In Raj Rewal v. Union of India & Ors.CS(COMM) 3/2018, the Delhi High Court, in its judgment dated May 28, 2019, held that the special rights of an author under Section 57 of the Copyright Act, 1957 cannot be interpreted as enabling the author to restrain an owner of land from demolishing an architectural work situated on such land.

The Plaintiff filed the instant suit before the Delhi High Court pleading that the Defendants’ action of demolishing the Hall of Nations and Nehru Pavilion (both of which were the Plaintiff’s historic architectural works), was contrary to the special rights provided to the Plaintiff under Section 57 (b) of the Copyright Act, 1957. The Plaintiff sought a mandatory injunction against the Defendants (viz. Union of India and Indian Trade Promotion Organization) to compensate by recreating the Plaintiff’s work of architecture so demolished, in the same location or any other location equally prominent as the earlier location. 

The Defendants argued that Section 57(b) of the Copyrights Act confers rights only in respect of distortion, mutilation or modification of a copyright and is not concerned with its total destruction. The Defendants also submitted that the provision further authorizes only restraint or claim for damages against distortion, mutilation or modification of a copyright and does not provide for the author of the copyright to seek mandatory injunction for re-creation thereof.

The Court observed that ‘… the owner of a building, even if an acclaimed piece of architecture, cannot be restrained from demolishing the same and making a new building in its place.’

While dismissing the plaintiff’s suit, the Court took the view that ‘Section 57(b) has to be necessarily interpreted as entitling the author / owner of a copyright to only restrain the owner / occupier of the building from dealing with the work of architecture in the building to make the building look otherwise than as designed by the author / architect… the embargo is only to making the copyrighted work look something other than as created and not against effacing the copyright work.’.

In Sun Pharma Laboratories Ltd. v. Ajanta Pharma Ltd.CS (COMM) 622/2018, the Delhi High Court, vide its judgment dated May 10, 2019, has held that the test to determine infringement and passing off for nutraceutical products is the same as the test applicable for pharmaceuticals, and granted an interim injunction to the Plaintiff against the Defendant’s use of the trademark GLOTAB.

The Plaintiff (Sun Pharma Laboratories Ltd.) initiated the instant suit before the Delhi High Court for passing-off and infringement of its registered trademark GLOEYE, under which it sells a nutraceutical product used for age-related dimness of vision and diabetic retinopathy. The Plaintiff’s main submission was that the Defendant’s product under a deceptively similar trademark GLOTAB, also being a nutraceutical product consumed for the same ailment, may be confused for its product under the trademark GLOEYE. It was further submitted that nutraceuticals being medical products, are to be treated on par with pharmaceuticals and hence, a stricter test for determining trademark infringement and passing-off as laid down in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 for pharmaceuticals must be applied to nutraceuticals as well.

The Defendant contended that the products under both the marks GLOEYE and GLOTAB are prescription drugs, and accordingly there shall arise no likelihood of confusion. The Defendant further submitted that that the prefix ‘GLO’ is common to the trade and the two marks when compared as a whole are not deceptively similar.

Upon a careful consideration of law and facts, the Court observed that nutraceuticals, like pharmaceuticals, are highly regulated products which cannot be manufactured without a license. The Court perused various factors (viz. licences, physical and physiological factors, diseases and disorders) to conclude that the nutritional food supplements and nutraceuticals are akin to medicines and pharmaceutical preparations. Accordingly, the Court held that ‘…the mere fact that these products are nutritional food supplements or nutraceuticals and are not pharmaceuticals in the strict sense is not convincing enough for adoption of a less stringent test. Pharmaceuticals and nutraceuticals are used in respect of diseases and disorders. They are both meant to address specific ailments. Both these products are meant to improve the health of patients. The mere fact that nutraceuticals are termed so, as they contain ingredients derived from plants, does not mean that a lenient test needs to be adopted in respect of these products. The effects of the products and the consumers of the products all being similar in nature, the test applicable to pharmaceutical products would be applicable even to nutraceuticals…’

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 The Ritz Hotel Limited v. Canada Fly Consultancy [TM No. 116/18], the Saket (Delhi) District Court, vide its judgement dated January 3, 2019, granted the Plaintiff a permanent injunction against the Defendant’s use of the marks RITZ and RITZ PARIS.

In its suit for infringement and passing off, the Plaintiff relied on its trademark registrations for RITZ and common law rights in RITZ and RITZ PARIS. In addition to its alleged use of the Plaintiff’s company seal on employment offer letters, the Defendant had allegedly been using the domain name <www.ritzparis007.com> and the email address hr@ritzparis007.com for providing overseas employment consultancy and placement services.

The Defendant, duly served, did not file any Written Statement, nor did it appear in (any of) the hearings. Upon closure of the Defendant’s right to file WS, the Plaintiff moved an application under Order VIII R 10 seeking a decree, to which also no Reply was filed by the Defendant.

Noting that “All the documents filed on behalf of the plaintiff are duly supported with an affidavit and there is no reason to disbelieve the averments and contents thereof”, the Court held “In the opinion of this court, the defendant has no real prospect of defending the claim, as it has neither entered appearance nor filed its written statement. Further the plaintiff the registered user of the trade marks in question. Consequently, plaintiff is entitled to a decree for injunction in his favour and against the defendant.”

In holding so, the Court referred to Satya Infrastructure Ltd. and Ors v. Satya Ifra & Estates Pvt. Ltd in which the Delhi High Court had taken the view that “…no purpose will be served in such cases by directing the plaintiffs to lead ex parte evidence in the form of affidavit by way of examination in chief and which invariably is a repetition of the contents of the plaint…I fail to fathom any reason for according any additional sanctity to the affidavit by way of examination in chief than to the affidavit in support of the plaint or to any exhibit marks being put on the documents which have been filed by the plaintiffs and are already on record.”

While decreeing the suit in favour of the Plaintiff, the Court granted it “punitive cum compensatory” damages of INR 100,000.

 

In the matter of H&M Hennes & Mauritz AB and Ors. v. HM Megabrands Pvt. Ltd. and Ors. [CS (Comm.) No. 707/2016], the Plaintiffs sought a permanent injunction restraining the alleged infringement and passing off of their registered trademarks and H&M by the Defendants’ use of , HM MEGABRANDS and HM. Both parties’ use of the marks was with respect to retail of clothing and accessories through physical and online stores. The Plaintiff’s application for interim relief was being taken up by the Court.

The Defendants pleaded that the name HM Megabrands was derived from the first two alphabets of the names of Hashim Merchant (Defendant No. 4) and his brother Hamza Merchant (Defendant No. 3) back in 2011, at which time the Plaintiffs had ‘no recognition in India’. The Defendants also argued that though the alphabets ‘H’ and ‘M’ in the two respective sets of marks were the same, the Defendant’s addition of ‘MEGABRANDS’ distinguished the marks from one other.

In its May 31, 2018 decision, while granting the Plaintiff interim relief, the Court observed “The defendants…did not choose to set up or carry on business in their own names but claim to have chosen the first alphabets of their name and surname…It is also not as if the defendants initially set up business under their full names…and which businesses over a period of time came to be known as ‘HM’.”

Noting that the word Megabrands is “…a descriptive and a generic word…used generally to describe any big or successful brand”, and that the Defendants had “…not disputed…that the plaintiffs were in the market from at least over two decades prior to the defendants coming into the market”, the Court took the view that “…‘Megabrands’…rather than distinguishing, reinforces the impression in the mind of the consumer that the business of the defendants is the business of the plaintiffs which vis a vis the defendants at least was a megabrand on the date when the defendants commenced business.”

The Court further observed that “The only other distinguishing feature is the symbol ‘&’ between the alphabets ‘H&M’ in the mark of the plaintiffs… Not only is the symbol ‘&’ in the mark of the plaintiff written in a much smaller font than the font in which the alphabets ‘H&M’ are written but even otherwise a mere presence of the said symbol, in my view, is unlikely to distinguish the said alphabets in the mark of the plaintiffs and in the mark of the defendants.”

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.

On February 22, 2018 in the matter of M/s Lyca Productions v J. Manimaran and Ors., the Madras High Court Division Bench set aside the Single Bench’s ad interim injunction order against Lyca Productions’ use of KARU as part of its original motion film title.

J. Manimaran registered its film title KARU in 2011 with a film association in Chennai, and Lyca Productions later registered its film title LYCAVIN KARU in 2017 with another film association in Chennai. J. Manimaran filed a suit of copyright infringement seeking an injunction restraining Lyca Productions from using ‘KARU’ as part of its film title.

The Division Bench observed that “The title, which may be a commonly used word, cannot be protected under the law of copyright.” It further observed that “…it is not in dispute that there is no originality in adoption of the title “KARU”, which is a common Tamil word, which means ‘foetus’ and figuratively ‘concept’…” The Division Bench held that the earlier registration of the film title ‘KARU’ with a film association does not confer the right to exclusive use of such title, to the exclusion of other producers.

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.