In the matter of Sony Kabushiki Kaisha v Mahaluxmi Textile Mills [CO No. 3008 of 2011], the Calcutta High Court (Hiranmay Bhattacharyya, J.), vide its judgment dated February 27, 2020, allowed the Plaintiff’s application for amendment of plaint, holding that the fact sought to be included by amendment had a fundamental bearing on the relief claimed in the plaint.

The instant dispute arose on account of the Respondent’s alleged use of the Petitioner’s mark SONY in respect of hosiery products. At the time of filing the suit for permanent injunction restraining the Defendant from using the mark SONY, the Petitioner only claimed passing off, as its trademark application in respect of apparel had not yet been granted by the Registry. Upon attaining registration, the Petitioner filed an application for amendment of plaint to include this fact as well as the cause of action of infringement. The Trial Court rejected the Petitioner’s application on the ground that it would change the nature of the suit, as the Plaintiff was not a registered proprietor at the time of filing the suit.

The Petitioner filed the instant appeal, submitting that the amendment of plaint, if allowed, will not change the nature and character of the suit, which will remain a suit for permanent injunction. It was further submitted that the Petitioner’s registration of the mark needs to be taken on record to grant complete justice in the instant dispute.

The Respondent submitted that the Petitioner wants to incorporate a new cause of action by way of amendment which is not permissible. The Respondant further argued that the registration of the Plaintiff’s mark is not essential in an action for passing off, which is what the suit had been filed for.

The Court while allowing the amendment of plaint observed that “It is well settled that the rights of the parties are normally decided on the date of suit. However, if a fact arising after the institution of the suit has a fundamental impact on the relief which the suitor is entitled to, such events must be taken into consideration to render substantial justice to the parties.”

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 Shyam Steel Industries Limited v. Shyam SEL and Power Limited and Another [APO No. 91 of 2019 With CS 63 of 2019], the Calcutta High Court (I.P. Mukherjee, J., Md. Nizamuddin, J.), vide its order dated December 24, 2019, held that there is no absolute bar on registration of a God’s name as a trademark, and allowed the Appellant’s interim injunction application.

The Appellant and Respondents are all involved in the business of manufacturing TMT bars under different variants of the trademark ‘SHYAM’. The Appellant had filed the instant suit seeking injunction against the Respondents to restrain them from using the mark ‘SHYAM’ in respect of their goods and services. The single judge had refused to grant an interim injunction to the Appellant, who accordingly filed the instant appeal.

The Appellant argued that it is the prior user and registered proprietor of the mark SHYAM, and the Respondents should therefore be injuncted from using an identical mark in respect of the same goods. The Respondents claimed that they were bona fide users of the mark and also challenged the validity of the Appellant’s registration on the ground that no exclusivity could be claimed over SHYAM under Section 9(2)(b) of the Trade Marks Act, 1999, as it is Lord Krishna’s (a Hindu deity) other name. Section 9(2)(b) mandates that a mark shall not be registered as a trademark if it contains any matter likely to hurt religious susceptibilities of any class or section of the citizens of India.

The Court observed that “there is no authority or at least no authority was shown to us, which laid down that God’s name was not registrable as a trademark.” It was held that “this court cannot say as an infallible principle of law that registration of the word ‘Shyam’ was invalid and its registration should be cancelled. The respondent has to prove, by leading cogent evidence, before the Board, that indeed the name ‘Shyam’ refers to God only, is not distinctive of the appellant, is generic and common. The respondent has not been able to establish this, even prima facie.”. Accordingly, the Court granted an interim injunction against the Respondents.

In the trademark infringement suit GSK Consumer Healthcare S.A v. EG Pharmaceuticals & Ors., IA No. 6749/2019 in CS (Comm) No. 238/2019, a Single Judge (R.S. Endlaw, J.) of the Delhi High Court vide his order dated October 31, 2019 while granting the interlocutory application (for interim injunction) has clarified that the defence of acquiescence under Section 33(1) of the Trade Marks Act, 1999 is not available against the proprietor of a registered trade mark. The Court has held that a registered proprietor cannot be non-suited by a defence of statutory acquiescence since such a defense is available only in a passing off action by an unregistered mark.

The Plaintiff instituted a suit against the Defendants to restrain them from infringing its registered trade mark OTRIVIN through adoption and use of BIOTRIVIN for identical goods by the Defendants. The Plaintiff claimed that its product was launched in the year 1956 in Finland and the earliest launch of its product in India can be traced back to the 1980s. The Plaintiff submitted that the predecessor-in-interest of the Plaintiff became aware of the mark BIOTRIVIN filed for registration by Defendant No. 3 when it was advertised (for opposition in the Trade Marks Journal) on July 1, 2007. The Plaintiff stated that while an opposition was filed against the Defendant’s trade mark application, it was dismissed as time-barred, and subsequently the application proceeded to registration. The Plaintiff submitted that it came across the Defendant’s product on online pharmacies in April 2019 pursuant to which it instituted the present suit.

A Written Statement was filed only by Defendant No. 2. The joinder of Defendant No. 1 to the suit was challenged on the ground that the latter is not concerned with the subject dispute since it is merely a manufacturer of the product under the trade mark of the Defendant No. 2. No interlocutory application was, however, filed by Defendant No.1 seeking deletion of Defendant No. 1. The joinder of Defendant No. 3 was also pointed out as being bad on the ground that it was dissolved and merged with the Defendant No. 2 vide order dated March 15, 2017 of National Company Law Tribunal, Ahmedabad. Formal deletion of Defendant No. 3 was also not sought though. 

Defendant No. 2 contended that it had been using the mark BIOTRIVIN since 2007. They further contended that the Plaintiff is aware of the manufacturing license granted to the Defendant in 2007 which was subsequently renewed in July 2012. The Defendant went on to contend that its products under the mark BIOTRIVIN are sold in the market since 2008 which is within the knowledge of the Plaintiff. Relying on this, the Defendant contended that there has been statutory acquiescence on the part of the Plaintiff so its prima facie case for an interim injunction is weak.

For ease of reference, the relevant portion of Section 33(1) of the Trade Marks Act, 1999 has been extracted below:

Section 33. “Effect of acquiescence – (1) Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark—.”

While analysing the availability of the defence of acquiescence under Section 33(1) against a ‘registered’ proprietor of a trade mark, the Court elaborated on how the statute distinguishes between a proprietor and a registered proprietor. The Court, in this regard, held that – “Section 33 refers to the proprietor of an earlier trade mark. It does not refer to “registered proprietor or proprietor of an earlier registered trade mark”. The Act makes a distinction between a “proprietor” and a “registered proprietor”, with Section 2(v) thereof defining only the registered proprietor in relation to a trade mark as a person for the time being entered in the Register as proprietor of the trade mark. Thus when Section 33 refers to a “proprietor” as distinct from “registered proprietor”, reference thereto is evidently to a proprietor of an earlier trade mark.” 

Based on this reading, the Court went on to hold that the defence of statutory acquiescence is not available against the Plaintiff since it owns a registration of its mark; that therefore the provision contained in Section 33(1) is not applicable. 

While arriving at its decision, the Court placed reliance on a judgment of the Division Bench (M. Mudgal, J. and V.J. Mehta, J.) of the Delhi High Court in the case of Goenka Institute of Education & Research v Anjani Kumar Goenka & Anr., FAO (OS) No. 118/2009, wherein the Court had observed, but by way of obiter – “…Section 33 is with reference to the right of an unregistered user and a subsequent registered user…”. The Court in this earlier case had not directly pronounced on the issue of unavailability of the defence of acquiescence for being set up against a registered mark.

The Court’s attention had been drawn to two judgments of the Bombay High Court which had taken a different view on this point.

In Emcure Pharmaceuticals Ltd. vs. Corona Remedies Pvt. Ltd., 2014 SCC Online Bom 1064, the Court had observed – “All that Section 33 says is that where, as between two registered proprietors, the later registrant is able to show acquiescence of at least five years, certain statutorily mandated consequences follow. In other cases, the plea can well be taken, the only difference being that the statutorily mandated consequences in Sections 33(1)(a), (b) and Section 33(2) would not necessarily result.”.

Neel Electro Techniques vs. Neelkanth Power Station, 2014 SCC Online Bom 663, the other judgement of the Bombay High Court discussed by the Delhi High Court, had observed – “Section 33 deals with the case of two registered trade marks, registered at different points of time. If the proprietor of the earlier trade mark (registered prior in point of time) acquiesces in the use of the later trade mark (registered later in point of time) for five years, he cannot apply to have the registration of the later trade mark declared invalid or oppose the use of the later trade mark, unless the registration of the later trade mark was not applied in good faith.” 

The Delhi High Court found itself unable to concur with the opinions of the Bombay High Court in the two afore-mentioned cases. It stated – “Section 33 is found to be designed for the protection of a registered trade mark, by saving it from an action for passing off, by providing that if the proprietor of a mark has acquiesced in use of a registered trade mark for a period of five years, he/she shall not be entitled to apply for revocation of the mark or to oppose the use thereof.”

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 Merwans Confectioners Pvt. Ltd. v Sugar Street and 2 others [CS (L) No. 1100/2019], the Bombay High Court (R.D. Dhanuka, J.), vide its order dated December 17, 2019, has held that a merely decorative and aesthetic feature without any source identifying role cannot be protected under trade dress law, thereby dismissing the Plaintiff’s interim injunction application.

The dispute arose after termination of a Franchise Agreement between the parties, whereunder the Plaintiff had franchised a confectionery store under its brand ‘Merwans’ to the Defendants. The Plaintiff claimed that it had provided drawings of the precise layout (including furniture and fixtures, colour scheme, etc.) of the outlet to the Defendants at the time of entering into the Franchise Agreement. The Plaintiff claimed that the distinctive décor of all its outlets is exclusively associated with it and forms the trade dress of its shops. It was alleged that the Defendants continued to use the said trade dress in the décor, layout and design of the shop even after termination of the franchise agreement.

The Defendants submitted that none of the equipment, cool-cabinets, counters, etc. were uniquely or proprietarily designed by the Plaintiff. The Defendants argued that they have not been using any of the proprietary/promotional/identifiable materials belonging to the Applicant. The Defendants further submitted that they have already removed or stopped using the labels, uniforms, tiles, software, etc. which formed part of the franchise agreement.

The Court made a prima facie finding that the Defendants were not using the Plaintiff’s trade dress after termination of the Franchise Agreement. The interim injunction application was accordingly dismissed and it was held that “…a product feature whose only impact is decorative and aesthetic with no source identifying role cannot be given exclusive rights under trade dress law. It is the likelihood of confusion with the total overall trade dress that is the test…The test is whether there is likelihood of confusion or deceptiveness in the minds of unwary customers irrespective of dissimilarities in the trade name.”

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 Anurag Sanghi v. State and Ors. [W.P. (Crl.) 3422/2018 and Crl. M.A. 35858/2018], the Delhi High Court, vide its judgement dated November 25, 2019, held that the criminal offence of infringement of copyright under Section 63 of the Copyright Act, 1957, is non-cognizable.

The Petitioner filed the instant Writ Petition praying for quashing of the FIR and resulting criminal proceedings against him. The FIR was registered for violation of an ex-parte injunction restraining the Petitioner from manufacturing “Lykke Knitting Needles” and thus infringing Knit Pro’s (Respondent No. 2) copyright therein. The Petitioner contended that Section 63, which provides for imprisonment from 6 months to 3 years, falls within the third category under Part II of the First Schedule to the Code of Criminal Procedure, 1973, which states that offences punishable with imprisonment less than three years are non-cognizable and bailable.

The Respondents countered that the offence falls within the second category, which provides that offences punishable with imprisonment for 3 or more years and up to 7 years, are cognizable and non-bailable.

The Delhi High Court, while considering the punishment under Section 63, observed that “the maximum term of sentence that can be imposed must be considered”, which in the instant case being three years, would render the offence cognizable. However, inspite of this obiter, the Court relied on the decisions in Avinash Bhosale v. Union of India, (Supreme Court, 2007) and State Govt. of NCT of Delhi v. Naresh Kumar Garg (Delhi High Court, 2013), according to which an offence punishable by imprisonment of upto 3 years is non-cognizable and bailable.

Thus, the Court, while admitting that the Supreme Court “has not indicated any reasons for its conclusion/observation” in Avinash Bhosale, held that the offence under Section 63 of the Copyright Act was non-cognizable, thereby quashing the FIR registered against 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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