In the matter of ITC Limited vs CG Foods (India) Private Limited [O.S.No.177/2021], a Division Bench [Aravind Kumar, J. and Pradeep Kumar Yerur, J.] of the High Court of Karnataka dismissed an appeal against the lower court’s order denying temporary injunction to the Plaintiff and held that merely showing some ‘similarity’ in the non-essential features of rival marks would not suffice to constitute infringement or initiate a passing off action.

Section 29(2) of the Trade Mark Act, 1999 states: “A registered trade mark is infringed by a person who…uses in the course of trade, a mark which because of— (a) its identity with the registered trade mark … by such registered trade mark; or (b) its similarity to the registered trade mark … by such registered trade mark; or (c) its identity with the registered trade … is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.” The question arises whether ‘similarities’ and not dissimilarities is the relevant test for likelihood of deception and would ‘similarity’ in unessential features amount to mere copying without the strength to deceive?

The Plaintiff claimed that the Defendant had tarnished their goodwill and reputation by incorporating a similar colour scheme of red and orange in packaging its products. They further claimed that the Defendant’s product was deceptively similar to their product and the Defendant’s actions constituted passing-off and infringement of the Plaintiff’s copyright in the product’s trade dress. The Plaintiff contended that extent of similarity of the Defendant’s products is sufficient to ‘deceive’ the relevant class of consumers. The Defendant denied all the allegations of passing-off and infringement.

The Court in the present case observed that “Similarity in essential features is what amounts to misrepresentation as it deceives or is likely to deceive the buyer into thinking he has purchased what he wanted, when in reality, he has purchased a different product. Similarity in unessential features, howsoever strong, amounts to mere copying without the strength to deceive. The law of passing off does not concern itself with allegations of ‘unfair copying’ of this kind – it is interested to protect plaintiff only against material misrepresentation’ of his goods.”

Therefore, the Court concluded that there is no infringement on behalf of the Defendant and stated that “the plaintiff cannot demonstrate that substantial features of the plaintiff’s get up has been reproduced in the defendant’s get up, then merely showing similarity or identity in other non-essential features will be of no consequence.”

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.

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In the matter of Yennes Infotech (P) Ltd. v. The Managing Director, eNoah Solution Pvt. Ltd. and Ors. [O.S.A. No. 31/2020], the division bench [Sanjib Banerjee, C.J. and P.D. Audikesavalu, J.] of the High Court of Madras (the “Court”) vide judgement dated August 13, 2021, held that a copyright infringement suit cannot subsist against a licensee for non-payment of consideration.

Section 30 of the Copyright Act, 1957 (the “Act”) states that “The owner of the copyright in any existing work of the prospective owner of the copyright in any future work may grant any interest in the right by licence in [writing by him] or by his duly authorised agent.” The question that arises is whether the ‘owner of a copyright’ can rescind the ‘grant of any interest in right by license’ on account of unpaid licensor’s right.

The Appellant-Plaintiff customised a computer programme (the “work”) for the Respondents-Defendants. However, the Respondents-Defendants failed to pay the balance consideration to the Appellant-Plaintiff. As a consequence, the Appellant-Plaintiff brought a suit for copyright infringement against the Respondents-Defendants. The Appellant-Plaintiff had approached the Court in an appeal against the order of the Trial Court rejecting the plaint.

The Appellant-Plaintiff contended before the Court that it is the owner of the copyright in the work and sought injunction against the Respondents-Defendants on account of infringement.

On the other hand, the Respondents-Defendants contended that there exists a ‘contract of service’ between the parties. In light of such contract of service, the Respondents-Defendants claimed sole ownership over the work which would preclude the Appellant-Plaintiff from bringing any action of copyright infringement.

The Court observed that the contract between the parties was one of a copyright license wherein the Appellant-Plaintiff had granted a valid license to the Respondents-Defendants for using the work. Further, the Court applied Section 30 of the Act and held that “Again, like in the case of assignment of copyright, a licence when granted cannot be taken back by the owner of the copyright unless it is surrendered or it lapses for non-use by operation of law. The unpaid licensor’s rights lie in a claim for money.” Therefore, the Court upheld the order of the Trial Court in rejecting the plaint and held that the Appellant-Plaintiff could not have claimed any relief for copyright infringement against the Respondents-Defendants.

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.

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In a common (joint) appeal against the two Orders of the High Court of Delhi refusing AstraZeneca’s interim injunction applications against 9 Defendants in different lawsuits [AstraZeneca AB and Ors. v. Intas Pharmaceuticals Ltd. and Ors., FAO(OS) (COMM) – 139/2020, and 8 others], the division bench of the High Court of Delhi [Rajiv Sahai Endlaw, J. and Amit Bansal, J.], vide its Order dated July 20, 2021, dismissed the appeals while refusing the interim injunctions in all 9 matters and granted costs of Rs. 5,00,000/ against Plaintiff/Appellant in each suit. The Court held that one invention can be protected by only one patent.

Appellant’s patent IN 147, a genus patent, claiming a Markush structure, along with a disclosure of eighty examples. Dapagliflozin (DAPA), a compound used in anti-diabetic drugs, while covered under the Markush structure, was not specifically disclosed in the examples of IN 147. The term of IN 147 expired on October 2, 2020. Appellant’s patent IN 625, a species patent, which specifically claimed DAPA, is valid till May 15, 2023. In some of the suits, which were filed before October 2, AstraZeneca relied upon both the patents to allege infringement.

As per Section 10(5) of the Patents Act, 1970, “The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept…”. The underlying question, in this case, is whether there could be two patents with respect to the same invention.

Appellant contended that IN 147 bearing the Markush structure covered DAPA but did not disclose it and that DAPA was only explicitly claimed as a separate invention in IN 625. Hence, the Respondents could not manufacture it until its expiry, which is May 15, 2023. The Appellant asserted that merely because a particular compound falls within the scope of a particular claim, it does not amount to the said compound being disclosed with specificity. The Respondents argued that since it was the Appellant’s case that manufacture and sale of DAPA was infringement of IN 147, the Appellant was deemed to have admitted that DAPA was fully and particularly described in IN 147. Moreover, IN 625 was vulnerable to challenge, as it lacked inventive step, based on what was published and publicly known from IN 147.

While dismissing the Appeal, the Court opined that “with respect to one invention, there can be only one patent. The appellants/plaintiffs herein, however, while claiming one invention only i.e. DAPA, are claiming two patents with respect thereto, with infringement of both, by the respondent(s)/defendant(s). The same alone, in our view, strikes at the very root of the claim of the appellants/plaintiffs and disentitles the appellants/plaintiffs from any interim relief.” Further, the division bench acknowledged that a single formulation, such as DAPA, cannot be protected under two separate patents with distinct validity periods.

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.

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In the matter of Sony Corporation vs K. Selvamurthy [Com. O.S. No. 8464/2018], a single judge [Lathakumari M., J.] of the City Civil & Sessions Court at Bengaluru vide an order dated June 18, 2021, summarily dismissing a suit for permanent injunction, held that even a well-known registered trademark cannot inherently claim an absolute monopoly over the entire class of goods or services of its registration, implying that even within the same class, certain services and the manner of use in respect thereof may be so different that even an identical mark’s use may not unfairly benefit from or hurt the well-known mark. . 

Section 29(4), states: “A registered trademark is infringed by a person who…uses in the course of trade, a mark which— (a)is identical… to the registered trademark; and (b)is used in relation to… services which are not similar to those for which the trade mark is registered; and (c)the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark.” The question arises whether the use of an identical mark even for dissimilar services within the same class as that of the well-known trademark automatically amounts to taking ‘unfair advantage’ or being ‘detrimental to’ the latter’s distinctive character or repute? Or is it that the ‘unfair advantage’ or ‘detrimental to’ requirement cannot be presumed even in such a context and might in fact be lacking if the the services coupled with manner of use, that is to say the businesses, are sufficiently different. 

The plaintiff asserted the use of its well-known trademark “SONY”, registered under Class 39 covering transport, packaging and storage of goods, travel arrangement etc., by the defendant in its trade name and trading style “M/s SONY TOURS AND TRAVELS”, relating to its transport and car rental business, constituted infringement. 

The defendant contended that operating an entirely different local business under its trade name neither takes unfair advantage nor causes detriment. 

The Court pointed out that “the nature and style of the business of the plaintiff and defendant are altogether different.” Noting the description of plaintiff’s business under Class 39 “…are nothing but service details associated with manufacture of goods.”, the Court stated “…impossible to imagine that an ordinary man would link the electronic goods of the plaintiff to the travel business of the defendant”. Hence, “the plaintiff corporation failed to establish that the defendant has adopted the trade mark to take unfair advantage…”.

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.

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