In the matter of Milaap Social Ventures Pvt. Ltd. & Anr. V. Google India Pvt. Ltd. & Anr. [W.P. (C) No. 6220/2022, the Single Judge [Sachin Shankar Magadum, J.] of the High Court of Karnataka, by decision dated November 23, 2022, set aside the order passed by the Trial Court and held that the Petitioner is entitled to amend the plaint to incorporate a prayer of relief against trademark infringement in a suit for passing-off.

Order 6 Rule 17, Code of Civil Procedure (‘CPC’) provides, “The Court may at any stage of the proceedings allow either party to alter or amend his pleadings in such manner and on such terms as may be just and …shall be made as may be necessary for the purpose of determining the real questions in controversy…”. The question is whether the prayer in a plaint be amended to seek an additional relief if the facts surrounding the cause of action remain the same.  

The Petitioner had sought a perpetual injunction against the Respondents from passing off the Petitioner’s trademark ‘MILAAP’ as a keyword to divert traffic to the Respondent’s website. During the pendency of the suit, the Petitioner’s mark ‘MILAAP’ was registered. Consequently, the Petitioner filed an application under Order 6 Rule 17 of the CPC to amend the plaint to include trademark infringement against the Respondents in the prayer. However, the Trial Court had rejected the application on the ground that the subsequent event of registration would give rise to a new cause of action, and that it would cause serious prejudice to the Respondents.

In the present petition against the Trial Court’s order, the Petitioner argued that the decision of the Trial Court to reject the application under Order 6 Rule 17 of CPC solely on the basis that the Plaintiff can file a separate suit is patently erroneous, as the ground on which the suit is based would remain the same. The Respondents contended that the Petitioner cannot subsequently convert a suit filed under common law remedy to a statutory suit under the Trade Marks Act.

The High Court rejected the Respondents’ contention and held that “If the cause of action for infringement and passing off actions are substantially identical and same in law and both the reliefs are virtually based on the same fundamental idea, and if plaintiffs intend to incorporate the relief relating to infringement of trademark, that would not fundamentally change the character of the suit and it would only be in the nature of alternative relief.”

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 Excitel Private Limited v. The Registrar of Trade Marks [C.A. (COMM. IPD-TM) 5/2021], Single Judge [Pratibha M. Singh, J.] of the High Court of Delhi, by decision dated July 18, 2022 allowed the appeal against an order passed by the Senior Examiner of Trade Marks on October 28, 2020, refusing the application for the mark ‘REELTIME’ in Class 42 on the ground that the evidence was insufficient to render acquired distinctiveness to the mark. The High Court held that internet website extracts submitted by way of an Affidavit accompanied with a Certificate as prescribed under Section 65B (1) of the Indian Evidence Act, 1872 would suffice as primary evidence in trademark proceedings.

Section 62 of the Indian Evidence Act, 1872 provides that – “Primary evidence means the document itself produced for the inspection of the Court”. The question would be whether printouts of internet websites would qualify as documents produced for inspection in trademark proceedings and if the same would be admissible as primary evidence.

The Appellant submitted proof of continuous and extensive usage of the mark “REELTIME” by way of an Affidavit arguing that the use of “REELTIME” on the Internet has been sufficiently placed on record along with printed extracts from the website. The Respondent in the impugned order dismissed the evidentiary value of the evidence submitted and stated that internet website extracts would not be primary evidence and would have merely secondary evidentiary value. Thus, having no primary evidence of acquired secondary meaning or concurrent use, internet extracts would not sufficiently prove long and continuous commercial use of the mark. The Respondent also submitted that the product under REELTIME is no longer being offered and hence, the rights in the said mark cannot be claimed by the Appellant despite having internet presence.

The Court held that, “rejecting the evidence extracted hereinabove, on the ground that it does not constitute primary evidence would be an incorrect approach…if there is any doubt…the examiner can call for an affidavit under Section 65B of the Information Technology Act, 2000. Simply rejecting the website printouts would be contrary to law as the law permits reliance on website printouts, so long as they can be they can be accompanied with a certificate under Section 65B of the IT Act.”

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 Suryansh Broadcasting Pvt Ltd & Anr. v. Zee Entertainment Enterprises Ltd & Anr. [FAO No. 9 of 2022], the High Court of Kerala vide judgement dated March 29, 2022, while dismissing the appeal filed by the Appellants against the Trial Court’s order refusing injunction against the telecast and airing of the Respontens’ programme, held that there is no copyright over a general theme/plot or its natural sequences.

Section 14(a)(vi) of the Copyright Act, 1957, provides that “copyright means the exclusive right to do or authorise the doing of any of the following acts- (a)in the case of a literary, dramatic or musical work, – …(vi) to make any adaptation of the work.” The question that arises, therefore, is whether adopting a programme with a similar theme/plot will amount to an ‘adaptation’ of the original work?

The Appellants alleged that the Respondents made an adaptation of their programme since Respondents’ programme closely resembles their programme and even the actors employed are the same. The Appellants argued that the Respondents’ programme creates a reasonable doubt as to the identity in the minds of the viewers, who might believe that it is Appellants’ media.

The Court observed that there is no verbatim reproduction or adaptation of the Appellants’ programme in the Respondents’ programme. The theme employed is the spontaneous behaviour of the family members, in two identical families- one Hindu and the other Christian, which by itself does not bring the matter within the sweep of making an adaptation under Section 14(a)(vi).

The High Court while upholding the Trial Court’s order held that “Copyright is actually intended to protect the work of a particular person or group of persons or a firm whatever it may be, but that does not mean that it is not permissible to adopt the very same theme or plot or idea or subject matter by others unless the same is having an individual nature of its own with the employment of an invention made by the creator apart from the generality of idea, theme or plot and its natural sequences…mere similarities will not come under the purview of copyright as made mentioned in Section 14 of the Copyright Act, unless it satisfies the various clauses incorporated therein.”

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 Burberry Ltd v. Aditya Verma, [R.F.A (IPD) 4/21] a Single Judge [Asha Menon, J.] of the High Court of Delhi, vide order dated March 29, 2022, held that the testimony of an expert witness is not required in cases of trademark infringement and passing off matters, involving identical or similar trade marks.

Order XXVI Rule 10(2), Code of Civil Procedure (‘CPC’) provides, “The Report of the Commissioner and the evidence taken by him …shall be evidence in the suit and shall form part of the record… the parties to the suit may examine the Commissioner personally in open Court touching any of the matters referred to him or mentioned in his report….” The question for consideration is whether a report submitted by an expert can ‘form part of the record’ without expert testimony.

The Appellant filed a suit restraining the Respondent from violating its rights in the alleged registered “BURBERRY” marks. A Local Commissioner was appointed by the Trial Court to investigate the Respondent’s inventory. But the Report submitted by the Commissioner was discarded by the Trial Court on the ground that the Appellant had not examined the Commissioner in the witness box and no other evidence was produced to establish that the goods seized were counterfeit. In the present appeal against Trial Court’s order, the Appellant argued that even if the Local Commissioner was not examined in the court, the Report still formed evidence that cannot be overlooked and that “BURBERRY” is registered in the name of the Appellant and this fact stood admitted by the Respondent, and thus there was sufficient evidence to protect the interests of the registered proprietor of the trademark.

The High Court observed that the said Report submitted before the Trial Court included sufficient proof of the unauthorized use of the Appellant’s mark. Further, since there were no objections raised by either party on the said Report, the High Court accepted the contentions made by the Appellant.

The High Court while distinguishing a criminal case from the case of infringement of registered trade marks or of passing off held that “There is no call to have an expert witness to testify to the use of an identical or similar Trade Mark…the learned Trial Court fell into grave error in holding that the absence of expert testimony disproved the case of 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 the matter of Makemytrip India Private Limited v. Booking.Com B. V & Ors. [CS(COMM) 268/2022], a Single Judge [Prathiba M. Singh J.] of the High Court of Delhi, vide order dated April 27, 2022, held that the invisible use of a trademark as a keyword that tends to mislead consumers can constitute as passing off.

Section 27(2) of the Trade Marks Act, 1999, reserves a proprietor’s right to initiate action against “passing off goods or services as the goods of another person or as services provided by another person.” The question is whether ‘passing off’ would include the adoption of a deceptively similar mark as a keyword in the Google Ads Program by third parties or would that adoption be permissible?

The Plaintiff argued that Booking.Com [Defendant No. 1], has put bid on the keyword ‘makemytrip’ on the Google Ads Program in order to ensure that their website is shown in one of the top three search results, thereby causing misrepresentation through an invisible use. The Plaintiff further asserted that such unauthorized search result by the Defendants causes harm to the goodwill and reputation associated with their alleged trademark ‘MakeMyTrip’.

The Defendants contended that there cannot be any restriction on the use of a trademark on the Google Ads Program as a keyword even by the competitors. The Defendant also contended that monopoly cannot be claimed for generic words ‘make’, ‘my’, ‘trip’, and hence such use is permitted under the Trade Marks Act, 1999.

The Court while acknowledging the technological advancement held that “The traditional concept of ‘misrepresentation’ and ‘passing off’ consists of the Defendant adopting for his own goods or business some material such as a name or a mark which is deceptively similar to the claimant’s mark. In the opinion of this Court, restricting an action of passing off to such an ‘adoption’ might be obsolete in view of the technological advances in today’s digital world… impact of Google Ads Program can be best described by way of an illustration: If a person is looking to buy an air ticket and types `MakeMyTrip’ in the search bar, and the first result in the Ad section is of Booking.com, the user may simply visit the latter’s website by clicking on the link and book the ticket…the user has been directed to a competing website and a direct business loss has been caused to the trade mark owner’s business…Thus the “invisible” use of a mark as a keyword can constitute passing off as a matter of principle.”

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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