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.

Export Of Patented Goods In Commercial Quantity Not Exempted Under S. 107A (Bolar Exemption)

In the matter of Bayer Intellectual Property GMBH v. Titan Laboratories Pvt. Ltd. [CS(COMM) 243/2020], the Delhi High Court, in its ex-parte order dated July 8, 2020, granted an ad-interim injunction restraining the Defendant from exporting the Plaintiff’s patented drug RIVAROXABAN in commercial quantities. The Court ruled that such use will amount to use in India and the Defendant cannot claim exemption under Section 107A of the Patents Act.

Plaintiff’s suit patent for the drug RIVAROXABAN is valid in India till November 11, 2020. Plaintiff filed the suit of patent infringement alleging that the Defendant is exporting the drug RIVAROXABAN in large quantities to Peruvian entities. Plaintiff alleged that at least two shipments of the drug RIVAROXABAN (under brand “MEZOSER-S”) have been exported from India to Peru, and that Peruvian entities have commenced commercial dealing of the drug RIVAROXABAN in Peru. The Plaintiff also submitted that the Defendant was in the business of contract manufacturing and while Defendant’s website lists a product “Rivaroxaban IR Tablets I0/25/20 mg”, it has not yet launched the product in India.

While this was an ex-parte order, the Court did consider the possibility of defence under Section 107A, which provides that the use of a patented invention solely for the purpose reasonably related to the development and submission of information required under any law for the time being in force in India, or in any other country, shall not be considered as infringement of patent rights.

The court, while granting the ad-interim injunction against the Defendant, observed that “…exports have been of finished RIVAROXABAN products and that too in commercial quantities, the defendant primarily is not exempted under Section 107-A of the Patents Act and use of the defendant while exporting will be considered as use in India”.

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.

No Copyright In An Idea: Re-affirmed

In the matter of Vinay Vats v. Fox Star Studios India Pvt. Ltd. & Anr. [I.A. 6351/2020 in CS(COMM) 291/2020], the Delhi High Court, vide order dated July 30, 2020, refused to grant an interim injunction in a copyright infringement suit, and re-affirmed that there can be no copyright in an “idea”. 

The Plaintiff claimed to be the author and the first copyright owner of a script titled “Tukkaa Fitt”, written in 2010-2011. As per the Plaintiff, a trailer of a film based on this script was released in March 2011. While the film allegedly completed production in 2012, it was never released.

The Defendants allegedly released a trailer of a film titled “Lootcase” on July 16, 2020. The Plaintiff asserted that the plot of the Defendants’ film (set to be released on July 31, 2020), as ascertained from the trailer, bears substantial similarities to the Plaintiff’s earlier script. Alleging copyright infringement, the Plaintiff sought an interim injunction against release of the Defendants’ film “Lootcase”.

The Defendants contended, inter alia, that there is no sustainable cause of action as the Plaintiff’s script was never in the public domain, and the movie based on the script was never released.

The Court, placing reliance on RG Anand v. M/s Delux Films, 1978 (4) SCC 118, rejected the Plaintiff’s interim application and held, “..there is no copyright in any idea, subject matter, theme or plot, and violation of copyright is confined to the form, manner and arrangement and the expression of the idea by the author of the copyright at work. In the present case, there is no earlier film, based on the script of the plaintiff, which could for the basis of a claim to copyright. The plaintiff…bases his cause of action on a script, which never came in the public domain, and public knowledge of which is being sought to be attributed on the basis of a trailer, for a film which never saw the light of day. The cause of action, on the basis whereof the plaintiff premises his case, therefore, essentially remained inchoate…It is prima facie questionable…whether any claim of copyright can be laid by the present plaintiff at all, in such circumstances..

The Court further observed that, prima facie, the Plaintiff has nothing to lay claim to any such ‘novelty’ in its script, as could be said to have been filched by the 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.

Copyright: ALG India Law Offices LLP.

A Descriptive Part Of Even A Registered Mark Cannot Acquire Distinctiveness Through Use Of The Mark Only As A Whole

In interlocutory applications in the commercial suit titled Bigtree Entertainment Pvt Ltd v. D Sharma & Anr. [I.A. 1345/2015 & 12014/2016 in CS(COMM) 609/2016], the Delhi High Court, (Nath, J.) vide its order dated 2019.1.21, has dealt with the issue of granting exclusivity over the prefix part of a registered mark. The suit for infringement and passing off had been filed by the plaintiff for protection of its mark ‘BOOKMYSHOW’ registered as of 2007.4.12, and also for protection of the unregistered prefix part thereof, viz. ‘BOOKMY’, seeking an order of permanent injunction against the defendant’s use of the unregistered mark ‘BOOKMYEVENT’, or of any other mark with the prefix ‘BOOKMY’; both parties’ marks being used in respect of online ticket reservation services. Though it had earlier granted an ex parte interim injunction, the court allowed the defendant’s interlocutory application for vacating it and dismissed the plaintiff’s application for an interim injunction pending disposal of the suit.

The plaintiff asserted that since its launch in 2007, its ‘BOOKMYSHOW’ venture had grown into a leading entertainment event reservation portal in India, as a result of which not just its mark as a whole but also its prefix ‘BOOKMY’ had acquired distinctiveness and both had come to be associated exclusively with the plaintiff. The plaintiff contended that the defendant’s mark ‘BOOKMYEVENT’ was deceptively similar. The plaintiff further contended that ‘BOOKMY’ was an essential part of its registered mark, and thus warranted protection. The defendant claiming use by it of its mark since 2011, which it denied as being deceptively similar, also countered that no exclusivity can be granted in a part of a mark especially when such part is descriptive.

The court did not prima facie find deceptive similarity between the marks and noting that the BOOKMY prefix part was neither coined nor invented, it prima facie found it not to be distinctive but instead descriptive for the concerned services. In light of Section 17 negativing any exclusivity to a part of a registered mark if the part comprises matter of a non-distinctive character, the plaintiff’s contention that the prefix part has acquired distinctiveness under the Proviso to Section 9(1) from use since adoption, came to the fore. The defendant’s objection that this is legally impossible owing to the prefix part admittedly never having been used independently by itself led the court to the statutory-interpretational issue of whether “use” of a mark under the Proviso to Section 9(1) of the Trade Marks Act only includes its use independently by itself or also its use only as part of a larger mark. The Proviso to Section 9(1) states that a mark can acquire a distinctive character as a result of its use, so an expansive interpretation thereof that “use” also means use only as part of a larger mark, would then render the question of acquired distinctiveness of the prefix part a question of fact for a prima facie view required to be taken thereon. The plaintiff urged this approach arguing that a part of a registered mark did warrant the expansive interpretation.

The court stated that “The plaintiff is using the mark ‘BOOK MY SHOW’ and claims that the plaintiff has earned a strong reputation in the market. Based on this, it has been pleaded that the prefix ‘BOOKMY’ has attained exclusive meaning under which only the plaintiff can claim rights. As noted in the above judgment it cannot be forgotten that ‘BOOK MY’ is a common English term. Its link with booking for shows, events, films etc is but obvious. It is a common general term descriptive of the services which are sought to be provided, namely, booking of a show, event, movie etc.”

The court appears thus to have taken the position at the pre-trial stage that “use” in the Proviso to Section 9(1) means use of the mark independently and does not also mean use as part of a larger mark; and that this is so even when the larger mark is a registered one. In other words, the court appears thus to have proceeded on a prima facie view at the interim stage pending trial that a descriptive part of a mark cannot acquire secondary meaning and distinctive character through its use only as part of the mark as a whole, and that this position does not change even if the larger mark is a registered one.  The court noted its earlier 2017 order on the same plaintiff’s similar interim injunction application in its another earlier suit [Brain Seed case] in which its same prefix ‘BOOKMY’ had been found prima facie pending trial to be descriptive initially and not having acquired distinctiveness from use of the larger mark since, and therefore no exclusivity had been granted over the same at the interim stage. The court also found applicable its earlier 2016 decision [Living Media case] wherein the plaintiff had claimed exclusive rights in the mark ‘TODAY’ on the ground of its continuous use, with variants, since 1975, but the court had held after trial that continuous use of the mark only as a whole could not result in a part thereof, being a common/dictionary word, acquiring distinctiveness. In the instant interlocutory applications, apart from dealing with the question of exclusivity over a part of a registered mark, the court had to also make a prima facie determination of overall deceptive similarity between the two marks which had the common prefix ‘BOOKMY’.

The court took a prima facie view pending trial that the defendant’s mark as a whole was dissimilar to the plaintiff’s mark as a whole, on an overall comparison – “Prima facie the colour scheme, the font used by the defendant are entirely different and people are unlikely to be misguided or confused by the said trade names and looks of the defendant’s trade mark. I agree with the judgment of this court in Bigtree Entertainment Pvt. Ltd. vs. Brain Seeds Sportainment Pvt. Ltd. (supra) that prefix BOOKMY is not an invented word. In fact, it is an apt description of a business that is involved, namely, booking of tickets for shows, events, films, etc.”.

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.

Court cannot decide patent invalidity in a summary manner

While allowing Monsanto’s civil appeals Monsanto Technology LLC & Ors. v. Nuziveedu Seeds Limited & Ors.CA No. 4616-4617/2018, setting aside the judgments of a Division Bench of the Delhi High Court, the Supreme Court (Sinha, J. and Nariman, J.), vide its judgment dated 2019.8.1, has ruled that a Court cannot decide invalidity of a patent in summary manner without full trial.

Nuziveedu and other seed companies entered into an agreement with Monsanto to develop “Genetically Modified Hybrid Cotton Planting Seeds” utilizing Monsanto’s patented invention “Methods for transforming plants to express bacillus thuringiensis delta-endotoxins”, and to commercially exploit thereby developed seeds against payment of license fee to Monsanto. The agreement was ultimately terminated by Monsanto which initiated arbitration for recovery of monies claimed as due. A patent and trademark infringement suit was also filed by Monsanto before the Delhi High Court seeking permanent injunction and related reliefs. Nuziveedu and the others entered contest and also filed a counterclaim seeking revocation of the suit patent as being invalid. The Delhi High Court (Gauba, J.) while relegating the defense plea of patent invalidity to trial, declined Monsanto any interim injunction against use of the patent by Nuziveedu and the others on a prima facie view that Monsanto’s earlier termination of the agreement was illegal. This order had the effect of allowing Nuziveedu and the others to continue using the technology under the suit patent provided they continued paying license fee during pendency of the suit. In internal cross-appeals by Monsanto and by Nuziveedu et. al, the Delhi High Court Division Bench (Bhat, J. and Khanna, J.), decreed the counter claim declaring the suit patent invalid giving three months to Monsanto to seek registration as a breeder’s plant variety under the Plant Variety Protection & Farmers’ Rights Act, 2002 and also confirmed the interim arrangement as ordained by the Learned Single Judge. The suit was permitted to continue for trademark infringement and damages.

The Supreme Court’s ruling is seen to deal with the question whether a patent invalidity revocation counterclaim under Section 64(1) (d) of the Patents Act, 1970 “…a patent…may be revoked…on grounds that…the subject of any claim of the complete specification is not an invention…” read with Section 3(j) “plants…in whole or any part thereof other than microorganisms but including seeds, varieties…are not inventions…”, raises a mixed question of law and fact such as requires evidence, possibly expert evidence, for a determination necessitating a full elaborate trial procedure. The question that is thus implicated is whether a judicial determination of the applicability of the statutory phrases “…is not an invention” [Section 64(1)(d)] because it is a “plant..seeds…” which “…are not inventions…” [Section 3(j)] requires an adjudication of a pure question of law or instead of a mixed question of law and fact.

The Supreme Court held – “Section 64 … necessarily presupposes a valid consideration of the claims in the suit and the counterclaim in accordance with law and not summary adjudication sans evidence by abstract consideration based on text books only…A suit can be disposed of at the initial stage only on an admission inter alia under Order 12 Rule 6 or when the parties are not in issue under Order 16 Rule 1 and the other grounds mentioned therein, none of which are applicable herein…The suit involved complicated mixed questions of law and facts with regard to patentability and exclusion of patent which could be examined in the suit on basis of evidence…the issues raised were complicated requiring technological and expert evidence … whether the nucleic acid sequence trait once inserted could be removed from that variety or not and whether the patented DNA sequence was a plant or a part of a plant etc…

Being satisfied with the nature of the interim arrangement ordained by the Learned Single Judge, the order of the Single Judge was reaffirmed, and the orders of the Division Bench vacated with the result that the counterclaim is restored on the file of the suit and the dismissed-in-default part of the patent infringement suit is also restored on the file of the suit, and both remanded to the Delhi High Court where the Learned Single Judge is expected to take them up for trial.

The Supreme Court also found fault with the manner in which the Division Bench of the High Court had proceeded to arrogate non-existent jurisdiction to itself in the appeals before it which were of a limited scope –  “The Division Bench ought to have confined itself to an examination of the validity of only the injunction granted by the learned Single Judge…The Plaintiff has never consented to a summary adjudication regarding the validity of its patent. The consent referred …has been given only to decide …to allow or disallow the relief of injunction … We are therefore satisfied that the Division Bench ought not to have disposed of the suit in a summary manner by relying on documents only, extract from the public domain, and not even filed as exhibits in the suit, much less examination of expert witnesses…

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