In the matter of Cargill India Private Limited v. Gati Limited [CS (Comm) 740/2017], the Delhi High Court vide its judgment dated August 29, 2019, allowed the Plaintiff’s application for framing of an additional issue in respect of invalidity of Defendant’s registered trademark and adjourned the matter to enable the Plaintiff to take appropriate steps to initiate rectification proceedings before the IPAB.

The instant application (I.A. No. 16635/2018) under Section 124 of the Trade Marks Act, 1999 (for framing additional issue in respect of invalidity of Defendant’s registered trademark) was filed by the Plaintiff in its suit against Defendants for permanent injunction restraining passing off and infringement of its registered trademark NATURE FRESH. The Plaintiffs contended that it learnt about the Defendant’s trademark registration for ‘GATI Nature Fresh Apples’ from its Written Statement and therefore, it is necessary to frame an additional issue regarding the invalidity of the Defendant’s trademark registration.

The Defendant, on the other hand, submitted that the Plaintiff’s application was not maintainable on account of Plaintiff’s prior knowledge of the Defendant’s trademark registration through its reply to the Plaintiff’s Legal Notice. The Defendant contended that Plaintiff waived its right as it did not initiate any rectification proceedings before the IPAB, which according to the Defendant, should have been done within three months from the knowledge of the trademark registration in question.

 The Court discussed the Supreme Court’s decision in  Patel Field Agencies & Another v. P. M. Diesels Ltd & Ors., (2018) 2 SCC 112 and observed ‘…The time limit of three months prescribed under section 124(1) (b) (ii) starts after the Court has framed the additional issue. By virtue of Section 124 (3), the issue of invalidity of registered trademark would not survive to be decided in the suit, if, the Plaintiff does not raise this issue by filing the rectification proceedings within the stipulated time of three months and the plea of invalidity would be deemed to have been abandoned in the suit…’. It further held ‘…it becomes clear that the question of abandonment can be presumed only if the rectification proceedings are not filed within the period of three months from the date of raising the issue of invalidity. This is not the situation in the present case, as that stage has not occurred as of yet. Defendant’s contention that the Plaintiff has waived or abandoned its right to challenge the invalidity of Defendant’s impugned mark, as provided under Section 124 (3) of the Act is of no consequence.’

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 Emami Limited v. Shree Baidyaraj Ayurved Bhawan Private Limited [CS (COMM) 275/2019], the Delhi High Court, vide its Order dated August 26, 2019, granted a temporary injunction in favour of the Plaintiff, restraining the Defendant from using the trademark PANCHARISHTA in respect of Ayurvedic medicinal preparations. The Plaintiff had filed the suit seeking a permanent injunction restraining infringement of its mark ZANDU PANCHARISHTA, passing off, and other reliefs.

The Plaintiff submitted that the product ZANDU PANCHARISHTA – an ayurvedic digestive tonic – was launched in the year 1968 by its predecessor-in-interest. The Plaintiff placed reliance on its trademark registrations for the ZANDU PANCHARISHTA label since 1986, and the word marks ZANDU PANCHARISHTA and ZANDU PANCHARISHTA PLUS since 2010 and 2014, respectively (both claiming prior use since 1968). The Plaintiff contended that the Defendant’s product, launched in 2019 under the name PANCHARISHTA infringed the Plaintiff’s long-standing statutory rights in its registered trademarks. 

The Defendant argued that as per Ayurvedic texts, the word “Arishta” means a drug prepared using water and therefore, no monopoly can be granted over it in respect of an Ayurvedic preparation. The Plaintiff countered by submitting that though the word PANCHARISHTA may be derived from the word Arishta, it has acquired a secondary meaning due to long usage and has therefore acquired distinctiveness. The Plaintiff further argued that PANCHARISHTA is a unique and coined combination of the number 5 (in Devanagari script) and Arishta. In support of this the Plaintiff also submitted an affidavit of an ayurvedic expert, who stated therein that …“Pancharishta” is a proprietary medicine and its formulation is prepared by Research department of the Plaintiff Company. Ayurvedic text books have no reference of the word “Pancharishta” anywhere.”

The Court held that while no monopoly can be exercised over Arishta in respect of Ayurvedic preparations, PANCHARISHTA is not a generic word as it does not exist in Ayurvedic literature and has, in fact, been coined by the Plaintiff. The Court also observed that owing to over fifty years of use, the PANCHARISHTA mark has come to be associated exclusively with the Plaintiff. Placing reliance on the judgment in Cadila Health Care (2001 5 SCC 73), the Court held that a stringent test for determining the likelihood of deception and confusion would be applicable in this case. The Court held that “the consumers may purchase the Defendant’s products simply presuming that because of the use of the word PANCHARISHTA in both products, Plaintiff and the Defendant’s products are one and the same or have the same therapeutic effect.”

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 Rajesh Dalal and Ors. v. State of Maharashtra and Ors. [Criminal Application Nos. 313, 314 & 315 of 2017], the Bombay High Court vide its order dated August 16, 2019, dismissed the Appellants’ (viz. Rajesh Dalal, Make My Trip India Pvt. Ltd. and Deep Kalra) criminal applications challenging the Additional Metropolitan Magistrate’s order dated July 1, 2014  (upheld by the Additional Sessions Judge on December 14, 2016) issuing summons to the Appellants in light of a criminal complaint filed against it on grounds of, inter alia, provision of services by applying a false trademark thereto. The Court while dismissing the argument of lack of jurisdiction held that it has jurisdiction as internet users and the Respondent have suffered losses thereat.

The Respondent, M/s. Ezeego one Travels & Tours Limited, provides internet users a virtual travel marketplace under its registered trademark EZEEGO1 for which it also owns the domain name registration <ezeego1.com>. The Respondent contended that the Appellants infringed the trademark EZEEGO1 by registering various domain names which were similar to the Respondent’s mark and resultantly cheating internet users on two separate occasions (despite being put to notice of the Respondent’s rights on the first occasion).

The Appellants contended that the Additional Metropolitan Magistrate in Bombay did not have the territorial jurisdiction to entertain the complaint as mere accessibility of a universally accessible website does not lend jurisdiction to a Court. The Appellants also contended that they do not reside, work for gain or carry on business within the Court’s jurisdiction. The Appellants further contented that the registration of the alleged domain was made at Jaipur and that the Respondent did not plead suffering of any loss at Bombay. The Appellants also stated they were unaware of the Respondent’s rights in the mark and that upon request of the Respondent, the domain names were transferred to the Respondent.

The Court opined that “upon careful perusal of the material placed on record prima facie ingredients of the alleged offences are attracted and consequently an alleged offence have been disclosed”. The Court while holding that “…does not deem it appropriate to interfere with the impugned order…”, upheld the findings that “whenever the domain was registered and where the internet user as well as complaint company suffered the losses the Court has jurisdiction”.

In the matter of Dish TV India Ltd. v. Prasar Bharti [CS (COMM) 347/2016], the Delhi High Court, vide its order dated July 16, 2019, granted an interim injunction restraining Prasar Bharti from using the mark ‘DD Free Dish’ or any other mark incorporating the Plaintiff’s mark DISH. The Court, on a prima facie view, held that the Defendant’s use of the prominent and essential part of the Plaintiff’s mark amounts to infringement.

The Plaintiff, Dish TV India Ltd., claimed that it has been providing ‘Direct to Home (DTH)’ broadcasting services under the mark DISHTV since 2003. The Plaintiff further claimed that DISHTV is registered since 2003 and is also protected under Copyright law. The Plaintiff alleged that the Defendant had deliberately renamed its ‘Free to Air DTH service’ from ‘DD Direct+’ to ‘FREE DISH’ and also adopted a device of a Dish which is an “integral and distinctive element” of the Plaintiff’s trademark. The Plaintiff further contended that by incorporating ‘DISH’, which is the prominent and essential part of the Plaintiff’s mark DISHTV, the Defendant was not only infringing the Plaintiff’s mark as well as the copyright therein, but also passing off its services as that of the Plaintiff.

The Defendant contended that – (i) there is no similarity between the marks DD Free Dish and DISHTV; and (ii) ‘DISH’ is a generic term used to describe equipment which receives the satellite signals and is common to the trade of DTH broadcasting services, owing to which no exclusive rights can be claimed therein.

On the issue of genericity, the Court opined that “…(a) it is not as if “Dish” or “Dish Antenna‟ is confined to DTH service ….and, (b) “Dish” or “Dish Antenna” is not essential to DTH service”, and accordingly held that “… “Dish” is not generic to DTH service or publici juris and/or common to the trade of DTH service”. Applying the test of use by the Defendant of the prominent part of the Plaintiff’s registered mark, the Court, on a prima facie basis, held that “a clear case of infringement is made out”.

The Court also observed that owing to the prevalence of public-private partnerships and ventures, consumers or the public at large might form an opinion that the Defendant’s services under the DD Free Dish mark are being provided in association with the Plaintiff. The presence of ‘DD’ in the Defendant’s mark was held to be insufficient to prevent such confusion.

In MRF Limited v. Metro Tyres Limited [CS(COMM) 753/2017], the Delhi High Court vide its interim order dated July 1, 2019, dismissed MRF Limited’s application to restrain Metro Tyres Limited from airing an allegedly similar advertisement. While holding that substantial resemblance would be sufficient to constitute copyright infringement, the Court held that the Defendant’s advertisement was “neither substantially nor materially or essentially similar” to the Plaintiff’s advertisement.

The Plaintiff averred that the Defendant’s advertisement imitated the sequencing, form, treatment and expression of Plaintiff’s advertisement. Relying on R.G. Anand v M/s Deluxe Films and Ors. (1978) 4 SCC 118, the Plaintiff argued that the test for copyright infringement of a cinematograph film is by way of the overall impression of an average viewer, and not a minute dissection that underscores differences.

The Defendant submitted that a prerequisite to establish copyright infringement of a cinematograph film is that the allegedly infringing work be made by a process of duplication. The Defendant added that ‘mere resemblance’ to the original work would not constitute copyright infringement. The Defendant further contended that the judgment in R.G. Anand was inapplicable, as it pertained only to literary works.

Holding that the R.G. Anand decision was not confined to literary works, the Court concluded that “‘to make a copy of the film’ does not mean just to make a physical copy of the film by a process of duplication, but it also refers to another film which substantially, fundamentally, essentially and materially resembles/reproduces the original film” and added that Courts would need to “compare “the substance, the foundation, the kernel” of the two advertisements to consider whether one was “by and large a copy” of the other and whether an average viewer would get an unmistakable impression that one work was a copy of the other”.

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.

Copyright: ALG India Law Offices LLP.