Wednesday, 16 November 2016

India: Delhi High Court celebrates 50 years of existence

On October 31, 2016, the High Court of Delhi completes half a century of its existence. It stands proudly poised as the flagship High Court leading India’s Justice administration system to a new futuristic, technology driven, dynamic juridical era with the clear vision of a “guarantee of an independent and efficient judicial system which upholds the rule of law and denies no one access to fair and equal justice”. It has embraced modern technology to introduce efficiency and greater transparency so as to earn the trust and confidence of the people. The High Court of Delhi has guarded the Constitution of India and its values by repeatedly emphasizing that equality before law and equal protection of the laws underpin the very rights bestowed upon us by our common humanity.

The High Court of Delhi came into existence on October 31, 1966 upon enactment by Parliament of the Delhi High Court Act, 1966. It exercises jurisdiction over the Union Territory of Delhi (now, National Capital Territory of Delhi). Prior to October 31, 1966, the territory now covered by the High Court of Delhi was under the jurisdiction of the High Court of Punjab (now High Court of Punjab & Haryana).
The High Court of Delhi began functioning from a residential bungalow at 4, Maulana Azad Road. In 1967, it shifted to Travancore House on Kasturba Gandhi Marg and then to Patiala House, New Delhi. The foundation stone for its current premises at Sher Shah Road was laid by the then President of India, Dr. Zakir Hussain on November 4, 1968. Originally there were 3 buildings – one main court building (Block ‘A’) and two adjacent but integrated administrative blocks (‘B and C’) on each side of block ‘A’. The main court building (block ‘A’) has 24 court rooms. The façade of the main building has murals by Satish Gujral, the renowned painter, sculptor and muralist. The buildings were completed in 1976 and were inaugurated by the then President, Shri Fakhruddin Ali Ahmed on September 25, 1976.

Recent Endeavors
One of the endeavors of the High Court of Delhi has been and is to promote and strengthen mechanisms for alternate dispute resolution including mediation and arbitration. The court has made pioneering and significant strides in this direction. It has been in the forefront of developing Alternate Dispute Resolution (ADR) mechanisms.
Ten years ago, in 2006, it set up its own Mediation and Conciliation Centre called the “Delhi High Court Mediation & Conciliation Centre” which is also known as “Samadhan”, a name given to it in 2008. The center has a state-of-the-art infrastructure and has 263 trained and experienced mediators drawn from the bar. Since 2006, it has resolved 6,707 cases has also additionally resulted in the resolution of 4,671 cases which were not referred to mediation. Many cases are settled even at the pre-litigation stage, thereby avoiding litigation altogether.

The Delhi International Arbitration Centre (DAIC) is another institution developed by the High Court of Delhi. It is the first court annexed arbitration centre in India. It came into existence on November 25, 2009. The idea behind it was to facilitate parties to resolve their disputes through arbitration as an efficient and cost-effective alternative.

Find below a few important judgments of the Court on Intellectual Property Laws in the past year, which have been covered in our earlier newsletters:
  1. Delhi High Court grants interim injunction against Britannia for “deceptively similar” packaging
  2. Delhi High Court restrains YouTube from displaying Offending Videos against Tata Sky.  
  3. Delhi High Court orders that ‘artistic works’ related to ‘design’ can only be protected under the Design Act.
  4. Division Bench of Delhi High Court denies removal of Google, RMPIL, Amazon etc. as Parties from Blueberry Books’ Copyright Infringement Case
  5. Highest Damages Awarded By Delhi High Court in IP Matters
  6. Trademark Infringement Case - London Dairy Vs. London Derry
  7. Delhi High Court grant relief to Apple for the term ‘Splitview’
  8. Maruti Udyog Wins Trademark Battle against Maruti Piston before IPAB
  9. Delhi High Court Orders Only the Brews from Scotland to be called Scotch
  10. “Pehla Nasha*” Not Pehla Enough for Radio Mirchi

Rupin Chopra & Bijit Das from S.S Rana & Co., conduct a workshop on Trademark & Copyright Law, at Lovely Professional University, Jalandhar

Rupin Chopra & Bijit Das from S.S Rana & Co., conducts a workshop on Trademarks & Copyright at Lovely Professional University. Mr. Rupin Chopra & Mr. Bijit Das, Associate Advocates of S.S. Rana & Co., recently on November 12, 2016, conducted a workshop on ‘Trademark & Copyright Law’ at Lovely Professional University, Jalandhar.

The workshop focused on a basic introduction to Trademark & Copyright for students of Law, as well as Management, with especial focus on how to conduct a trademark search in India and worldwide, etc. The talk initially focused on the basics of trademark & copyright law, followed by the importance and practical aspects of Trademark Searches in India and abroad.

Lovely Professional University is a semi-residential university college in North India created under the Punjab State Private University Act, 2005, and recognized by UGC under Section 2(f) of UGC Act, 1956. LPU offers around 200 programmes and courses at diploma, undergraduate, graduate, postgraduate, and doctoral levels. The university has more than 30,000 students graduating every year. The university has received the recognition, approval and membership of the national statutory bodies UGC, NCTE, PCI, IAP, COA, BCI, AIU and international memberships of Association of Commonwealth Universities (UK), International Association of Universities (France), Accreditation Council of Business Schools and Programs (USA), The Institute of International Education (New York), amongst others.
Essay Competition in celebration of Children’s Day: Results Announced!!

In an effort to spread awareness about the importance of education and innovation amongst children, IP4Kids, a CSR Initiative of S.S. Rana & Co., organized an Essay Competition on Children’s Day on the theme, “Education and Innovation: Towards a better India“

Young minds were encouraged to focus on the theme of Children’s Day, and hence were free to write on topics related to –
  1. Favorite Scientist
  2. Favorite Innovation
  3. Importance of Education
  4. Right to Education
The winners of the Competition are –

Category I
  1. Mahima Gupta, of Vision International School, who wrote on the topic, “Importance of Education”.  
  2. Ayushi Sareen, of The Mothers International School, who wrote on the topic, “Education and Innovation: towards a better India.”  
Heartiest Congratulations on behalf of IP4Kids and S.S. Rana & Co. to the winners in Category I who won prizes worth ₹ 3000, and ₹ 2000 respectively.  

All participants shall receive a participation certificate from the firm.  

We look forward to further such participation in the future.

Thursday, 20 October 2016

India: Bombay High Court wishes happy ever after to Secondshaadi

In a recent judgement delivered by the Bombay High Court, in the case of People Interactive (I) Pvt. Ltd vs. Vivek Pahwa and Ors, Justice G.S. Patel dismissed the notice of motion of the Plaintiff ('s) to restrain the Defendants’ from using the domain name

Background of the case-

In the instant case, People Interactive (India) Private limited (hereinafter referred to as the ‘Plaintiff’), belongs to the People Group of Companies with several well-known websites, brands and trade marks, including the marks and In 1996, Siddharth Mehta, the Plaintiff’s predecessor-in-title adopted the mark in relation to online matrimonial services. The Plaintiff acquired Mehta’s rights in the mark and the domain name under an Assignment Deed dated October 9, 2001. The Plaintiff thereon, used the mark and domain name to provide online matrimonial and matchmaking services. The label mark and the word mark were registered in 2004 in class 42. The domain name has had 12.4 million visitors, won many awards and acquired substantial goodwill and reputation.

Vivek Pahwa and others (hereinafter referred as ‘Defendants’) launched their website with the domain name on January 25, 2006. The said website caters to those seeking to marry again, having a very different market position from that of the Plaintiff. The said mark was used almost for 8 years which gained much popularity within their segment.

Brief facts of the case-

In July 2007, it was brought to the attention of the Plaintiff that the Defendants are hosting a website which showcases a similar business profile as that of the Plaintiff using the mark ‘Shaadi’ and ‘Shadi’.

Pursuant to this, the Plaintiff sent a cease and desist notice to Vivek Pahwa (hereinafter referred as Defendant no.1)

Pursuant to this, the Defendant declined to comply.

It was on September 28, 2013, 6 years after the Defendant no.1’s reply to the Plaintiff’s cease and desist notice, that the Plaintiff sent it another demand, pursuant to which, Accentium web Private Limited (hereinafter referred as Defendant no.2) replied on October 15, refuting the Plaintiff’s claim, and specifically contending that the words ‘shaadi’ and ‘shadi’ are generic’. The defences in the correspondence are also the defences to the present Motion.

Plaintiff’s Submissions-

The counsel for the Plaintiff submitted that a domain name has all the characteristics of a trade mark. The Defendant’s domain name is deceptively similar to the Plaintiff’s registered marks, and The learned counsel submitted that, the Plaintiff’s mark has now gained a ‘secondary meaning’, and further conceded that the mark is not inherently distinctive: ‘Shaadi’ is a translation of the Hindi word for marriage, hence, it is purely descriptive of the services in question. He further submitted that this does not, by itself preclude the Plaintiff from claiming a monopoly over the mark, since it is well-settled that even a descriptive mark can attain distinctiveness, and is, therefore, capable of being used as a trade mark relying upon the judgement in T.V. Venugopal v. Ushodaya enterprises Ltd[1], Godfrey Philips India Ltd v. Girnar Food and Beverages Pvt Ltd[2], ITC Ltd v. Nestle India[3], Indchemie Specialities Pvt Ltd v. Intas Pharmaceuticals Ltd[4], Hi-Tech Pipes Ltd v. Asian Mills Pvt Ltd [5], Info Edge (India) Pvt Ltd v. Shailesh Gupta[6].

According to the counsel, the word ‘shaadi’ is the ‘essential feature’ of the Plaintiff’s mark, and when in relation to matrimonial services is associated with the Plaintiff’s website alone. This is evidenced by the substantial promotional expenses and revenue generated, numerous awards, its reviews carried in leading magazines, newspapers and on web-portals, which shows that the Plaintiff’s mark is ubiquitous and well-known. Therefore, he submitted that Defendant no.1’s adoption of the domain name is not bona fide, but merely an attempt to ride the wave of the Plaintiff’s success.

Defendant’s Submissions-

The Counsel for the Defendants submitted that the word ‘shaadi’ is generic and commonly descriptive and the word lends itself to no meaning other than its ordinary lexical one. ‘Shaadi’ (synonym to ‘vivah’) means matrimony or wedding. Hence, is generic. He also submitted, that there are any number of entities that use the word to provide similar service. He further submitted a list of 29 websites that all use “shaadi” in their domain name, and 10 companies that also prefix ‘shaadi’ to their names. Relying on the judgement in British Vacuum Cleaner Company Limited v. New Vacuum Cleaner Company Limited[7] wherein, it was held that there is a distinction between ordinary descriptive words and a ‘fancy word’, one that does not primarily relate to the article, but perhaps to the person manufacturing it. There can be no restraint against the use of general words. The decision in Office Cleaning Services Ltd v. Westminster Window and General Cleaners Ltd [8] supports his contention.

The fact is that there are many ventures, including online ones, that use the word ‘shaadi’ as part of their corporate or trading name or as their domain names. The test in such cases must be whether rivals have attempted to use the same commonly descriptive or generic expression.

The counsel further averts that, references to sales and promotional expenses may be used to establish the acquisition of reputation and goodwill, i.e. to show the popularity of a mark. Mere use and statements of sales and expenses do not, of their own, establish the acquisition of a secondary meaning relying upon the judgement in Stokely Van Camp, Inc & Anr v. Heinz India Pvt Ltd [9] wherein , it was held that mere use of the mark alone does not necessarily translate in the mark obtaining ‘secondary distinctive meaning’. Therefore, the counsels submitted that, the proof of sales and promotional expenses is always required of goods or services in the second category, ‘merely descriptive’ expressions; for these are not ordinarily registrable without such proof. Therefore, the use itself does not establish distinctiveness. The extent to which a mark has lost its primary meaning and the extent to which it has acquired a secondary one are conclusions to be drawn from evidence.

The counsel further submitted, that the Defendants began operating their website in 2008. The Plaintiff, by its own admission, was aware of the contesting Defendant’s website since 2007. It sent the contesting Defendants a cease and desist notice on July 27, 2007 to which the Defendants responded refusing to do so. Then, it was on September 28, 2013 i.e., 6 years after the initial correspondence, that the Plaintiff sent the contesting Defendants another notice. That, too, met a denial. For those intervening years, the Plaintiff sat by idly and allowed the contesting Defendants to build their trade until it felt threatened. The contesting Defendants were too insignificant to merit legal attention or action; and then when the contesting Defendants operations have attained a certain critical mass, the Plaintiff feels such threat.
Plaintiff’s Prayer -  
  • The Plaintiff seeks to restrain Defendant no.1 to 4 (collectively, “the contesting Defendants”) from using the domain name in any manner;
  • The Plaintiff also seeks to restrain the contesting Defendant’s from “passing off” their website as that of the Plaintiff.
  • The final relief sought is to restrain Defendant no.5, a webhost and a domain name registrar, from hosting the contesting Defendant’s website, and to direct it to de-register or terminate the contesting Defendant’s domain name registration.
Courts observations in the case-

It was brought to the notice of the Honorable Court that the contesting Defendants place the word ‘second’ prominently above ‘’. The domain name is, a sufficient variation. There is also a device of what is presumably a leaf placed by the word ‘second’. That, below the expression ‘’ is the tagline “Start a New Life”, which is in no manner similar to the Plaintiff’s tagline “The world’s No.1 Matchmaking Service”. The font and stylization of the contesting Defendant’s mark is completely different from that of the Plaintiff.
The Court observed that the real difficulty is that is an address, which can be seen as the internet equivalent of a physical or terrestrial address. It directs a user to a particular part of the Web where a domain name registrant stores and displays his information, and offers his services. A physical mailing address can never be a “trade mark”, properly so-called. “10 Downing Street” or “1600 Pennsylvania Avenue” are not trade marks. A web address is, technically, a mnemonic, an easy-to-recall replacement for a complex string of numbers that represents the actual Internet Protocol address (or addresses) where the website in question is to be found.

The Court further went on to state that every domain name that incorporates a trade mark enjoys the same protection as the mark, neither more nor less. In other words, use as a domain name does not diminish a trade mark. The proposition (often attributed to the case of Yahoo Inc. v Arora and Anr), that a domain name is never ‘merely’ an address, seems to the Court to be incorrect.

The defendant had contended that the expression was generic, incapable of protection, that evidence was required and that there was no evidence of bad faith.

Another point of observation brought up by the Court was that once the registration of a domain name happens, it constitutes an address in cyberspace where the registrant’s website can be reached. Thus the coordinates and the location of a domain in cyberspace will be governed by the internet local authority and a domain can be easily identified by such coordinates. Trademark registration can also be cancelled if improperly obtained or the failure to use a trade-mark may also result in its cancellation. The failure to renew the registration of a domain name will result in loss of the domain name.

There is an additional complication to the Plaintiff’s secondary-meaning argument. When the Plaintiff claims that “” has acquired a secondary meaning, they must proof what precisely was the primary meaning now said to be lost. The Court held that the primary and only meaning was nothing more than a destination on the internet and that there is no evidence of having acquired a secondary meaning.
Courts Judgement-

The Court held that, prima facie, the Plaintiff's mark is generic and commonly descriptive. Being generic, commonly descriptive and an Internet address, the slightest differentiation is enough. Absent any proof of passing off or deceit, the Court did not find any reasons to grant the Plaintiff an injunction.
Pertaining to the rule that, acquiescence is a species of estoppel, and that makes it both a rule of evidence and a doctrine in equity, the Honorable Court held that, where a party with knowledge of its rights stands silent and watches another deal with the property in a manner inconsistent with the claimant’s right; and where the claimant makes no objection while the act continues, progresses and grows, he cannot later be heard to complain. A trade mark proprietor who not ignorant of his rights, sits on his hands and watches his competitor grow in the market, taking no action while the other does not, can claim no exclusivity. He must be deemed to have affirmed his rival’s use of the mark.

Hence, according to the opinion of Justice G.S. Patel, for the foregoing reasons, the Notice of Motion fails. Thus, it is dismissed, with no order as to costs.
[1] [2011] 4 SCC 85
[2] [2004] 5 SCC 257
[3] MIPR 2015 (2) 40
[4] 2015 (63) PTC 391 (Bom)
[5] (2006) 126 DTL 353
[6] ILR (2002) 1 Delhi 2
[7] 1907 (2) Ch. D. 312, 328
[8] (1946) 63 R.P.C 39, 43
[9]2010 (44) PTC 381 (Del)

Vikrant Rana speaks at FICPI’s 16th Open Forum about the relevance of ISO-27001 certification for a Law Firm

Vikrant Rana, Managing Partner of S.S. Rana & Co. recently spoke at the 16th Open Forum organized by Fédération Internationale des Conseils en Propriété Intellectuelle (hereinafter referred to as FICPI) at St. Petersburg, Russia. FICPI is a non-political, international, professional body of intellectual property professionals, i.e., patent trademark attorneys, in private practice.

The 16th Open Forum programme began on Wednesday, October, 5, 2016, with the welcome reception at the New Stage of the Alexandrinsky Theatre, where Forum delegates and guests had the unique opportunity to enjoy a ballet performance and a cocktail reception. The Forum continued with its business meetings on Thursday and Friday. A plenary session was followed by the usual “three streams” format, intermingled with a break out workshop dealing with a specialized patent topic.

Vikrant spoke on the session titled, “Quality Control – Using Quality Assurance Methods to bring your Firm to the Next Level”. At S.S. Rana & Co., having embraced the technological advancements and changes in legal practices over the years, Vikrant has spearheaded the Firm's ISO 27001 certification project, which culminated in the Firm being certified 27001 certification by DNV-GL in 2015 and thus becoming one of the few Indian Law Firms to do so.
His talk focused on what an IP firm can reasonably expect if it introduces quality assurance methods or starts to document its internal processes according to ISO 27001. He initially introduced the need and the theory behind quality assurance methods and, from firsthand experience based on his own Firm's journey of obtaining the ISO certification, gave examples how these methods may be implemented to make the internal work-flow more transparent, less error-prone, faster and less costly.

Monday, 19 September 2016

India: Delhi High Court grants interim injunction against Britannia for “deceptively similar” packaging

In this case, ITC Limited (hereinafter referred to as the Plaintiff) filed a suit against Britannia Industries Ltd (hereinafter referred to as the Defendant) to permanently injunct the latter from violating the packaging/trade dress rights of the Plaintiff’s products.

Brief facts and background of the case

The Plaintiff had launched a new product called “Sunfeast Farmlite Digestive – All Good” biscuit in February 2016. The packaging consisted a combination of the colors yellow and blue.. The Defendants launched a similar product under the name “Nutri Choice Digestive Zero” biscuit a few months later (July 2016). The packaging of the aforesaid product was also done in yellow and blue . The parties to this suit have previously been entangled in legal wrangles too. The Defendant had filed a complaint against the Plaintiff before the Advertising Standards Council of India (ASCI).

In the present case, the Defendants had offered to replace the blue color in their packaging by another shade of blue, and the same was deemed unacceptable by the Plaintiff. The Defendants stated that the color blue is an integral part of their packaging, as it supposedly reflects the “World Diabetes Day”. As there was no consensus between the parties regarding the issues at hand, the suit went to trial on September 2, 2016.

Plaintiff’s Submissions

The Plaintiff asserted three unique and distinctive features of their packaging. Details of the same are as under:
  • The brand name “Sunfeast” is written on the top-left hand side of the label on the yellow colored portion with the trade mark “Farmlite‟ underneath it, alongwith the mark “Digestive - All Good‟ situated below “Farmlite‟.
  • The color scheme used in the trade dress is Yellow and Blue. The left part of the packaging is in a yellow background and the right side of the packaging is in blue and both colors are separated by a curved line.
  • The picture of the biscuits appear on the right front side of the label which is depicted with a wheat spike/sheaf of wheat with grains lying at the bottom of an individual wheat biscuit with the words "No Added Sugar/Maida" written on the biscuit in a bold white font. The words Sugar and Maida are separated by a white horizontal dividing line between the two words.

The Plaintiff averred that the Defendant has copied various elements of their trade dress, including the color combination. They also submitted that the trade channels were identical and in furtherance to that also submitted sales and revenue as well as advertising figures to substantiate their claims.

Defendant’s Submissions

The Defendant claimed that they held 66% of the market share, whereas the plaintiff had a meagre 1.8%. They also averred that the predominant color of the packaging of their product is yellow, and that blue is merely a secondary color used to indicate a connection to diabetes. .

The Defendant stated that while there might be a similarity in the two packagings, when viewed as a whole there was no case made out for passing off. To that end, the defendant distinguished their packaging as follows:
  • The word “Britannia” itself appeared prominently against a red background in one corner of the impugned packaging.
  • The word “Nutri Choice‟ is featured prominently in their packaging, and the same is not present in the Plaintiff’s packaging.
  • That the shades of blue and yellow used in the impugned packaging are different from that of the Plaintiff’s.

The Defendant averred that a distinction has to be drawn between an action for infringement, and an action for passing off.

They claimed that the three essentials of passing off (establishing goodwill, demonstrating misrepresentation by Defendant to public, and establishing the loss suffered) were not demonstrated by the Plaintiff. They further averred that color per se is not an element of distinctiveness for identifying the source of the products. It was also averred that the Plaintiff had failed to establish distinctiveness and secondary meaning with respect of their packaging. 

Issues Involved
  • The difference between an action for infringement, and that of passing off.

The Hon’ble Court referred to the landmark judgement of Kaviraj Pandit Durga Dutt Sharma v Navaratna Pharmaceutical Laboratories to elucidate on this issue – the difference being that the use by the Defendant of the trade mark of the Plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement.
  • The elements of Passing Off.

With regard to this issue, the Court referred to the landmark judgment of the House of Lords in Reckitt & Colman Products Ltd. v. Borden Inc, wherein the elements of passing off were definitively established as - 
  • Establishing goodwill,
  • Demonstrating misrepresentation by defendant to public
  • And establishing the loss suffered

The Court’s Decision

The Court observed that the sales and turnover figures submitted by the Plaintiff in support of their claims is a significant factor whilst examining the reputation of the Plaintiff’s product. 

The Court also opined that secondary meaning or distinctiveness can be acquired in a short span of time. Even more so for eatables. They also observed that with respect to eatables like biscuits, the color scheme of the packaging plays an important role in the consumer making an initial choice and in enabling a discerning consumer to locate the particular brand of a manufacturer.

It was held that the Defendant’s packaging was deceptively similar to that of the Plaintiff’s product, and that the three elements of passing off are fulfilled in the present case.

As per the Court’s reasoning, the balance of convenience is in favor of the Plaintiff, and that granting an interim injunction would cause far less damage to the Defendant as their product has been in the market for only two months.

The Court thereby granted an interim injunction, and restrained the Defendant from using any variant of color blue in the packaging. But they allowed the Defendant to use any other distinctive color instead or to use the same packaging as used in the international markets for the same product.

Sunday, 18 September 2016

India: DIPP makes Statutory Licensing Scheme Applicable to Online Broadcasting

In a recent paradigm shift regarding the status of internet broadcasting companies, the Department of Industrial Policy and Promotion (hereinafter referred to as “DIPP”) vide office memo dated September 5, 2016 gave directions to liberally interpret sections 31D and 2 (ff) of the Copyright Act 1957 (hereinafter referred to as the ‘Act’), so as to include internet broadcasting companies within the ambit of the aforesaid sections.

Section 31D of the Act is one of the most important provisions of the Act, as it deals with compulsory licensing. Even though the terminology used in the aforesaid section reads as “Any broadcasting organization desirous of communicating to the public...”, a close reading of the entirety of the section reveals that this provision (which was introduced by way of the 2012 amendment) is largely directed towards TV and radio broadcasting companies. This is reiterated by a reading of clause 3 of section 31D, which reads as – “The rates of royalty for radio broadcasting shall be different from television broadcasting and the Copyright Board shall fix separate rates for radio broadcasting and television broadcasting.
This Office Memo issued by the DIPP is of considerable importance to the online broadcasting community. This is bound to have a significant impact on activities like online live streaming of various media, although the effect of the same is yet to be seen in action. One very clear cut inference that can be drawn from this memo is that now various rights holders of media, like music, might have to approach the Copyright Board for fixation of royalties. This represents a paradigm shift between music right holders and internet broadcasting companies, as it at least theoretically decreases the balance of power between the two sides mentioned herein.