Wednesday, 20 September 2017

India: Delhi High Court issues directions to the Trademarks Registry for time bound issuance of Certified copies



Recently in the twin cases of Registrar of Trade Marks vs Kapoor Saws Manufacturing Co & Ors[1] ; and Registrar of Trade Marks vs Sonik Industries & Ors[2], the Registrar of Trademarks was issued a summons in the original suit before the trial court, to produce certain records of the office. However, the same was not complied with by the Registrar of Trademarks.

Since the Registry failed to comply, a proclamation under Order XVI Rule 10 of the Code of Civil Procedure, 1908, was passed, by which the Registrar was required to be physically present before the Court to produce the requisite records. The Registrar then filed the present revision petition in the Delhi High Court against this proclamation order, arguing that since the proclamation order was issued, certified copies of the records had been sent to the Respondents, i.e. Kapoor Saws Manufacturing Co and Sonik Industries (Petitioners to the original suits).

The Counsel for the Registrar of Trademarks further stated that a joint interpretation of Sections 137 and 138 of the Trademarks Act, 1999 makes it clear that, certified copies of records are enough as evidence, without requirement of original records or the appearance of the Registrar as witness. As it is, the Office of the Registry of Trademarks are situated at different locations in the country and are very small with skeletal staff whose work is affected if they are also required to appear as witness before the courts.

The Counsel for the Respondents argued that in countless instances the application for certified copies remains pending before the Registrar’s office for long periods, causing serious inconvenience to litigants and also making it necessary to summon records as evidence.

The Court after hearing all the concerned parties Hon’ble Justice Rajiv Sahai Endlaw issued the following guidelines to the Office of the Registrar of Trademarks –
     
  •   If not already in place, nominate one Nodal Officer of each branch to receive applications for certified copies and to issue certified copies.
  • To, within two months of today, announce on the website of the Registrar of Trade Marks, the particulars i.e. name/designation, address, phone number/s and email address of the Nodal Officer responsible for accepting and entertaining applications for certified copy and to issue certified copies for each office of the Registrar of Trade Marks.
  • To, within six months of today, make a provision, if not already in existence, for making online applications for certified copies.
  • To, within six months of today, make a provision on the website of the Registrar of Trade Marks for disclosure of the status of the applications for certified copies including any deficiency or defect therein required to be remedied by the applicant and/or the date when it will be ready for collection.
  • To, till the aforesaid is functional, as an interim measure, make a provision for sending intimation, to the applicant/s for certified copies, of deficiencies / defects required to be rectified via e-mail, SMS and other modes of communication.
  • To, endeavour to make provision for online payment of the fee and other charges if any for certified copies.
  • To issue certified copies within one month of the receipt of a duly completed application.
  • To indicate on the certified copy, whether it has been prepared from the original of the document or from a copy of the document.
  • To explore the possibility of making an endorsement of “original seen and returned” on the copies on the record, originals of which are returned.
  • To ensure, that the certified copies are legible and wherever the original / copy on the record of the Registrar of Trade Marks has any colour other than black and white, the certified copy reflects such colour.
  • To, if the documents of which certified copies is sought have been lost or misplaced, intimate the same to the applicant within one month as aforesaid of the application for certified copy having been made.”


Justice Endlaw concluded by saying, “Once the Registrar of Trade Marks has implemented the aforesaid, it is expected that neither will any of the parties to the litigation nor any of the Courts, where such litigations are pending, would mechanically issue summons to the Registrar of Trade Marks as witness, requiring it to produce records unless reasons are recorded as to why the purpose of summoning cannot be served by obtaining certified copies and tendering the same in evidence.”


[1] C.R.P. No. 146/2015 & CM No. 21927/2015 (for stay)
[2] C.R.P. No. 29/2017 & CM No. 5066/2017 (for stay)

India: Andhra Pradesh High Court follows in the footsteps of Delhi High Court with regard to mass abandonment of trademarks



In the last week of March 2016, the Indian Trademarks Registry (hereinafter referred to as the ‘Registry’) ordered the abandonment of an unusually high number of trademark applications. The said number of applications had been abandoned for lack of prosecution wherein examination report was claimed to have been dispatched by the Trademarks Registry but not received by the applicants/agents or wherein reply to examination report had been filed but not considered by the Registry.

Further, on April 4, 2016, the Office of the Controller General of Patents, Designs and Trademarks (hereinafter referred to as the ‘Office of the Controller’), released a public notice which was a step taken in the interest of justice, especially after the receipt of complaints from various stakeholders, who stated that the said applications were treated as abandoned without giving applicants a proper opportunity to be heard.

To redress all the parties who were adversely affected by all such scenarios, the Office of the Controller had provided a further opportunity till April 30, 2016, to file all such representations and reply to all such examination reports. It stated that if indeed it is found that parties are adversely affected by it, then the Office will take appropriate action necessary to remedy it.

However, on April 5, 2016, a writ petition was filed by the Intellectual Property Attorneys Association & Others, in which Hon’ble Justice Mr. Manmohan of the Delhi High Court, after hearing the contentions from both the sides and noticing the startling figures of disposal within a very short period of time, stayed the orders of abandonment passed by the Registry on or before March 20, 2016. The Learned Judge further added that the Office of the Controller shall not treat any Trademark application as abandoned without proper notice to an affected party as provided under Sections 21, 128 and 132 of the Trademarks Act, 1999.

In compliance with the order of the Delhi High Court, the Office of the Controller released a public notice on April 11, 2016, stating that the abandonment order are being kept in abeyance and the applicants and their authorized agents are free to file the reply to examination reports containing the Office objections by means of comprehensive e-filing services of trademarks at their official website. 

Moving on, in January 30, 2017, the Trademark Registry issued a public notice ordering abandonment of high number of trademark applications. The said notice aimed at clearing back log of cases. However, the Applicants were given one last opportunity of sending a scanned copy of reply to Examination Report on or before February 28, 2017, failing which the applications will be deemed to be abandoned.

Aggrieved by the order of the Trademark Registry, Mr. K. Hermaprakasa Rao filed a petition with the Andhra Pradesh High Court under Section 151 of the Code of Civil Procedure, 1908, against the January 30 public notice.

The Petitioner placed reliance on the order of the Delhi High Court dated April 05, 2017, wherein Hon’ble Justice Manmohan Singh stayed the order of abandonment passed by the Trade mark Office on or after March 20, 2016 and ordered not to treat any trademark application as abandoned without prior notice to the affected party.

Against the arbitrary order of the Trademark Registry, Hon’ble Justice Mr. Challa Kodanda Ram directed the Office of the Controller to not treat any trade mark application as abandoned without prior notice to the affected party, as provided under section 121, 128 and 132 of the Trademarks Act, 1999.

Order of the Andhra Pradesh High Court, can be accessed over here.

India: Delhi High Court restrains Patanjali from using its alleged disparaging Ad – Yet Again!!


A day after the Bombay High Court restrained Patanjali from airing its alleged disparaging television advertisement for its bathing soaps in a case where Hindustan Unilever were the Petitioners, the Delhi High Court, on a petition filed by Reckitt Benckiser has issued an injunction against Patanjali, thereby restraining Patanjali from airing the concerned advertisement.

Lifebuoy” and “Pears” are two very well-known soap brands of Hindustan Unilever and the “Dettol” brand of soaps is one of Reckitt Benckiser’s most globally well-known trademarks. In the said Patanjali advertisement, the narrator urges the public to shun soaps like “Lifejoy”, “Tears” and “Dhitol” as they are chemical based and are used by movie stars!!

These decisions by the Delhi and the Bombay High Court is another addition to the growing list of cases regarding comparative advertising and disparagement thereto in the last few years. The Courts seem to have followed the recent decision of the Bombay High Court in the dispute between AMUL and Hindustan Unilever Limited regarding Amul’s advertisement, wherein it was observed that Amul’s advertisement was disparaging to an entire class of products, i.e. Amul’s “real ice-cream” against “frozen desserts” which were depicted as allegedly harmful to consumers due to the presence of “vanaspati/vanaspati tel”.

A parallel can be drawn from the above instance and the present case between Patanjali v HUL and Reckitt Benckiser – “Herbal soaps” v. alleged “Chemical Soaps”. It is interesting to see whether the respective High Courts will adjudicate upon the same lines as the earlier judgment by the Bombay High Court.

In the earlier mentioned recent case between AMUL and Hindustan Unilever Limited by the Bombay High Court, the judgment was in line with the precedents laid down in earlier cases like Pepsi Co., Inc. And Ors. vs Hindustan Coca Cola Ltd. (regarding Pepsi’s famous tagline “Yeh Dil Maange More”). In the said AMUL case, AMUL was deemed to have made a false statement regarding the constituents of “frozen desserts”. Similar questions can be raised in the present case of Patanjali – which states that the soaps “Lifejoy”, “Tears” and “Dhitol” are “chemical based”, and impliedly Patanjali’s soaps are not, which is up for debate as the same appears to be an unverified assertion as depicted in the impugned advertisement. And the above assertion might deceive or potentially deceive ordinary customers who might start believing that all soaps with any “chemicals” are harmful, thereby influencing them to shun soaps like “Lifejoy”, “Tears” and “Dhitol” and instead buy Patanjali’s soaps which by alleged comparison is not “chemical based”

There is also a possibility that the Advertising Standards Council of India (ASCI) might take issue against Patanjali’s concerned advertisement, which is bound to heap further misery on the Baba Ramdev led brand. 

India: Delhi High Court on the question of first owner of copyright?



Recently, the Delhi High Court in the case of Neetu Singh vs. Rajiv Saumitra, while revisiting Section 17 of the Copyright Act, 1957, granted an interm injunction to Neetu Singh (hereinafter referred to the ‘Plaintiff’) since Rajiv Saumitra and others (hereinafter collectively referred to as the ‘Defendants’) did not place on record any document to show that Neetu Singh was acting as an employee of the Defendants when the literary works were created. 

Brief Facts:

The Plaintiff filed the present suit praying for a decree of permanent injunction restraining the Defendants from publishing, distributing and selling the literary work ‘English for General Competitions’. The Plaintiff is a renowned author engaged in the business of providing services in relation to ‘education, training & educational consultancy in the field of engineering, medical, para-medical, dental, nursing, marketing, management and information technology. Defendant No. 1, Mr. Rajiv Saumitra is the husband of the Plaintiff, and runs and manages Paramount Coaching Centre Private Limited (Defendant No. 2). Defendant No. 3 is the publishing house that prints books and notes for Defendant No.1.

The Plaintiff states that she started an education and training institute titled 'Paramount Coaching Centre' in 1982 which earned much goodwill and reputation in the market. Around 2006 the Plaintiff married Defendant No.1, who was a teacher at the said coaching centre. In order to expand the business, the Plaintiff and Defendant No.1 formed and incorporated a company in the name and style of 'Paramount Coaching Centre Pvt. Ltd' on November, 30, 2009, with Plaintiff and Defendant No.1 as its Directors. During the progress as a trainer/ academician/ educational consultant, the Plaintiff decided to write books on various subjects so as to bridge the gap between the instructional and teaching material available in the market and the actual needs of the students for understanding the concepts in the relevant subjects including those required for success in competitive examinations. After working and researching on various subjects, compiling educational data, question banks along with answers and from her own skill, labour and hard work, the Plaintiff wrote and authored several books under the titles √čnglish for General Competitions-From Plinth to Paramount Vol-I, Rasayan Vigyan- Samanya Pratiyogita Hetu, Jeev Vigyan-Samanya Pratiyogita Hetu, Bhartiya Arthvyavastha-Samanya Pratiyogita Hetu, etc. 

Contentions of the Plaintiff 
  •  The Plaintiff claims that the above referred literary work is the original work of the Plaintiff created and authored for the first time and on applications filed she has been granted copyright certificates in the literary works.
  •  The said books were written and authored by the Plaintiff between 2012 to 2014 during a period when the Plaintiff was married to Defendant No.1 and the copyright was secured by the Plaintiff to the knowledge of Defendant No.1 without any objection from him
  • The Plaintiff further claimed that she published the aforesaid books through her proprietary concern 'Paramount Reader Publication' and thereafter 'Paramount Reader Publication OPC Private Limited' was formed and incorporated on January 29, 2015. The said Paramount Reader Publication was a one person company and was given the right to publish the books authored by the Plaintiff to the exclusion of any other party. The rights to publish books was never licensed, transferred or assigned to any person including Defendant No.1 or 2 by the Plaintiff.
  • After May 2015 the relationship between the Plaintiff and Defendant No.1 got soured and they were involved in several civil cases as well as criminal complaints including concerning control of business of Defendant No.2.
  • The grievance of the Plaintiff is that one of the books authored by her titled as 'English for General Competitions - From Plinth to Paramount' was authored by the Plaintiff on or about May 2012 and was an instant success in the market. The book was initially published in July 2012 and thereafter in 2014 and 2016. It was rated as the best seller on the 'Amazon' website and is an excellent guide in case of competitive examination. The Plaintiff was granted copyright in the said literary work vide certificate No. L- 62916/2015. Neither the Defendant No.1 nor any other person has till date challenged her copyright in the literary works published. In and around December 2015, the Plaintiff learnt that Defendant No.1 was illegally copying and publishing certain books authored by the Plaintiff. Invoking Section 63 of the Copyright Act, the Plaintiff filed a criminal complaint at Mukherjee Nagar Police Station where after Police seized around 6000 incriminating copies. Further, the Plaintiff also filed a complaint under Section 63 of the Copyright Act read with Section 420/485/486 and 120 of the Indian Penal Code with the learned CMM, Mukherjee Nagar.
  • In June, 2016, the Plaintiff learnt that Defendant No.1 in connivance with Defendant No.2 published its first lot of books under the title "English for General Competitions - From Plinth to Paramount". The said book of the Defendants contains no mention of any author in the book and the book is a verbatim copy of the Plaintiff's book under identical title and the graphic representations of two mountains has also been copied by the Defendants in toto with a slight color variation. Thus, an ordinary unwary student would be deceived and mislead into believing that the book in fact originated from the Plaintiff and to confuse the students further the Defendants have priced the book at 150/- while the Plaintiff's book is being sold at 300/- per copy.
  • The Plaintiff further contends that she being the author of the literary work and there being no contract of service between the Plaintiff and Defendant No.2 in terms of Section 17 of the Copyright Act, ownership of the literary work vests with the Plaintiff. Further, since the Plaintiff owns registration of the copyright, the same is a prima facie evidence of ownership, and hence, the Defendants are liable to be restrained from publishing, selling the books authored by the Plaintiff.
  • Learned Counsel for the Plaintiff further submits that there is no material with the Defendant to show that Defendant No.2 was the employer of the Plaintiff thus claiming to be the owner of the copyright in terms of Section 17 (c) of the Copyright Act. No money has been shown to be paid to the Plaintiff. Further assignment if any in a literary work has to be in writing as per Section 19 of the Copyright Act and in the absence thereof there has been no assignment of the literary work by the Plaintiff who is the author of the work. 

Contentions of the Defendants 
  • In response to this claim of the Plaintiff, the Defendant No.1 & 2 filed a written statement and a counter claim. In the written statement and the counter claim the case of the Defendants in a nutshell is that the Plaintiff is not the exclusive owner/author of the book. The Plaintiff authored/compiled the books with the help of a team while she was admittedly working as a Director of Defendant No.2 from the year 2012 to 2014 and even as per the Plaintiff the relations between the Plaintiff and Defendant No.1 soured in May 2015. Thus, the Plaintiff cannot claim any copyright in the books which were authored by and on behalf of the Defendant No.2 who employed its entire team including the Plaintiff who was then one of the Directors of Defendant No.2.
  • It is the case of the Defendant No.1, that he was running a coaching centre in the name and style of M/s. Paramount Coaching Centre at Dr. Mukherjee Nagar, Delhi as a sole proprietorship concern when in July 2005, the Plaintiff came in contact with Defendant No.1 and sought financial assistance. Defendant No.1 allowed Plaintiff to take English classes in his coaching centre. Slowly on being lured and on the insistence of the Plaintiff, the Defendant No.1 converted Paramount Coaching Centre into a private limited company with Plaintiff and Defendant No.1 as its two Directors, as minimum two Directors were required as per the Companies Act, 1956. On March 12, 2006, the marriage between the Plaintiff and Defendant No.1 was solemnized on the Plaintiff furnishing an affidavit on oath that she was a spinster at the time of marriage, though the fact is that she was earlier married. Thus, after conversion of proprietorship concern of Defendant No.2 to private limited company, the Defendant No.1 retained his status as Managing Director but gifted 50% of the shareholdings to the Plaintiff and no consideration was paid to the Plaintiff. The Plaintiff along with the family members started controlling the key positions and in conspiracy with her other family members incorporated companies like Paramount Reader Publication OPC Pvt. Ltd. and thereafter M/s. K.D. Campus Pvt. Ltd. in early 2015.
  • The Plaintiff entered into a competing business with Defendant No.2 despite remaining the Director of Defendant No.2 and started transferring the business of Defendant No.2 to her aforesaid individual companies. Constrained by the acts of the Plaintiff, Defendant No.1 & 2 filed a Civil Suit wherein injunction was passed in favor of Defendant No.1 and against the Plaintiff and an appeal thereon was withdrawn by the Plaintiff in view of the settlement arrived at between the parties.
  • Relying upon the admissions of the Plaintiff in FAO (OS) 60/2016, wherein the Plaintiff demanded salary from the Defendant showing that the Plaintiff was an employee of the Defendant No 2, and contended that with an educational qualification of B.Sc. LLB, the Plaintiff cannot have individually authored the number of books, and thus, the stand of Defendant No 1 & 2 in the written statement and counter affidavit that the Plaintiff is not the exclusive author but has written and compiled the books with the team members of Defendant No. 2 is probabilized.  
  • The Counsel for the Defendant while admitting that the Plaintiff was a Director of the Defendant No. 2 when the books were written stated that the Plaintiff had a fiduciary duty as a Director which is greater than that of an agent and the ownership for the books vested in Defendant No 2 on whose behalf the Plaintiff and other team members authored the books.  


Decision of the Court


Section 17 - First owner of copyright - Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein.

Provided that-
(a) in the case of a literary, dramatic or artistic work made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first owner of the copyright in the work in so far as the copyright relates to the publication of the work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the purpose of its being so published, but in all other respects the author shall be the first owner of the copyright in the work;

(b) subject to the provisions of clause (a), in the case of a photograph taken, or a painting or portrait drawn, or an engraving or a cinematograph film made, for valuable consideration at the instance of any person, such person shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;

(c) in the case of a work made in the course of the author s employment under a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;

[(cc) 52 in the case of any address or speech delivered in public, the person who has delivered such address or speech or if such person has delivered such address or speech on behalf of any other person, such other person shall be the first owner of the copyright therein notwithstanding that the person who delivers such address or speech, or, as the case may be, the person on whose behalf such address or speech is delivered, is employed by any other person who arranges such address or speech or on whose behalf or premises such address or speech is delivered;]

(d) in the case of a Government work, Government shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;

[(dd) 53 in the case of a work made or first published by or under the direction or control of any public undertaking, such public undertaking shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein.
 

  • While referring to Section 17 of the Copyright Act, 1957, the Court said that save and except proviso ‘c’ where a work is made in the course of the author’s employment under a contract of service or apprenticeship to which clause ‘a’ or clause ‘b’ does not apply the employer shall, “in the absence of any agreement to the contrary” be the first owner of the copyright therein.
  • However, the Court noted that the Defendants have not placed on record any material to show that the literary work was authored as a part of the duties and obligations of a Director of Defendant No.2. In this regard neither any agreement nor the articles or memorandum of association of the company has been placed on record. In the absence of any terms and condition describing that the literary work was also a part of the duties and obligations of the Plaintiff in her capacity as a Director of the Defendant No.2, the plea of the Defendants based on the decision of the Supreme Court in the cases of Ram Pershad vs. The Commissioner of Income-Tax[1] and V.T. Thomas vs. Malayala Manorama Co.[2], cannot be accepted.
  • On the issue of fair use, the Court reiterated its stand in the case of The Chancellors, Masters and Scholars of University of Oxford & Others vs Rameshwari Photocopy Service & Others[3], where the Division Bench of the Delhi High Court distinguished the use of the copyrighted work for the purpose of teaching/studies and for commercial purpose. In the present case the Defendants, after making the copies of the study material which is in the form of the books, is selling the same to the students. Thus, the activity of the Defendants is commercial and for the purposes of profit making.
  • In view of the above, Hon’ble Ms. Justice Mukta Gupta granted an interim injunction in favor of the Plaintiff and against the Defendants.





[1] (1972) 2 SCC 696
[2] AIR 1989 Kerala 49
[3] 2016 (235) DLT 409

Tuesday, 5 September 2017

India: “Building Trademarks” and the Right to Click Pictures

The very definition of a trademark under Indian law stresses the need to be “graphically represented”, i.e. in a two-dimensional form. Section 2(1)(zb) of the Trade Marks Act, 1999 defines a trademark as -

“…a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others…”
Such a mark may include: “…a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.”[1]

These requirements exist for entirely practical reasons. Representations must clearly demonstrate the nature of the mark and show each feature clearly enough to permit proper examination, and thereafter, must allow the ordinary consumer to comprehe
nd what is being claimed as a trademark. For a non-traditional trademark, such as a colour, shape, sound or smell, the application must include a concise and accurate description of the trademark, whether as a written description, or in the form of a picture. This description is not a mere formality and in fact plays an essential role when considering the role of the mark in trade.

However, with changes in society, technology and the paradigms of representation, what constitutes a trademark has been evolving over the last few decades, and perhaps has even more evolving to do. The Indian trademark law has already recognized three-dimensional or shape marks, as well as the packaging and “trade dress” of goods. The recently announced Trade Mark Rules, 2017, have taken a further step by including “sound marks” within the ambit of what may now qualify as a trademark. Rule 26 of the new Trade Mark Rules now provides for the representation of sound marks as applicable trademarks. In this respect, a sound mark application may be submitted “…in the MP3 format not exceeding thirty seconds’ length, recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations”. Thus, we see that even with regard to sound marks, graphical representation has not been completely done away with. The sound will need to be represented “graphically” in the form of musical notations.

Yet another milestone in Indian trademark law was achieved with reputed newspapers recently claiming that Taj Mahal Palace Hotel in Mumbai became the first building in India to achieve trademark protection for its architectural design.[2] While the provision to copyright architectural plans and layouts (which we shall discuss at length subsequently) has been around for quite some time, ‘trademarking ‘buildings and other architectural designs has been a hotly debated topic all around the world, with the principal question being whether they qualify for such protection, and what the granting of such rights to an architectural structure would entail. The following is a tabular representation of the registration/application numbers –


The Taj Mahal Palace Hotel may be the first building to be granted trademark protection in India, but several landmark buildings around the world, principally in the United States of America have already achieved this distinction. A few such examples are -

 Under the American Lanham Act, architectural works are also eligible for registration. Therefore, the USPTO’s procedure provides for registration of an architectural structure as a trademark if “the three-dimensional configuration of a building is able to be registered only if it is used in such a way that it is or could be perceived as a mark.[3]

In the evolution of the criteria of “graphical representation” of trademarks, the next significant step is being taken in the European Union, where the requirement of “graphical representation” is being done away with altogether! The EU Trademark Reform Package, which came into effect in March, 2016, now provides that national trademarks and European Union trademarks (EUTMs) shall from now on consist in:

any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
(b) being represented on the register, in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

The natural implication of this is that it will now become much easier for brand owners to apply not only for colors, three-dimensional shapes, sounds and scents as trademarks, but it also opens up new avenues for the eventual registration of marks in the form of holograms or even movement marks, such as in the form of GIFs!

From a practical point of view, though, there will remain uncertainties and technical obstacles to the protection of unconventional trademarks.  These obstacles are inherent to the current filing system for trademark applications, the examination process, and the need for a mark to be distinctive. Even though the assessment of eligibility of non-traditional trademarks will indeed be a challenge, it is exciting to ponder upon the new trademarks that are likely to come into being as a result of these revolutionary changes. 

So, what is the right all about?  

Ever since the registration certificate was issued on May 17, 2017, the story was widely covered in mainstream media with suggestions being made by some media houses that henceforth royalty will need to be paid for taking a photograph of the building. Filtering out the obvious element of sensationalism in the news as reported by the mainstream media, a closer look at the registration document shows that the registration covers “services for providing food and drink; temporary accommodation’. In effect, the building design/image cannot be used in respect of services for which the registration is obtained without authorization from the owner.

What happens if a third party commercially exploits the image e.g., to make coasters, fridge magnets or let us say postcards with image identical or similar to the registered mark. Will the registration recently granted help? The answer is - it will be persuasive, however, the owner of 'Taj Mahal Palace' hotel will need to establish its reputation and goodwill, that is, rely upon its common law rights that exist independent of registration to stop a third party from copying its trade mark. As per the Indian trademark law, the current registration only grants exclusive rights in relation to services for which registration has been granted. Therefore, ideally Indian Hotels Company should have also filed applications in Class 14, 16, 21, and 25,etc, to enlarge its statutory right and prevent others from commercially using the said images in printed matter, souvenirs or other products in that class.  Thus, by necessary inference, tourists are very safe to take photos with the ‘Taj Mahal Palace’ hotel in the background during their next trip to Mumbai as long as the same are not for commercial use.   

A case for panorama rights? 

To move the debate away from trademark law, it is pertinent to mention over here that the European Union Copyright law has a provision, colloquially called ‘Freedom of Panorama’, that permits taking photographs and video footage and creating other images (such as paintings) of buildings and sometimes sculptures and other art works which are permanently located in a public place, without infringing on any copyright that may otherwise subsist in such works, and the publishing of such images. It limits the right of the copyright owner to take action for breach of copyright against the creators and distributors of such images. It is an exception to the normal rule that the copyright owner has the exclusive right to authorize the creation and distribution of derivative works. The phrase is derived from the German term Panoramafreiheit ("panorama freedom").

Directive 2001/29/EC of the European Union provides for the possibility of member states having a freedom of panorama clause in their copyright laws[4]. Panoramafreiheit is defined in Article 59 of the German Urheberrechtsgesetz[5], and in the United Kingdom, Section 62 of the Copyright, Designs and Patents Act, 1988, states that “a copyright in a building (sculptures, models for buildings and works of artistic craftsmanship) is not infringed by (a) making a photograph or film of it or by (b) making a broadcast or a visual image of it.[6]

However, the law in France is not as liberal as its counterparts in Germany and the UK. Article L122-5 of the French Code of Intellectual Property only provides for a ‘limited’ freedom of panorama for works of architecture and sculpture. The code authorizes “reproductions and representations of works of architecture and sculpture, placed permanently in public places (voie publique), and created by natural persons, with the exception of any usage of a commercial character[7]. The limits to freedom of panorama in France have a drastic effect on Wikipedia articles about French architecture. Wikimedia Commons editors routinely delete any images of recent French architecture. For example, on February 1, 2017, the image of the new Philharmonie de Paris concert hall by architect Jean Nouvel, opened in 2015, was deleted as a violation of freedom of panorama. There is no clear image of the Louis Vuitton Foundation building, opened in Paris in 2016; only a poor quality image where the building is unidentifiable, and another where it mostly hidden by trees.

Moving westwards from the continent, in Canada, Section 32.2 (1) of the Copyright Act states that, “it is not an infringement of copyright for any person to reproduce, in a painting, drawing, engraving, photograph or cinematographic work, an architectural work, provided the copy is not in the nature of an architectural drawing or plan, or a sculpture or work of artistic craftsmanship or a cast or model of a sculpture or work of artistic craftsmanship, that is permanently situated in a public place or building[8].

Finally, in the United States, the Copyright Act of 1976, states that, “the copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.”[9]

            With regard to India, the Copyright Act, 1957, also provides for exception to copyright infringement. Though the phrase “Freedom of Panorama” is not expressly mentioned in the statute itself, but a constructive interpretation of Section 52 (1) (s) and (t) together gives Indian law the scope for Freedom of Panorama. While Section 52 (1) (s) provides for an exception in so far as making or publishing of a painting, drawing, engraving or photograph of a work of architecture, Section 52 (1) (t) extends a similar right as against sculptures and works under Section 2 (c) (iii) i.e. “any other work of artistic craftsmanship”. This is where the panorama exception in India can be appreciated. Whereas most of the above quoted European and American legislations are subject to qualifications like non-commercial use, as it only allows for freedom of panorama if the copyrighted work is put to use for non-commercial or educational purposes, the Indian law is not subject to such qualifications.


[1] Section 2(1)(m), Trade Marks Act, 1999.
[2] Indian Trademark Application Nos. 3386350 and 3386351.
1031&context=njtip;  (fn 125.) United States Patent and Trademark Office, Trademark Manual of Examining Procedure § 1301.02 (c), available at   http://www.uspto.gov/web/offices/tac/tmep/ .
[4] Article 5(3)(h) of 2001/29/EC
[5] §59 UrhG (Germany)
[6] Section 62 of the United Kingdom Copyright, Designs and Patents Act, 1988
[7] Article 5, Section 11 of Code on Intellectual Property
[8] Section 32.2. (1) of the Canadian Copyright Act
[9] 17 U.S. Code § 120(a)

Monday, 4 September 2017

India: Supreme Court directs Prashar Bharati not to re-transmit Live Sporting Events to Private Cable Operators

In a recent judgment delivered by the Supreme Court of India, Hon’ble Justices Ranjan Gogoi and Navin Sinha, upheld a ruling of the Delhi High Court and said that the live feed received by Prasar Bharati, from content rights owners is only for the purpose of re-transmission of the said signals on its own terrestrial and DTH (Direct to Home) networks and not to Cable Operators so as to enable the Cable TV operators to reach such consumers who have already subscribed to a cable network.

Brief facts

  • The Board of Control for Cricket in India (‘hereinafter referred to as ‘the Respondents’) is the approved national level body holding virtually monopoly rights to organize cricketing events in the country. There is currently in force a Media Rights Agreement between Star India Private Limited and BCCI under which Star India Private Limited has been granted exclusive rights to telecast cricketing events that take place in the country.
  •  Star India Private Limited, in turn, has engaged ESPN Software Private Limited for distribution, inter-alia, of the telecast of all cricketing events covered by the Media Rights Agreement.
  • The BCCI and its original assignee, Nimbus Communications Limited had earlier moved to the Delhi High Court by way of Writ Petition (No.7655 of 2007) praying for directions to be given to the Prasar Bharati Broadcasting Corporation and the Union of India to encrypt Doordarshans Satellite Transportation Feed of live broadcasting signals of cricket matches organized by the BCCI to the Doordarshan Kendras and transmission towers throughout India for subsequent broadcasts on Doordarshans terrestrial and DTH networks.
  • In addition to the above, an appropriate declaratory relief was also prayed for to the effect that no television network, DTH network, Multisystem network or local cable operator can broadcast such events without a licence from the content rights owners/holder was also sought. The said writ petition was dismissed by the learned Single Judge of the High Court primarily on the ground that the matter relates to the policy domain, and, therefore, is beyond judicial reach and scrutiny. Aggrieved by the decision of the Single Judge LPA No.1327 of 2007 was filed before the High Court.
  • Writ Petition (No.8458 of 2007) was also filed initially by BCCI and its erstwhile assignee Nimbus for striking down Section 3 of the Sports Broadcasting Signals (Mandatory Sharing with Prasar Bharati) Act, 2007 (hereinafter referred to as the ‘Sports Act, 2007’) insofar as it relates to cricket test matches and also striking down the notification dated September 13, 2000, issued by the Central Government notifying DD1 (National) channel and DD (News) channel as mandatory channels to be carried compulsorily by the Cable Operators. In the same writ petition the notifications dated July 3, 2007 and October 19, 2007, notifying the sporting events mentioned therein in respect of cricket to be of national importance were also challenged. Also challenged the order of the Government of India dated May 29, 2007.
  • Subsequently, ESPN Software India Private Limited and Star India Private Limited had been impleaded in the aforesaid writ petitions in view of Media Rights Agreement.
  • The aforesaid appeal (LPA No.1327 of 2007) and Writ Petition (No.8458 of 2007) were allowed by the Division Bench by holding that on an interpretation of the provisions of Section 3 of the Sports Act, 2007 and Section 8 of the Cable Television Networks (Regulation) Act, 1995 (hereinafter referred to as the ‘Cable Act, 1995’) the signals received by Prasar Bharati from the Respondents should not be placed in the designated Doordarshan channels which are to be compulsorily carried by the Cable Operators under Section 8 of the Cable Act, 1995.
  • Aggrieved by the order of the Division Bench of the Delhi High Court, the present appeals have been filed by the Union of India, Prasar Bharati, Home Cable Network Private Limited and Sopan Foundation (hereinafter referred to as ‘the Appellants’)


Appellant’s Submissions

  • The object of the The Prasar Bharati (Broadcasting Corporation of India) Act, 1990 (hereinafter referred to as the ‘Prasar Bharati Act, 1990’), is to reach maximum number of citizens and provide access to news and information to citizens living in the remote villages and hamlets of the country. Under Section 12 of the Prasar Bharati Act the primary duty of the Corporation is to organize and conduct public broadcasting services to inform, educate and entertain the public and to ensure a balanced development of broadcasting on radio and television. Section 12(2)(e) of the Prasar Bharati Act, 1990 clearly stipulates that Prasar Bharati shall, inter alia, be guided by the objective of “providing adequate coverage to sports and games so as to encourage healthy competition and the spirit of sportsmanship.”
  • Similarly, the object behind the enactment of the Sports Act, 2007 is to provide access of sporting events of national importance to a large number of viewers on free to air basis. It is in the above light that the provisions of Section 3 of the Sports Act, 2007 and Section 8 of the Cable Act, 1995 have to be construed.
  • The aforesaid provisions should not be read and understood to be confined to re-transmission of the live signals compulsorily shared with Prasad Bharati by the content owners only on the terrestrial and DTH networks of Prasar Bharati. Any such view would be counter-productive and go against the mandate of Section 3. Sub-section (2) of Section 3 was also pointed out to contend that the possible loss of revenue to the content rights owners/holder due to the mandatory requirement of sharing live feeds with the Prasar Bharati has been adequately taken care of by the scheme of arrangement of revenue contained in sub-section (2) of Section 3. It is urged that it is in the light of the above that the provisions of Section 8 of the Cable Act, 1995 have to be construed.
  • It is further contended that though the Cable Act, 1995 is anterior to the enactment of the Sports Act, 2007, Section 8 of the Cable Act, 1995 should not be understood to have been whittled down by the enactment of Section 3 of the Sports Act, 2007 in the absence of any conspicuous indication of such legislative intent in Section 3. In fact, the mandatory duty cast on the Cable Operators by Section 8 is another step in the direction of providing access to the masses which clearly suggests that the provisions of the two enactments operate harmoniously in their respective fields without impacting each other.


Respondent’s Submissions

  • It was contended that ESPN Software Private Limited and Star India Private Limited under the Media Rights Agreement will be seriously infringed in the present case if the view taken by the High Court is to be adopted. Though such rights may seemingly come under Section 37 of the Copyright Act, 1957, it is argued that the telecast of the cricket matches is like production of a cinematograph film within the meaning of Section 2 (f) of the Copyright Act.
  • There is a statutory curtailment of the said right under Section 3 of the Sports Act, 2007, the extent of which must be understood to be confined to the explicit contours of the said provision which cannot be readily and easily extended. Any unwarranted extension would amount to an invasion of the copyright/broadcasting right of the Respondents. The legislation is expropriatory in character. It must, therefore, be strictly construed.
  • It is urged that Section 8 (1) engrafts a must carry obligation and such must carry obligation cannot extend the scope of the must share mandate contained in Section 3. Emphasis is laid on the words “its terrestrial networks and Direct-to-Home networks” appearing in Section 3 to contend that the must share mandate must be understood to be to enable the Prasar Bharati to re-transmit the same on its terrestrial and DTH networks only.
  • Star India Private Limited specifically contended that a huge amount of revenue of over INR 3000 crore (approx. USD 468640200) has been paid by them towards broadcasting/telecasting rights which must be allowed to have full effect and any restriction in the exercise of such right, if at all, can operate only to the extent explicitly provided for in Section 3.
  • BCCI, specifically argued that any extended meaning to Section 3 beyond what flows from its plain language would have the effect of infringing the rights of the BCCI under Article 19(1)(a). Several precedents have been cited to contend that the right under Article 19(1)(a) would extend to receipt of information also.
  • Article 19(1)(a) is certainly expansive to include receipt of information. The same is to the effect that in the present case it is not the contention of BCCI that the provisions of Article 19(1)(g) of the Constitution have been violated. Insofar as the provisions of Article 19(1)(a) of the Constitution is concerned, it was contended that, at best, the present instance is a case where the slice of the cake becomes a little smaller; but that by no means would attract Article 19(1)(a).


Judgment

  • Much argument had been advanced as to whether Section 3 of the Sports Act, 2007, is expropriatory in nature. The Court had no hesitation in holding the said provision of the Act to be of such a nature to the extent that it curtails or abridges the rights of a content owner or holder and television or radio broadcasting service provider.
  • Sharing of revenue between the content rights owner or holder and the Prasar Bharati envisaged by Section 3(2) of the Sports Act, 2007, would hardly redeem the situation to take the Sports Act, out of the category of expropriatory legislation. Section 3 therefore, has to be interpreted very strictly.
  •  Not only did the Court not find in the provisions of Section 3 of the Sports Act, 2007, any recognition of the requirement stipulated in Section 8 of the Cable Act, 1995; the plain language of the said provision i.e. Section 3 of the Sports Act, 2007, made it clear that the obligation to share cast on the content rights owner or holder, etc. with Prasar Bharati is to enable Prasar Bharati to transmit the same on “its terrestrial and DTH networks”. If the legislative intent was to allow Section 3 not to operate on its own language but to be controlled by Section 8 there would have been some manifestation of such intent either in Section 3 or in Section 8 (by an appropriate amendment thereto).
  • In the absence of any such legislative intent it will only be correct to hold that Section 3 of the Sports Act, 2007, operates on its own, without being controlled by any of the conditions or stipulations contained in Section 8 of the Cable Act, 1995.
  • Therefore, the Court came to the conclusion that under Section 3 of the Sports Act, 2007, the live feed received by Prasar Bharati from content rights owners or holders is only for the purpose of re-transmission of the said signals on its own terrestrial and DTH networks and not to Cable Operators so as to enable the Cable TV operators to reach such consumers who have already subscribed to a cable network.