In the matter of M/s Golden Tobie Pvt. Ltd. v. M/s Golden Tobacco Ltd., a [I.A. No. 6080/ 2021 in CS(COMM) 178/2021], the High Court of Delhi [J Nath, J.] by judgement dated June 04, 2021, held that disputes related to Trademark License Agreement are arbitrable because the rights under a Trademark License Agreement emanate from a contract and is not a statutory right.

The Court in this case took note of Section 8 of the Arbitration and Conciliation Act, 1996, which gives “Power to refer parties to arbitration where there is an arbitration agreement” and Schedule-3 of the agreement, which mentions the exclusive brands of the Defendant, i.e., “Golden’s Gold Flake, Golden Classic, Taj Chhap, Panama and Chancellor”. The underlying question in this case is seen to be whether the Trademark License Agreement is arbitrable, or in other words, whether the dispute is prima facie arbitrable under a valid arbitration agreement.

The Plaintiff entered into a Master Long Term Supply Agreement with the Defendant by which the Defendant on an exclusive basis had supplied to the Plaintiff, the exclusive brands of the Defendant. The Defendant claims that the Plaintiff specifically sought to enforce the Trademark license Agreement and the Assignment Agreement through a suit, despite there being an arbitration clause in the agreement for mutually resolving their disagreements.

The Plaintiff contended the termination of the assignment and license of trademarks in favor of the Plaintiff is the issue and since the issue touched upon the validity of trademarks, it was outside the scope of arbitration. The Defendant has, on the other hand argued that the question raised by the Plaintiff in the suit was an arbitrable dispute and was liable to be referred to arbitration in view of the arbitration agreement between the parties.

The Court allowed for arbitration as the essential infraction as allegedly committed by the Defendant was not under the provisions of the Act but under the provisions of the agreements in question. The Court while allowing the application, referred the parties to the Arbitration as per the Arbitration Agreement. The Court further held that “the right that is asserted by the Plaintiff is not a right that emanates from the Trademark Act but a right that emanates from the Agreement… The assignment of trademark is by a contract and not by a statutory act. It does not involve any exercise of sovereign functions of the State. It cannot be said that the disputes are not arbitrable.”

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 Natures Essence Pvt Ltd v Protogreen Solutions Pvt Ltd & Ors [2021 SCC OnLine Del 1538] the High Court of Delhi [C. Hari Shankar, J]  by its judgement dated March 9, 2021, held that any claim of monopoly over a generic word component is irrelevant to the test of deceptive similarity of marks. 

Section 29 (1) of the Trade Marks Act, 1999 provides –“A registered trademark is infringed by…a mark which is identical with, or deceptively similar to, the trade mark...” The case is authority for the proposition that the entire mark against the entire mark test of deceptive similarity for the purposes of this Section is not compromised by the presence of a generic word as component or part of the trade mark. This is notable given the concern of the statute with the limitation on the scope of right accorded to a part of a mark upon registration – Section 17 provides that “(1) When a trade mark consists of several matters, its registration shall confer…exclusive right to the use of the trade mark taken as a whole. (2) Notwithstanding anything contained in sub-section (1), when a trade mark— … (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.” 

The defendant had submitted that “…it is asserted that the expression “NATURE” is publici juris” when it is used in the context of beauty and cosmetics products and about 1100 trademarks with the word “NATURE” are registered in the Registrar of Trademarks and that “…the plaintiff cannot claim any exclusive monopoly over the word “NATURE” or “NATURE’S”. The plaintiff had contended  that the expression “NATURE’S” and “NATURE’S ESSENCE” and any goods or products, in the market, sold using brands containing the word “NATURE’S” and “NATURE’S ESSENCE”, are necessarily associated with the plaintiff alone and not with anyone else. Hence,  the defendant’s mark “NATURE’S TATTVA” infringes.

The court ruled in favour of the plaintiff saying it would be totally antithetical to all canons of trademark jurisprudence to question the validity of the plaintiff’s marks because “Nature” is a descriptive word as “once “Nature’s” is used in conjunction with “Inc.”, or “Essence”, it assumes a definite and distinct – as well as distinctive – connotation and meaning, which is totally different from “Nature” per se.”

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In the matter of Confederation of Real Estate Developers Association of India v. Union of India & Ors. [W.P.(C) No. 3119 of 2020], a Single Judge [Rajesh Shankar, J] of the High Court of Jharkhand vide judgement dated May 13, 2021 has refused to set aside a decision of the National Green Tribunal (“NGT”) whereby construction activities undertaken without obtaining a prior environmental clearance (“EC”) were ordered to be stopped.

According to the Environment Impact Assessment Notification, 2006 (“EIA Notification, 2006”), prior EC is required for initiating any construction activity listed in the schedule of the notification. On March 14, 2017, the government issued a notification which gave defaulters a window of 6 months to obtain an ex-post facto EC. By a subsequent notification, the power of conducting appraisal of projects was delegated to the States. Thereafter, the validity of the notification dated March 14, 2017 was challenged, and eventually upheld. Aggrieved by this, one R.K. Singh filed an application before the NGT assailing the non-compliance of the EIA Notification, 2006. Consequently, the NGT ordered that all construction activities being run without having a prior EC be stopped.

Challenging the aforesaid order, the Petitioner argued that it could not obtain an EC due to non-existence of state level appraising authority. The Petitioner further argued that shutting down of its construction activities would lead to loss of livelihood of 3 lakh construction workers, 15 lakh dependent members and 200 MSME industries, hence the court should take a balanced approach by applying the doctrine of sustainable development between ecology and development.

The Respondents, on the other hand, argued that as per Clause 4 of the EIA Notification, 2006, which states ‘In the absence of a duly constituted SEIAA…shall be considered at Central Level…’ , the Petitioner should have approached the appraising authority at the central level for obtaining an EC.

Accepting the Respondent’s contentions, the Court observed, “…even if it is assumed that the projects of the members of the petitioner had started during the period when the SEIAA, Jharkhand was not functioning, the petitioner cannot claim the benefit of the said fact, since its members could have applied before the EAC at Central level for grant of EC and thus the contention of the…petitioner that the EC could not be obtained by the members of the petitioner due to non-functioning of SEIAA, Jharkhand at the relevant time, has no leg to stand.”

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 NBU Bearings Ltd & Anr. v. Union of India & Ors. [WP(L) No. 3371 of 2021], a Divison Bench [Ujjal Bhuyan, Milind N. Jadhav, JJ.] of the High Court of Bombay by its judgment dated March 12, 2021 held that, in the absence of any interim order from the competent court, the custom authorities cannot suspend clearance to detain and hold goods beyond the initial period of 14 days.  

Section 53(4) of the Copyright Act, 1957 provides – “The Customs Officer shall release the goods, and they shall not longer be treated as prohibited goods, if the person who gave notice under sub-section (1) does not produce any order from a court having jurisdiction as to the temporary or permanent disposal of such goods within fourteen days from the date of their detention.” (emphasis supplied). Rule 7 (1) of Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 “Where the…Customs…has a reason to believe that the imported goods are suspected to be goods infringing intellectual property rights, he shall suspend the clearance of the goods.”(emphasis supplied). The underlying question in this case is seen to be whether the latter statutory provision can prevail over the former.

The importer-Petitioner imported bearings under the brand ‘TR’. The complainant had raised a system alert with the custom authorities alleging that the imported goods are suspected to be infringing its copyright. Upon the custom authorities suspending clearance, the importer submitted registration of the trademark ‘TR’ in Class 7.

The importer contended that the custom authorities have no authority to suspend clearance of the imported goods beyond the initial period, in absence of the complainant submitting an order of a competent Court. The custom authorities, however, contended that the complainant has been granted registration of the ‘TR’ artistic work under the Customs Act thereby constituting the complainant as the ‘right holder’ and that therefore they have followed due process.

The Court ruled in favour of the Importer and held that “In the absence of any interim order…from the civil court from being placed on record … it will therefore not be appropriate for …to withhold / detain the consignments imported …beyond the prescribed period of 14 days…Merely because the owner of the work / mark deposits the requisite amount of security with the customs department, the customs officer cannot treat the imported goods as prohibited…”. 

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 Piyush Subhashbhai Ranipa v. State of Maharashtra [2021 SCC OnLine Bom 350], a single judge [Sarang V. Kotwal, J.] of the High Court of Judicature at Bombay vide an order dated February 26^th 2021, held that offences under Section 63 of Copyright Act, 1957 and Section 103 of Trade Marks Act, 1999 are cognizable and non-bailable.

In the Part II of Schedule I of the Code of Criminal Procedure, 1973 making classification of offences against other laws, it is provided that the offences which are punishable with imprisonment for 3 years and upwards, but not more than 7 years, are cognizable and non-bailable while offences which are punishable with imprisonment for less than 3 years are non-cognizable and bailable. Both Section 63 of the Copyright Act and Section 103 of the Trade Marks Act provide for offences which are punishable with imprisonment for a term which may extend to three years.

The Applicant submitted that the schedule I of CrPC can be applied to Acts other than the Indian Penal Code, keeping in mind the object and reasons of that particular Act, and therefore looking at the scheme of Copyright Act and Trade Marks Act, the offences are bailable, falling within the third category of Part II of Schedule I.

The Respondent State contended that the offences in which punishment can extend upto 3 years of imprisonment are non-bailable offences and fall within the second category of Part II of Schedule I, as this has already been held by various courts in context of other statutes.

The Court after analyzing the provisions of CrPC and few relevant decisions of various courts on the said issue observed that “Bare reading of this Part II of the Schedule I of CrPC shows that, if the offences in the other laws are punishable with imprisonment for three years and upwards then the offences are cognizable and non-bailable. Wherever it is possible to impose the punishment extending to three years, this category would apply, because in such offences it is possible to impose sentence of exact three years. In such cases offences would be non-bailable.” Therefore, the Court concluded that the offences under Section 63 of the Copyright Act and Section 103 of Trade Marks Act are cognizable and non-bailable in nature and hence, the anticipatory bail application, although ultimately rejected on facts, was held maintainable.

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