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 …”

In the matter of Maya Appliances Pvt. Ltd. v Preethi Kitchen Appliances Pvt. Ltd. and Ors. [2018 (74) PTC 209 (Mad)], a Division Bench of the Madras High Court vacated an injunction against Defendant’s registered design for mixer-grinder.

In its appeal, Defendant had argued (i) overall dissimilarity on the basis of top view and bottom view of designs and (ii) registration of its design being prima facie evidence of novelty. Plaintiff, while refuting dissimilarity with its earlier registered design, had asserted that mere registration of later design is not a valid defense.

While vacating the injunction on the ground of overall dissimilarity of the designs on a side-by-side comparison, the Division Bench observed :

“...if the suit ultimately fails, the harm caused to the defendant appellant would be irreparable as it would be difficult to compute the compensation. The balance of convenience was against the passing of interim orders.”

Notably, while each of the parties challenged the opposite side’s design registration in the suit, neither of them had preferred a cancellation action before the Designs Office. On this, the Court observed:

“There being no challenge till today to the defendant appellants registration, we have to proceed on the prima facie basis that the design of the defendant appellant is original, novel and had not been published prior to the date of application for registration.”

In the matter of Vivek Kochher & Ors. v. KYK Corporation Limited and Ors. [2018(74) PTC 120 (Del)], the Delhi High Court decided (on November 3, 2017) a writ petition against IPAB’s order of allowing rectification of trademark registration for mark KYK.

KYK Corporation had sought rectification of KYK before the IPAB on the grounds of identity of marks and a false prior use claim. The IPAB order had noted that while the Registrant had claimed prior use since 1996 (for class 12 goods) and since 2000 (for class 7 goods), it had failed to produce any evidence prior to 2005.

The Court examined whether the IPAB’s finding that there was no evidence prior to 2005 was ex facie erroneous, as alleged in the Writ Petition.

On this, the Court observed that “…none of the said invoices are prior to the year 2005 and, therefore, there was no evidence on record to show any invoice relating to the use of the impugned mark by KYK International…Thus, the finding of the IPAB that ‘there is no evidence prior to 2005’ is correct…”

The issue before the Court then was whether inability to prove the prior use date claimed in a trademark registration renders the registration invalid ab initio.

The Court appears to have decided in the affirmative, ultimately dismissing the petition, holding that “…conclusion of IPAB that the petitioners were unable to establish the use … warranting a rectification of the registered trademark cannot be faulted.”