In the matter of the Indian Performing Right Society vs Entertainment Network and others [CS (OS) 666/2006], a single Judge [ Hon’ble Rajiv Sahai Endlaw] of the High Court of Delhi vide an order dated January 4^th  2020, held that royalties for  underlying works are not payable when utilized in sound recordings.

The Plaintiff  (IPRS) contended that by virtue of being the exclusive owner of the public performance right of the literary and musical works in dispute, they are authorized to license the public performing rights of literary and musical work created by its members. Further, as it is the owner who exclusively enjoys the right as set out in Section 14(a) of the Indian Copyright Act 1947, broadcasting organizations that play music belonging to IPRS infringe on this right unless a license has been obtained. Thus, the Plaintiff argued that the broadcast of music by the Defendant in three new cities, without procuring a license, amounts to infringement of the public performance rights of the Plaintiff.

The Defendants contended that no separate license fee is payable with respect to the copyright vested in the underlying literary and musical works, as they had obtained a license from Phonographic Performance Limited, which is the assignee of the IP rights related to the songs broadcast on its radio channels. The Plaintiff in turn has claimed to be the only assignee of the rights in the literary and music compositions of the songs. The counsel for the Defendants argued that as per Section (y) of the Act, copyrighted works are considered as mutually exclusive. Accordingly, a sound recording is an independent work consisting of separate and independent copyrights and thus the Defendants contended that the licenses for broadcasting purposes of the sound recording have been obtained.

The contention of IPRS that there exists a copyright in the sound recording and the underlying musical and lyrical work, is contrary to law. Accepting this argument, the Delhi High Court held that utilization of a sound recording does not amount to utilization of its underlying works, thereby there exists no requirement for obtaining permission from the creators of the underlying works. Neither is any royalty owed to them. The court stated that “‘It is the owner of the sound recording who transforms the literary work which otherwise is a mere collection of words into a sound, capable of phonetic pleasure and who gives the composition of music a sound of various musical instruments”. The Plaintiff suit was thus 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.

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In the matter of Aktiebolaget Volvo & Ors v.Vaishali Travels & Anr [CS(COMM)6/2021], a Single Judge [J.R. Midha, J.] of the High Court of Delhi issued an ex-parte ad interim order dated January 11, 2021, restraining Defendants from using Plaintiff No. 1’s trademark VOLVO in relation to its services and as a part of domain name, meta-tags, email ID, third party listings, references in social media etc.

Plaintiff No. 1 (viz. Aktiebolaget Volvo) is an international automotive and transport vehicle group, providing a diverse range of goods and services related to transportation. The Plaintiffs instituted the instant suit for infringement, passing off and tarnishment of trademark VOLVO after coming across Defendant’s use of an identical mark VOLVO in respect of operation of bus travel services, online bus ticketing and live tracking services. The Plaintiffs’ main contention was that it was aggrieved by misappropriation caused by Defendant’s use of the mark VOLVO as a part of its domain name, online trading name, email id and meta-tags on the source code of the website. The Plaintiffs submitted that Plaintiff No. 1 adopted the mark VOLVO as its trademark/corporate name in May 1995 and used the same in relation to manufacture and sale of goods. Plaintiffs claimed that pursuant to Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd. of Gujarat, 1998 PTC (18) 47 the mark VOLVO has been declared as a well-known mark and that Plaintiff No. 1’s mark deserves to be protected. 

The Court ruled in favor of Plaintiffs and held that “The Defendants…are hereby restrained from using the Plaintiffs’ name/trademark ‘VOLVO and/or any name/mark confusingly or deceptively similar thereto, in relation to online booking of bus tickets, live tracking of buses, telephonic booking of bus tickets or in relation to any other goods or services, in any manner, including…domain name…meta- tags associated with the impugned domain name, as a part of the email id…third party listings, references in social media and/or any representation made by the Defendants…amounting to infringement…and passing off…”

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 Re: Smuggling and illegal trading of endangered species of birds [WPA 10138 of 2020 With IA No.: CAN 1 of 2020], a Division Bench [Thottathil B. Radhakrishnan, CJ. and Arijit Banerjee, J.] of the High Court of Calcutta (“Court”), by its order dated December 8, 2020, prohibited capture of birds without mature flight feathers.

The Court, in its suo motu case, took note of the provisions of Prevention of Cruelty to Animals (Pet shop) Rules, 2018 (“Pet Shop Rules”) which prohibit sale of certain pet animals. The Court noted that ‘pet birds’ fall under the definition of ‘pet animal’ under Rule 2(1)(j) of the Pet Shop Rules. The Court further noted that from a conjoint reading of the Pet Shop Rules, it can be inferred that pet shops could be operated only for those pet animals whose ownership and trade is not prohibited under any other law. The Court pointed out that these provisions reinforce the constitutional and legislative command which prohibits unlawful capturing of birds.

In respect of protection of migratory birds, the Court observed that “The geographical territories or terrain from which the migratory birds may move would not at all be relevant to provide protective umbrella of the Constitution of India and the Statues falling under it for the succour to and management of the fauna which fly in of their own. This is how the provision of the Constitution will have to trickle down and operate”.

In view of the above, the Court observed that “The Pet Shop Rules, particularly the different clauses in sub-rule 2 of Rule 7 read with Rule 2 (1)(p) read with Clauses (a) & (c) of Section 2 of the Prevention of Cruelty to Animals Act, 1960, clearly establish that an offspring of a bird that has not attained the age at which it clearly acquires independent survival skills to meet its basic needs like food, warmth and safety and, further, birds without mature flight feathers cannot be captured for the purpose of trading in any form”. The Court also directed the state authorities to ensure compliance with laws dealing with prevention of cruelty to animals and birds, in particular, those birds whose capture and utilization is prohibited under the Pet Shop Rules

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 Ziprecruiter Inc. v. Manish Rawat [INDRP/1261], the Sole Arbitrator,  Harshvardhan Sancheti, vide Order dated October 5, 2020, transferred the domain name <ziprecruiters.in> to the Complainant, under the .IN Domain Name Dispute Resolution Policy (INDRP)

The Complainant claimed to be using the mark ZIPRECRUITER for providing recruitment services internationally. Although the mark was not registered in India, the Complainant claimed to be the owner of the domain names <ziprecruiter.in> and <ziprecruiter.co.in>. The Complainant filed a complaint against the domain registration of <ziprecruiters.in> by the Respondent.  The Complainant contended that mere addition of the letter “s” to  the disputed domain name was sufficient to make a finding of confusing similarity with the Complainant’s mark. The Complainant also stated that the Respondent was unable to meet the criteria set for establishing legitimate interest and lack of bad faith. The Respondent declined to participate in the instant INDRP proceeding.

In the absence of evidence to show that the Respondent intended to sell the disputed domain name or prior pattern of such conduct, the Arbitrator was not entirely convinced that the registration of the disputed domain name was in bad faith. The Arbitrator expressed that if a mark is not registered in India, it does not necessarily foreclose an Indian business from using a similar mark. Further, commenting upon the Complainant’s mark, the Arbitrator noted that the mark comprised of common English words “ZIP” and “RECRUITER” and therefore stated, “Companies that choose to incorporate as common English words should be aware that such a choice does not license them to colonize the English language.” 

Notwithstanding above, the Arbitrator took a note of the fact that the Respondent had failed to participate in the instant INDRP proceeding. The Arbitrator stated “The Respondent has not participated in these proceedings, and produced no evidence that it has any legitimate interest with the domain name ZIPRECRUITERS whatsoever. As such, the inference is overwhelming that it was simply engaged in cyber-squatting and has decided to abandon the domain name in the face of this action.”

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In Delhivery Private Limited v. Treasure Vase Ventures Private Limited [CS (COMM) 217/2020, I.As. 5109/2020, 6523/2020 and 6572/2020], a Single Judge [V. Kameswar Rao, J.] of the High Court of Delhi vide an order dated October 12, 2020, allowed the Defendant’s prayer by vacating its earlier ex-parte interim order dated July 03, 2020, injuncting the Defendant from using the mark DELIVERE/ 

The Plaintiff alleged deceptive similarity of the Defendant’s mark

with its registered mark ‘DELHIVERY’. The Defendant argued, inter alia, that the Plaintiff’s mark is descriptive to the delivery business and a commonly used term in delivery trade. The Defendant placed reliance on various third-party registrations and use to substantiate its argument. The Plaintiff contended that the mark ‘DELHIVERY’ is a combination of two words ‘DELHI’ and ‘VERY’ and that it does not claim any right over the word ‘delivery’ used in a generic sense. The Plaintiff also contended that the mark ‘DELHIVERY’ at best can be termed as ‘Suggestive’.

While concluding the Plaintiff’s mark ‘DELHIVERY’ to be a phonetically a generic word, the court held that “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. If the registrations are wrongly granted when applied for in respect of a completely generic expression, the Court cannot ignore the generic nature of marks and confer monopoly on the same in favour of any party.” Further, denying the Plaintiff’s plea of ‘DELHIVERY’ being a suggestive mark the court held that, “the mark which is phonetically similar to the English word ‘delivery’ do not require any imagination, thought and perception, more so for delivery services….in the case in hand, the mark ‘DELHIVERY’ is immediately connectable to the delivery services and cannot be termed as a suggestive mark.”

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