In the matter of Sungro Seeds Ltd v. SK Tripathi & Ors., [CS (OS) No. 1163 of 2013], the Delhi High Court, vide its Order dated May 15, 2020, dismissed the Plaintiff’s suit and held that no cause of action would accrue on the basis of breeder’s rights until Plaintiff obtains a registration for its plant variety under Protection of Plant Varieties and Farmers’ Rights Act, 2001 (“PPVFR” Act).

The Plaintiff developed a hybrid variety of Cauliflower under the name ‘Katreena’. The Plaintiff came across the Defendant No. 3’s hybrid cauliflower seeds under the name ‘Riya’. The Plaintiff submitted that it conducted tests which disclosed that the seeds of the Defendant had 100% identical characteristic features as that of the Plaintiff’s hybrid variety. The Plaintiff argued that the Defendant had illegally acquired Plaintiff’s confidential information relating to breeding from its ex-employees (Defendant Nos. 1 and 2) and knowingly misappropriated its trade secret. Accordingly, the Plaintiff instituted the instant suit seeking permanent injunctions against the Defendants, restraining them from using or disclosing any of the confidential information related to Plaintiff’s breeding strategies.

The Defendant filed an application for rejection of the plaint on the ground that both the Plaintiff’s and Defendant’s applications for registration of their respective plant varieties are pending before the Registrar under the PPVFR Act and the issue of breeder’s rights is yet to be resolved. The Defendant argued that the instant suit could have been initiated by the Plaintiff only if its plant variety was registered and the breeder’s rights had been conferred upon it.

The Court perused the arguments made by both parties and held that “…the plaintiff, prior to obtaining registration under the PPVFR Act, cannot maintain a suit to restrain the defendants from infringing the rights which are yet to be conferred on the plaintiff on grant of registration…the plaintiff is not found to be having any rights, asserting which the suit was filed and the suit is dismissed”.

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 Sky Enterprise Private Ltd. vs. Abaad Masala and Co. [Interim Application No. 01 of 2019 in Commercial I.P. Suit (L) No. 1124 of 2019], the Bombay High Court, vide its order dated January 8, 2020, granted an interim injunction restraining the Defendant’s use of the marks “White Chinese Pepper Masala” and “Black Chinese Pepper Masala”.

The Plaintiff is the registered proprietor and user of various marks including but not limited to “Black Chinese Pepper Curry Powder”, “Black Chinese Masala”, “White Chinese Pepper Masala” and “Black Chinese Pepper Masala”, in Class 30, in respect of different masala powders.

The Defendant, who is also engaged in a similar business, had adopted identical marks such as “White Chinese Pepper Masala” and “Black Chinese Pepper Masala”. The Defendant contended that the Plaintiff cannot enjoy exclusivity over these marks as they are generic and descriptive, and that it is using the said marks only as descriptions for its goods.

The Court rejected the Defendant’s arguments that the marks were generic and that they were used in a descriptive sense. The Court while granting the temporary injunction in favour of the Plaintiff held that “…each individual word forming part of its registered trademark may well be a descriptive word; it may not be possible to claim any proprietary right over it; but no rival trader can use the particular combination and order in which the Plaintiff uses these words in its registered trademark to distinguish its goods, if the particular combination or order is not generally used in the trade for describing the character or quality of goods. A rival trader, for example, in the present case, may describe his product as ‘pepper masala’; he may describe it as ‘Chinese masala’…he may even write on the label that the product is a black masala made of pepper and is for Chinese cookery. But he surely cannot describe his goods as ‘White Chinese Pepper Masala’ or ‘Black Chinese Pepper Masala’, using the very same combination and order of words, which form the registered trademarks 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.

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In the matter of Peps Industries Private Limited vs Kurlon Limited [CS(COMM) 174/2019 with IA 4871/2019 & IA 6715/2019], the Delhi High Court (Mukta Gupta, J.), vide its order dated March 16, 2020 refused the Plaintiff’s interim injunction application in a suit for infringement and passing off, on the ground that the Plaintiff had failed to establish that its mark had acquired distinctiveness as on the date of registration.

The Plaintiff owned a registration for the mark NO TURN as of January 2, 2008 and had commenced use of the mark on January 15, 2008 in respect of mattresses. The Defendant had filed an application for the mark NO TURN on December 24, 2018, claiming prior use since October 8, 2007. Aggrieved by the Defendant’s adoption and use of the mark NO TURN in respect of mattresses, the Plaintiff filed the instant suit.

The Defendant contended that being the prior user of the mark NO TURN, it is protected under Section 34 of the Trade Marks Act, 1999, which prohibits a registered proprietor from restraining a prior user of a similar mark. The Plaintiff countered that the Defendant had been using the mark NO TURN intermittently and in a descriptive sense and could not avail the benefit of Section 34.

The Court concurred with the Plaintiff’s contention and held that the Defendant was not entitled to the benefit of Section 34. The Court then looked into the issue of descriptiveness of the Plaintiff’s mark NO TURN and examined whether evidence of distinctiveness acquired after registration can be considered, as the Plaintiff had not submitted such evidence at the time of registration of the mark.

Analysing the relevant statutory provisions, the Court held that, “…ordinarily evidence of distinctiveness by use ought to be as available on the date of the filing of the application…however, there is a relaxation by extending this period…to the actual date of registration by virtue of Section 31(2)…The evidence in the period post registration of the trademark can only be looked into in proceedings to declare the trademark invalid under Section 57 of the Act and not in a civil suit in a civil court where infringement action of a registered trademark is filed.”

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 D&H India Ltd. v. Superon Schweisstechnik India Ltd. [FAO (OS) (COMM) 237/2019 & CM APPL. Nos. 42840/2019, 42841/2019 & 230/2020)], the Delhi High Court, vide its order dated March 16, 2020, upheld the Single Judge’s decision allowing an application for amendment of plaint before commencement of trial.

The Respondent-Plaintiff is the registered proprietor of the trademark SUPERON and was aggrieved by the Appellant-Defendant’s adoption and use of the trademark SUPERCROME in respect of identical products. Accordingly, the Respondent filed a suit seeking permanent injunction against the Appellant, to restrain it from infringing and passing off the mark SUPERON. In the Plaint, the Respondent had claimed adoption and use of the mark SUPERON since 2004. Subsequently, the Respondent filed an application under Order VI Rule 17 of the Code of Civil Procedure (CPC) to amend the year of adoption of its mark to 1994. The Single Judge allowed this amendment request. The Appellant filed the instant appeal, claiming that allowing the amendment would alter the character of the suit and prejudice the Appellant.

Order VI Rule 17 of the CPC allows “all such amendments…as may be necessary for the purpose of determining the real questions in controversy between the parties. Provided that no application for amendment shall be allowed after the trial has commenced…”. The Court noted that in the present case, the proviso was inapplicable as the trial had not commenced when the Respondent applied for amendment of its plaint. Therefore, the Court had to determine whether the amendment sought was “necessary for the purpose of determining the real questions in controversy”.

The Court observed that “the controversy…was relating to alleged infringement, and passing off…prior user is one of the essential indicia, to be examined while adjudicating such a claim…the date from which the plaintiff-respondent was using the SUPERON trademark was, therefore, fundamental to adjudication of the controversy”. Accordingly, while upholding the Single Judge’s decision and allowing the amendment, the Court stated that “the court, adjudicating on an application for permission to amend the plaint, at the pre-trial stage, is to ensure that…the right of the party, seeking amendment, to bring relevant facts, to the notice of the court, is not prejudiced…were the prayer for amendment…to be disallowed…the prejudice…to the respondent…as a consequence thereof, would be irreversible.”

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 Disney Enterprises, Inc. & Ors. v. rlsbb.unblocked.ltda & Ors. [IA No. 14909/2019 in CS(COMM) 594/2019], the Delhi High Court (V. Kameswar Rao, J), vide its Order dated March 12, 2020, granted a dynamic permanent injunction against the impleaded websites restraining them from, inter alia, hosting, streaming on their websites the Plaintiff’s copyrighted works.  

The Plaintiffs are global entertainment companies engaged in the creation, production and distribution of motion pictures. The Defendants (Nos. 1-32) are operators of websites hosting, communicating, and making available for download (without authorization), the Plaintiffs’ copyright content. In the interest of ensuring effective implementation, the Plaintiffs also impleaded the relevant Internet Service Providers (ISPs), the Department of Telecommunications and Ministry of Electronics and Information Technology as Defendants. The instant suit for copyright infringement was filed seeking permanent injunction against the operators of the “rogue” websites (and their mirrors/redirects/alphanumericals), and an Order calling upon the ISPs to block access to the said websites.

The Plaintiffs relied on the ruling in UTV Software Communication Ltd. And Ors. v. 1337X.to and Ors. (Delhi High Court, 2019), wherein the Delhi High Court had labelled such unauthorized streaming websites as “rogue” websites and granted a dynamic injunction against them, enabling the Plaintiffs to have any mirrors/redirects/alphanumericals of the websites blocked at any time by using the Court order and submitting sufficient evidence.

Considering the evidence and the factors laid down in UTV Software, viz. primary purpose of the websites, masked & untraceable details of the registrants, inaction despite notices, etc., the Court identified the Defendant websites as “rogue” and granted a dynamic permanent injunction, holding that “…as held by this court in UTV Software Communication Ltd. (supra), in order for this court to be freed from constant monitoring and adjudicating the issues of mirror/redirect/alphanumeric websites it is directed that as and when the Plaintiffs file an application under Order I Rule 10 for impleadment of such websites, Plaintiffs shall file an affidavit confirming that the newly impleaded website is mirror/redirect/alphanumeric website with sufficient supporting evidence. Such application shall be listed before the Joint Registrar, who on being satisfied with the material placed on record, shall issue directions to the ISPs to disable access in India to such mirror/redirect/alphanumeric websites.”

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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