In the matter of HTC Corporation v. Mr. LV Degao & Ors. [Civil Suit (Commercial) No. 263 of 2020], Single Judge [Asha Menon J.] of the High Court of Delhi, vide order dated April 6, 2022, has effectively held that an action of not only passing off but also infringement can be brought against a registered trademark.

Section 29(4) of the Trade Marks Act 1999 (“Act”) states that “A registered trade mark is infringed by a person who…uses in the course of trade, a mark…” Further, section 124(5) states that “The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order…” The question that arises is whether ‘infringement of a trade mark’ under section 124(5) r/w section 29 (4) would include infringement only by an unregistered trademark or also by another registered trademark.

The Plaintiff alleged that Defendant registered a mark identical to its ‘HTC’, against which registration it had also filed rectification proceedings. The Plaintiff contended that Defendant’s use of an identical mark on similar goods amounted to infringement and passing off.

The Defendant submitted that an infringement action can only be brought if the alleged infringer has no registration. The Defendant stated that since it was the registered proprietor of the mark ‘HTC’, the Plaintiff’s case had no merits.

The court held that “Section 29(4)… is applicable only against a defendant, who does not have proprietorship in a registered Trade Mark. Would that mean that the court when faced with a situation as prevailing in the present case, would be helpless and would it also mean that the plaintiff could seek only protection against passing off. This Court is of the opinion that since Section 124 deals with a situation where the validity of the registration of the trade mark is being questioned and Section 124(5) empowers the court to pass interim injunction orders, it is only logical that even when there are two registered Trade Marks involved and the plaintiff seeks protection against the user of a similar or identical trade mark, which has been registered in the defendant’s name, the court can consider not just the question of passing off, but also of infringement since Section 124 of the T.M. Act is in relation to a trade mark and not to mere 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 ANI Technologies Pvt. Ltd. and Ors. v. State of Karnataka and Ors., [W.P. No. 32942 of 2017 (GM-RES)], a Single Judge [Maheshan Nagaprasanna, J] of the High Court of Karnataka vide order dated December 20, 2021, declared that knowingly infringing or abetting copyright infringement is a cognizable offence.

Section 63 of the Copyright Act, 1957 (“Act”) provides that, “Any person who knowingly infringes or abets the infringement of the copyright in a work…shall be punishable with imprisonment for a term which shall not be less than six months but which may extend to three years…”.  Schedule II of the Code of Criminal Procedure, 1973 (“CrPC”) provides that offences, if punishable with imprisonment for less than 3 years or with fine only, are non-cognizable. The question that arises is whether the quantum of punishment viz. “not be less than six months but which may extend to three years” in section 63 of the Act makes the offence of copyright infringement cognizable or non-cognizable?

A complaint was registered against the Petitioner for infringing the second Respondent’s copyright, and an investigation was ordered by the Additional Commissioner of Police under Sections 63 and 64 of the Act. The Petitioner argued that punishment under Section 63 is less than 3 years of imprisonment. This makes the offence non-cognizable as per Schedule II of the CrPC and the police does not have any power to launch an investigation into the matter. The Respondents argued that Section 63 is indeed cognizable, and there is no fault in the investigation directed.

The Court, while referring to Schedule II of the CrPC, held that the offence of copyright infringement would fall under the category of a cognizable and non-bailable offence. It was held that “…what is to be seen is the maximum punishment. In a given case, the competent criminal Court can sentence an offender under Section 63 of the Act to three years imprisonment. Exact three years is a possibility in a given circumstance. Therefore, it would fall under Item No. 2 of Schedule II of the Cr.P.C.” On the point of comparison with Section 64 of the Act, it was held that, “Merely because a separate provision under Section 64 of the Act which depicts power of search and seizure by the Police is also found in the statute, it does not take away cognizability of the offence punishable under Section 63 of the 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 Pernod Ricard India Private Limited v. Frost Falcon Distilleries Limited, [CS (Comm) 94/2021], Single Judge [C. Hari Shankar, J.] of the High Court of Delhi, vide order dated March 2, 2022, held that a passing off action in a trademark suit is product specific and can exist even in the absence of infringement.

Section 29(1) of the Trade Marks Act, 1999 (the “Act”) states that a registered trademark is infringed by “a mark which is identical with, or deceptively similar to, the trade mark”. Section 27(2) of the Act 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 that arises is whether “passing off of goods or services” would also include establishing “similarity” of a “mark” with the registered “trade mark”, or whether a connection based on the overall picture is enough?

The Plaintiffs, proprietors of the marks “BLENDERS PRIDE” and “IMPERIAL BLUE” in Class 33 used for Indian Made Foreign Liquor (IMFL) contended that the Defendant’s mark “CASINOS PRIDE” (containing the word “PRIDE”), used in the same class, bears phonetic similarity to the former mark and visual similarity to the latter’s trade-dress, including its “essential features” such as the blue colour, golden dome design, etc. The Defendants argued that the marks should be seen in a composite manner (by application of the anti-dissection rule) and claimed that the individual aspects of the Plaintiff’s marks, design, and representation could not be sought for protection as they were not registered individually. The Defendant’s also argued that their marks, label, and packaging were distinctive.

The Court held that none of the similarities pointed out in the separate marks constituted a strong infringement case. The Court held that “infringement is a mark specific tort whereas, passing-off is goods specific. Relief in an action for infringement is, therefore, aimed at protecting the mark whereas relief in an action for passing off protects the product and the goodwill and reputation commanded by the product. The comparison in an infringement case is, therefore, mark to mark, whereas the comparison, in a case of passing off, is, product to product.”. The Court further held that passing-off action can suffice if it is shown that “by combining distinctive features of different marks of its goods, the defendant is seeking to create an overall picture of association between the products of the defendant and 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.

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In the matter of M/s.Apex Laboratories Pvt.Ltd. v Axis Life sciences, [Civil Suit No. 254 of 2020], a single judge bench of the Madras High Court [N. Anand Vekatesh, J.], on January 3, 2021, held that when there is phonetic similarity between two marks, addition of one or two words to the infringing mark will not render sufficient dissimilarity from the registered trademark and will amount to infringement of that trade mark.

Section 29(9) of the Trade Marks Act, 1999 states that “where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words…and reference in this section to the use of a mark shall be construed accordingly.” The question that arises here is whether the ‘spoken use of those words’ apply only to marks that contain the same words as the registered trademark or also to such marks that appear to be dissimilar on account of phonetics by way of addition of syllables/words to manipulate the registered mark ?

In the present case, the plaintiff submitted that its registered trademark “ZINCOVIT”, adopted in 1988, has become a well-known mark for health supplements  The plaintiff submitted that the defendant has adopted a similar trademark “ZENKO-VIT” and has been using this mark for identical products i.e., health supplements. Further, it submitted that both marks are phonetically identical with only a change in the syllables and the defendant’s usage of a phonetically similar mark amounts to passing off. The defendant did not defend the plaintiff’s claims.

The court while contemplating the phonetic similarity between the marks observed that “adding of one or two words in a mark does not make any difference as far as phonetic similarity is concerned” and held that “A careful scrutiny of the impugned mark of the defendant “ZENKO-VIT” shows that the mark is deceptively and phonetically similar to the plaintiff’s registered trade mark “ZINCOVIT”…… any confusion in the marks relating to pharmaceutical preparations can have serious consequences and it will go against public interest. The defendant’s mark is phonetically, visually and structurally identical to the plaintiff’s trade mark and it is bound to cause confusion as both the products will be made available through the same trade channels and to the same class of consumers.” Accordingly, the court issued a permanent injunction against the defendant and restrained it from infringing or passing off the plaintiff’s registered trademark “ZINCOVIT” in any manner.

In the matter of C. Prakash Vs. S.N. Media and Others [Commercial Application No.68 of 2021, a Division Bench [Sanjib Banerjee, CJ. And P.D.Audikesavalu, J.] of the Madras High Court, by judgment dated October 29, 2021, accepting an appeal filed by the plaintiff has effectively held that prior payment of royalty by assignee is not a condition required for effective assignment of copyright.

Section 19(3) of the Copyright Act 1957, states that “The assignment of copyright in any work shall also specify the amount of royalty payable,if any, to the author or his legal heirs during the currency of the assignment and the assignment shall be subject to revision, extension or termination on terms mutually agreed upon by the parties.” The question that arises in the present case is whether ‘royalty payable’ means a mandatory prior payment of royalty for the copyright assignment to be effective or can the royalty be paid post the assignment as well?

In the present case, plaintiff was assigned the copyright in favour of two films by the defendants (2&3) via agreement dated May 29, 2020. The plaintiff asserted due payment of the royalty before the assignment which was subsequently denied by the defendants 2&3. The first defendant claims to be subsequent assignee having similar agreement with the defendants 2&3. He asserted that with no prior payment of royalty, plaintiff’s transaction cannot be considered as an effective assignment of copyright.

The Court while granting an injunction in the plaintiff’s favour held that “…Subsection (3) of Section 19 of the Act requires the assignment to specify the amount of royalty or other consideration payable. However, the provision does not mandate that the payment of consideration would be a condition precedent to the assignment taking effect. Indeed, when it comes to royalty in respect of assignment of copyright in musical work, traditionally, royalty has been paid after the music has been played notwithstanding the assignment having been made earlier. Particularly in the music industry, assignment is made and the instrument provides for the royalty payable, based upon the number or the period or other parameters that may be agreed upon between the parties. It is not required for the assignment to become effective upon due or any consideration therefor being tendered by the assignee to the assignor.”

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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