In Federal Express Corporation v. Fedex Securities Ltd. & Ors [2017 (71) PTC 155 (Del)], the Delhi High Court (Gauba, J.) has, vide order dated 2017.04.11, returned the plaint-suit for infringement and passing off of the Plaintiff’s trademark FEDEX, allowing the interlocutory application of the Defendants challenging territorial jurisdiction.

Plaintiff invoked the jurisdiction of the Delhi High Court pleading that it has a subordinate office in Delhi and that the Defendants’ website www.fedsec.in is accessible in Delhi at which they offer and advertise their services, that the documents publicly accessible and issued to public at large on the Defendants’ website show that they are acting as the manager/merchant bankers to various entities/companies in Delhi. Defendants, on the other hand, alleged forum shopping asserting that the averments in the plaint simply do not suffice to establish territorial jurisdiction.  

The Court examined whether the phrases “carries on business” and “cause of action, … in part, arises” in Section 20 of the CPC are attracted by the Defendants merely having an interactive website in that territory or instead that there is an additional requirement that the website intentionally target that territory or also that it do so in a commercially viable manner.

This issue has been analyzed thus in the judgement: “…’carries on business’ at a certain place …means having an interest in a business at that place, a voice in what is done, a share in the gain or loss and some control thereover…insignificant or trivial part of the ‘cause of action’…cannot be the decisive factor on the question of jurisdiction…”

Having thus interpreted the scope of the Section, the Court examined the adequacy and sufficiency of the pleadings in the plaint for establishing territorial jurisdiction.

The Court found the pleadings in the plaint as not enough for invoking territorial jurisdiction: “As regards the…averment concerning the advertisement of service on website,…there is no averment that the websites are specifically targeting customers in Delhi or that the website is an interactive one from which it would be or has been possible to conclude commercial transactions. The advertisements published of the offers made by them to the public at large in the capacity of merchant bankers or merchant intermediaries have come with clear declarations of their location in Mumbai, which is the place where they have their registered offices…there is not even a single illustration given of any such commercial transaction having been entered into by the defendants with any user of their website within the territorial jurisdiction of this court…Plaintiff would have to show that the Defendant “purposefully availed” itself of the jurisdiction of the forum court. For this it would have to be prima facie shown that the nature of the activity indulged in by the Defendant by the use of the website was with an intention to conclude a commercial transaction with the website user and that the specific targeting of the forum state by the Defendant resulted in an injury or harm to the Plaintiff within the forum state.”

In the civil suit Texmo Industries v. Mr. Roshan Kumar, C.S. No. 357/2017, while rendering a summary judgment (dated 2018.7.27) partially decreeing the suit, a Single Judge of the Madras High Court (Karthikeyan, J.), has referred to a larger bench the question of a Court’s competence to declare a trade mark as a ‘well-known trade mark’.

The plaint averred the Plaintiff as being the owner and registered proprietor of the trade mark TEXMO and formative marks for motor pump sets in various classes including classes 2, 7, 11, 22, 23, 24, 25 and 26. The suit was for, inter alia, trademark infringement and passing off, against Defendant’s use of the mark TEXMEN for identical goods. After granting an initial interim injunction, the Court has allowed Plaintiff’s motion for summary judgment for various reliefs. In relation, however, to the relief of declaration of TEXMO as a well-known trade mark, the suit has been kept pending until a larger bench first decides a reference of the question – “whether the Court would be the appropriate authority for declaration of a mark as a well-known mark or is it only the Registrar who is empowered to declare so”.

The case involves the question whether the mention of the “Registrar” in Section 11(6) of the Trade Marks Act, 1999 – “The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account…including: …the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar…”, indicates that the Registrar is exclusively vested with the competence to declare a mark as well known, and that the Court is not so vested. Other notable related statutory provisions featuring further mentions of the “Registrar” include Section 11(7) – “The Registrar shall, while determining as to whether a trade mark is known or recognised…”, and Section 11(8) – “Where a trade mark has been determined to be well-known…by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act”.

As regards the factors enumerated in Section 2(1)(zg) and 11(6) to ascertain whether a trade mark is well known or not, the Court has observed, subject to the decision of the larger bench, that – “They are factors which can be determined only by the Registrar of Trade Marks…the Court is not an expert on those lines and the court cannot substitute itself for the Registrar of Trade Marks who is the competent authority to examine the relevant statistics to declare that a mark is a well known mark….and thereafter it is the prerogative of the Registrar of Trademark to actually declare a Trademark as a well-known Trademark.”

The Plaintiff relied upon an earlier judgment dated December 11, 2017 of a coordinate bench (a Single Judge) of same Court (Madras High Court) in which the same mark TEXMO was declared as a well-known trade mark. Unpersuaded by this reliance, the Court while making the reference, has examined various statutory provisions appearing to it to indicate that the only authority conferred with such statutory competence is the Registrar of Trade Marks.

The Court has accordingly sought for the question to be decided by a Division Bench (larger bench of two Judges) and observed that – “since there had been earlier judgment of this court on this one issue namely whether the court can declare a mark as a well known mark or the court can only determine the factors relating to the mark as a well known mark and the onus is on the Registrar of trade marks to declare such mark as a well known mark, I hold is a matter to be referred to a Larger Bench.”

 

In Apollo Tyres Ltd. v. Pioneer Trading Corporation & Anr [2017 (72) PTC 253 (Del)], the Delhi High Court on 2017.08.17 has, in a suit for passing off of the Plaintiff’s tread pattern  in respect of its truck tyre under mark ENDURANCE LD 10.00 R20, confirmed an ad-interim injunction restraining from using a similar tread pattern, pending trial.

The Defendant’s interlocutory application for vacation of ad-interim injunction was dismissed and the earlier ad-interim order in favour of the Plaintiff was confirmed. The Defendant had contended that tread patterns in tyres are functional and no proprietary rights as trademark can be claimed. Further, that uniqueness in tread patterns may be registrable designs and therefore no action of passing off as a trademark lies.

The case deals with shape of goods as trademarks under Section 2(1)(zb) “…trade mark… may include shape of goods…” and Section 9 “…A mark shall not be registered as a trade mark… the shape of goods which results from the nature of the goods themselves… which results from the nature of the goods themselves…”. The judgement holds:

“…. No party can claim proprietary over the technique/ practice of providing treads in a tyre, since treads are functional, i.e. they afford the necessary grip between the tyre and the ground … However, that does not mean that the unique pattern of the tread adopted by a particular manufacturer,…would not be entitled to protection as a design – if it is registered, and as a trademark- if the tread pattern has been exploited as a trademark i.e. a source identifier. What is functional in a tyre are …”treads” and not “tread pattern”…”

The court while determining that the tread patterns could be protected as trademarks notwithstanding protection under the Designs Act, also held that shape and features of goods not registered as a design does not disentitle suing for trademark passing off.

“Copying of the unique shape of the goods could lead to confusion with regard to the source.. the submission…that the tread pattern…constitutes a design-registrable…and failure of the plaintiff to get its design…registered deprives the plaintiff of protection against passing off has no merit, and is rejected.”

In Turning Point Institute Private Limited v. M/S Turning Point [2017 (72) PTC 164 (Del)], the Delhi High Court on 2017.08.11 has, in a suit for passing off of Plaintiff’s mark TP TURNING POINT, restrained the registered mark TP TURNING POINT of the Defendant pending trial.

The injunction also covers use as label and corporate name and also extends to any part of the mark. In the infringement cross suit, interim injunction has been denied.

The case deals with onus of proof under Section 33(1) about Plaintiff’s acquiescence “…being aware of that use” and about Defendant’s “…registration… not applied in good faith.”

“In the case in hand, the defendants – on whom lay the onus, have produced no material on record to establish knowledge with the plaintiff of the defendants existence;…”

The acquiescence plea thus fails if the plea-taker is unable to lead satisfactory evidence of alleged acquiescor’s awareness. It also fails if the plea-taker’s application of its since registered mark was not filed in good faith. The onus of proof is on the alleged acquiescor but is not a heavy one as it can be shifted easily though rebuttably on the taker of the acquiescence plea.

“…defendants have not explained the background which they adopted either “TURNING POINT”, or the abbreviation “TP”. Secondly, if the defendants had adopted the said mark honestly, they would have claimed protection in respect of “TP” as well, and not just “Turning Point”. As opposed to this, the plaintiff has explained the origin of the mark “TP TURNING POINT”, as noticed hereinabove.”

A Madras High Court Division Bench in Mr. Thiagarajan Kumararaja V. M/s Capital Film Works (India) Pvt. Ltd. & Anr., 2018 (73) PTC 365 [Mad][DB], on 20.11.2017 has, at the instance of the author and owner of the copyright in the literary work of the script of the Tamil cinematograph film, Aaranya Kanadam, injuncted the producer from remaking the film by changing the script.

The denial of relief against a remake involving mere translation of the script involving dubbing of the cinematograph film has, however, been maintained.

This case examines whether a producer, to whom there is no assignment of copyright in the script, has the right to remake a film under Section 14 (d)(i) – “to make a copy of the film…”.

“…the right in the script vests in the appellant…right in the subject cinematograph film vest in the respondents.” “…the right to remake …would entail…changes being made in the original script, albeit, without the consent of the appellant…A remake of…film…cannot come within the ambit of…right to copy a film…”.  

Literary copyright in script of a film and cinematograph copyright in the film itself are separate and thus capable of being owned separately by different owners, as here. Without assignment or license from the author, the producer cannot adapt the script for a remake of the film.

“…the right to copy a film includes the right to replicate the…film, …does not include…right to remake…the remake…on the subject script would…infringe the appellant’s copyright …”