growth in technology has created a unique landscape for creation, exchange and consumption of content. While it has made communication more amplified and convenient, it has also significantly compounded the existing issues faced by Intellectual Property (IP) holders with respect to piracy of their work. As opposed to physical piracy, digital piracy benefits from potential shields of anonymity, non-traceability and a quicker bounce-back ability. Even when websites hosting and sharing pirated content are blocked, they often resurface as mirror/alphanumeric websites having the same infringing content. The concept of dynamic injunctions has been developed with the aim of addressing this issue.

What are Dynamic Injunctions?

Dynamic Injunctions are those which enable the plaintiff(s) to use the original injunction order (granted against the primary infringing website) to block mirror/redirect sites providing the same infringing content.

The framework for dynamic injunctions was first devised comprehensively by the High Court of Singapore in Disney Enterprise v. M1 Ltd. [(2018) SGHC 206] to address the issue of flagrant infringement on digital platforms. The Court observed that it “…has the jurisdiction to issue a dynamic injunction given that such an injunction constitutes “reasonable steps to disable access to the flagrantly infringing online location”. This is because…the dynamic injunction merely blocks new means of accessing the same infringing websites, rather than blocking new infringing websites that have not been included in the main injunction.”

In India, a dynamic injunction was first granted in the case of UTV Software Communications Ltd. & Ors. v. 1337x.to and Ors. [2019 (78) PTC 375 (Del)]. The Plaintiffs had sought website blocking injunctions against the Defendant websites which were hosting infringing content. The Plaintiffs had also impleaded the relevant Internet Service Providers (ISPs) as Defendants to implement the blocking orders. The Delhi High Courtanalysed whether the Defendant websites were “rogue websites” such as would warrant website blocking injunctions.

Factors for Determining Rogue Websites

The Court laid down the following factors to be considered while determining whether a website is a rogue website:

“a. whether the primary purpose of the website is to commit or facilitate copyright infringement;

b. the flagrancy of the infringement, or the flagrancy of the facilitation of the infringement;

c. Whether the detail of the registrant is masked and no personal or traceable detail is available either of the Registrant or of the user.

d. Whether there is silence or inaction by such website after receipt of take down notices pertaining to copyright infringement.

e. Whether the online location makes available or contains directories, indexes or categories of the means to infringe, or facilitate an infringement of, copyright;

f. Whether the owner or operator of the online location demonstrates a disregard for copyright generally;

g. Whether access to the online location has been disabled by orders from any court of another country or territory on the ground of or related to copyright infringement;

h. whether the website contains guides or instructions to circumvent measures, or any order of any court, that disables access to the website on the ground of or related to copyright infringement; and

i. the volume of traffic at or frequency of access to the website;

j. Any other relevant matter.”

Based on the above factors, the Court found the Defendant websites to be rogue and granted blocking injunctions against them. However, while evaluating how to effectively deal with the issue of the websites resurfacing as mirror/alphanumeric sites after being blocked, the Court relied on the Singapore HC’s Disney Enterprise judgment and granted a dynamic injunction.

The mechanism allows Plaintiffs to implead additional mirror/alphanumerical websites (through an application under Order I, Rule 10 of the CPC) with an Affidavit to the Joint Registrar of the Court proving that the impleaded websites are simply mirrors of the injuncted websites, providing the same content. The Joint Registrar may then order ISPs to block the impleaded websites.

Conclusion

The decision in UTV Software has introduced a strong online IP enforcement mechanism in India, in the form of dynamic injunctions and laid down comprehensive factors for determination of rogue websites. The above decision has been relied upon by the Delhi High Court in multiple copyright infringement suits, most recently in Disney Enterprises, Inc. & Ors. v. rlsbb.unblocked.ltda & Ors. [IA No. 14909/2019 in CS(COMM) 594/2019]where a dynamic injunction was granted against rogue websites, following the same framework as UTV Software. Since dynamic injunction is a new enforcement mechanism in Indian jurisprudence, its effectiveness and other implications in varying cases remain to be seen.

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 grants another dynamic injunction against unauthorized streaming websites

In the matter of Disney Enterprises, Inc. & Ors. v. rlsbb.unblocked.ltda & Ors. [IA No. 14909/2019 in CS(COMM) 594/2019], the Delhi High Court (V. Kameswar Rao, J), vide its Order dated March 12, 2020, granted a dynamic permanent injunction against the impleaded websites restraining them from, inter alia, hosting, streaming on their websites the Plaintiff’s copyrighted works.  

The Plaintiffs are global entertainment companies engaged in the creation, production and distribution of motion pictures. The Defendants (Nos. 1-32) are operators of websites hosting, communicating, and making available for download (without authorization), the Plaintiffs’ copyright content. In the interest of ensuring effective implementation, the Plaintiffs also impleaded the relevant Internet Service Providers (ISPs), the Department of Telecommunications and Ministry of Electronics and Information Technology as Defendants. The instant suit for copyright infringement was filed seeking permanent injunction against the operators of the “rogue” websites (and their mirrors/redirects/alphanumericals), and an Order calling upon the ISPs to block access to the said websites.

The Plaintiffs relied on the ruling in UTV Software Communication Ltd. And Ors. v. 1337X.to and Ors. (Delhi High Court, 2019), wherein the Delhi High Court had labelled such unauthorized streaming websites as “rogue” websites and granted a dynamic injunction against them, enabling the Plaintiffs to have any mirrors/redirects/alphanumericals of the websites blocked at any time by using the Court order and submitting sufficient evidence.

Considering the evidence and the factors laid down in UTV Software, viz. primary purpose of the websites, masked & untraceable details of the registrants, inaction despite notices, etc., the Court identified the Defendant websites as “rogue” and granted a dynamic permanent injunction, holding that “…as held by this court in UTV Software Communication Ltd. (supra), in order for this court to be freed from constant monitoring and adjudicating the issues of mirror/redirect/alphanumeric websites it is directed that as and when the Plaintiffs file an application under Order I Rule 10 for impleadment of such websites, Plaintiffs shall file an affidavit confirming that the newly impleaded website is mirror/redirect/alphanumeric website with sufficient supporting evidence. Such application shall be listed before the Joint Registrar, who on being satisfied with the material placed on record, shall issue directions to the ISPs to disable access in India to such mirror/redirect/alphanumeric websites.”

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.

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