In Unilin Beheer B.V. Vs. Balaji Action Buildwell [CS (Comm.) 1683/2016], the Delhi High Court vide its judgment dated January 29, 2018, dismissed the defendant’s application for stay of proceedings in suit for patent infringement and held that, IPAB and the Civil Court have concurrent jurisdiction to deal with the issue of validity of patent and there could be no ipso facto stay of the proceedings in the patent infringement suit under Section 113 of the Patents Act, 1970, on account of the pending revocation proceedings before IPAB.

In the instant case, the Plaintiff (Unilin Beheer B.V) had initiated a suit for infringement of its proprietary floor covering (consisting of hard floor panels) against the defendant. The defendant sought to stay the proceedings of this suit, contending that prior to institution of this suit, the Defendant had approached the Intellectual Property Appellate Board (IPAB), where its application for revocation of the Plaintiff’s patent on the grounds of lapse of registration, is still pending.

The Court held that ‘…the proceedings in this suit are not to be stalled…The Patents Act, vide Section 64… has vested the jurisdiction to revoke the patent in the IPAB as well as in a Counter-Claim in a civil suit for infringement of the patent… Section 107 of the Patents Act confers concurrent jurisdiction in the IPAB and the Civil Court to grant the relief of revocation.’

While dismissing the Defendant’s application, it concluded that ‘there is no difference between taking a defence of invalidity on the same grounds on which revocation can be sought and making Counter-Claim for revocation but it is deemed appropriate to grant liberty to the defendant therefor. The defendant is thus permitted to withdraw the revocation proceedings pending before IPAB and to file a Counter-Claim in this suit.”

In the matter of Tips Industries Ltd. vs. Wynk Music Ltd. and Ors. on April 23, 2019 the Bombay High Court granted temporary injunction against Wynk Music, restraining it from infringing the copyright of Tips Industries, held by it in over 25,000 songs. The Court comprehensively rejected the claim that online music streaming services are eligible for being granted statutory licenses for “broadcasting” under Section 31D of the Copyright Act.

The plaintiff, Tips Industries Ltd., owns copyright over a repository of music/sound recordings, which had been licensed to the defendant, Wynk Music Ltd. (an online streaming service provider), by Phonographic Performance Ltd. Upon expiry of the said license, Tips and Wynk entered into negotiations for a new license. However, negotiations broke down when Wynk stated that it is entitled to a statutory license under Section 31D, being a “broadcasting organization”. Tips challenged Wynk’s invocation of Section 31D, and sued Wynk for infringement of their exclusive copyright in sound recordings, under Section 14(1)(e) of the Act.

The issue central to the case was the applicability of Section 31D to online broadcasting services, wherein Wynk argued that its streaming services are subsumed within “radio broadcasting”. The Court rejected this interpretation and held that Section 31D as well as the rules framed thereunder make it clear that statutory licensing was intended to cover only “radio” and “television” broadcasting, and not internet broadcasting. The Court observed the legislative history of Section 31D and inferred that though the legislature was aware of internet streaming services at the time of drafting the provision, they intentionally chose not to include the same within the scheme of Section 31D. It was held that “…the provisions of Section 31-D read with Rules 29 to 31 coupled with the legislative history preceding the passage of Copyright Amendment Act, 2012 clearly support the submission that Section 31-D contemplates only television and radio broadcasting and not internet broadcasting.”

Notably, it was also held by the Court that Wynk’s services of enabling downloads in lieu of a subscription fee fell within the scope of “commercial rental” which was not included under the “fair use” exceptions and amounted to Copyright infringement. While finally deciding the matter, the Court held that “Considering the fact that I have come to a conclusion that in so far as the download and purchase feature of the Defendants’ activities are concerned the same amount to infringement of the Plaintiff’s rights…and that the provisions of Section 31-D of the Act are not applicable to internet broadcasting, it is necessary to grant reliefs in favour of the Plaintiff.”

In the matter of Royal Dryfruit Range vs. Royal Suvidha [Commercial I.P. Suit (L) No.548 of 2019] the Bombay High Court granted an interim injunction restraining the Defendant from using the marks ROYAL SUVIDHA, ROYAL FALOODA MIX or any other mark featuring ROYAL with respect to dry fruits.

The Plaintiff filed a suit for infringement as well as passing off of its registered trademark . The Plaintiff claimed to be using the mark since 2012 as the trade name of its dry fruit business, and objected to the Defendant’s operating a dry fruits shop under the tradename ROYAL SUVIDHA about a 100 yards away from the Plaintiff’s establishment. The Plaintiff alleged that the Defendant had put up a board with ROYAL SUVIDHA DRYFUITS outside its shop, with the word ROYAL highlighted and the word SUVIDHA smudged, indicative of the Defendant’s intention to pass off his business as that of the Plaintiff’s. The Plaintiff’s case was that ROYAL was a “…leading, essential, prominent…” feature of its mark, and the Defendant’s use infringed it.

The Defendant argued that the Plaintiff does not have exclusive rights to the word ROYAL. It pointed out that there were nearly 22 others whose registered marks featured ROYAL, and that the Plaintiff had not tried to enforce against any of them. 

Taking the view that the Defendant was estopped from contending the word ROYAL was publici juris, the Court noted “I fail to understand how can defendant itself apply for registration of the mark ‘ROYAL SUVIDHA’ where the word ‘ROYAL’ is prominent… If according to defendant, the word ‘ROYAL’ is generic and plaintiff cannot claim exclusivity to the word ‘ROYAL’, certainly the same principle would apply to defendant and defendant cannot claim to be the proprietor of a trade mark used or proposed to be used by him where the word “ROYAL” is prominent.”

While granting interim relief to the Plaintiff, the Court observed that “…even if plaintiff does not take action, that does not give right to defendant to state that unless plaintiff takes action against whole world, he would continue to commit infringement of plaintiff’s trade mark or pass off his goods as that of plaintiff.”

In the matters of M/s Crocs Inc USA v M/s Bata India & Ors [RFA(OS)(COMM) 22/2019] and 5 others[1], on May 29, 2019 the Delhi High Court Division Bench, in a common interim order, ruled in favour of the Appellants (‘Crocs’). The interim relief granted was to the effect that during the pendency of Crocs’ appeals against the Single Judge’s order dismissing as not maintainable its six trademark passing off lawsuits (which sought to restrain defendants from copying the shape of their footwear), the order would not constitute precedent such as would prevent them from filing similar suits against other parties.

Crocs had previously filed six trademark passing off lawsuits pertaining to the shape of its footwear as a trademark, and also six other suits against the same Defendants for infringement of its registered design in relation to its footwear. The Single Judge dismissed all six trademark suits as not being maintainable, taking the view that the alleged passing off pleaded in the plaints was with respect to subject matter that was registered as a design. The Single Judge concluded that this was not permissible, on account of a reading of the Full Bench ruling in Mohan Lal v. Sona Paint & Hardwares [(2013) 55 PTC 61 (Del) (FB)] and the subsequent Five Judge Bench ruling in Carlsberg Breweries v. Som Distilleries [256 (2019) DLT 1].

Crocs appealed, contending that the Single Judge had erred in holding that the majority view in Mohan Lal as modified by the Full Bench in Carlsberg was that no passing off action would lie in respect of a registered design used as a trademark, which was in fact the minority view. Crocs also sought a limited interim relief that during the pendency of the appeals, the Single Judge decision not constitute a precedent, so as to avert the imminent in limine dismissal of its pending and proposed suits against other parties.

The Court granted Crocs this interim relief, observing that “…learned Single Judge has…understood…that the majority in Mohan Lal did not recognize the protectability of a registered design when used as a trademark. Prima facie this understanding by the learned Single Judge…does not appear… to be correct.”

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[1] M/s Crocs Inc USA v. M/s Liberty Shoes Ltd. & Ors. [RFA(OS)(COMM) 23/2019]; M/s Crocs Inc USA v. Aqualite India Limited & Anr. [RFA(OS)(COMM) 24/2019]; M/s Crocs Inc USA v. M/s Bioworld Merchandising India Ltd. & Anr. [RFA(OS)(COMM) 25/2019]; M/s Crocs Inc USA v. Relaxo Footwear Ltd. [RFA(OS)(COMM) 26/2019]; M/s Crocs Inc USA v. M/s Action Shoes Pvt. Ltd. & Ors. [RFA(OS)(COMM) 27/2019]

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.

In the matter of Teleecare Network India Pvt. Ltd. vs. Asus Technology Pvt. Ltd. and Ors. [CS (COMM) 731/2017], the Delhi High Court, in its order of May 28, 2019 granted an interim injunction restraining mobile manufacturer Asus Technology Pvt. Ltd. from selling and advertising mobile phones and mobile accessories under the trademarks ZEN and ZENFONE.

The Plaintiff filed a suit for infringement of its registered trademarks

 as well as for passing off. The Plaintiff claimed to have been using the marks ZEN and ZEN MOBILE since 2008 for its mobile phones, smart phones, tablets and accessories. It was alleged that the Defendants subsequently, in 2014, adopted a deceptively similar mark for their mobile phones.  

The Defendants argued that ZEN was commonly used in the trade, placing reliance on multiple third-party registrations featuring ZEN in class 9. The Defendants also pointed out that the Plaintiff had itself admitted (in a response filed during the prosecution of its trademark application) before the Trademarks Registry that the word ZEN is generic and that no one could claim exclusive rights over it.

The Court observed “…though ZEN is a generic word qua a school of Buddhism, yet it is not a generic mark with regard to mobile phones and tablets as the said word has no connection or correlation with mobile phones or tablets… Consequently, the adoption of the mark ZEN by the Plaintiff with respect to mobile phones and tablets, with which it has no correlation, is arbitrary.”  

On the Plaintiff’s allegedly having admitted genericity of the mark, the Court was of the view that “Once a mark is registered, the certificate of registration has to be seen as it is. Post grant of registration of the mark ZEN, neither the Examination Report … nor the plaintiff’s reply are relevant documents.” Taking a prima facie view that the Defendant’s adoption was in bad faith, the Court granted the Plaintiff an interim injunction.