Mahesh Bhai Vs State of Gujarat

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Judgement  Date:14.09.2022
Case No. Criminal Misc Application No.8581 of 2022
Hon'ble High Court of Ahmedabad
Niral R Mehta , H.J
Mahesh Bhai  Vs State of Gujarat

Under the provisions of copyright Act 1957, criminal complaint can be filed in order to initiate criminal proceeding. The provision of Section 63 of the Copyright Act 1957 provides for the offence under the Copyright Act 1957.

Section 63 of the Copyright Act 1957 talks about infringement of copyright, but it does not define the infringement. While Section 64 of the Copyright Act of 1957 empowers police authorities to seize infringing goods.

Now the question arises as to whether a police authority can register an FIR against any person after invoking the provisions of Section 64 of the Copyright Act 1957. Or in other words, can it be said that Section 64 of the Copyright Act 1957 provides for criminal liability?

The Hon'ble High Court of Gujarat at Ahmedabad , vide its Judgment dated 14.09.2022 passed in Criminal Misc Application No.8581 of 2022 titled as Mahesh Bhai Vs State of Gujarat , was having an occasion to address this issue.

Now coming to the facts of the case, an FIR has been registered against the applicant at the behest of a criminal complaint filed by Respondent No.2.

The subject matter FIR was registered on the grounds of inter alia alleging violation of Section 64 of the Copyright Act 1957.

The applicant claimed to be the registered owner of the copyright. Hence, the mentioned FIR could not have been registered against the applicant.

In order to appreciate the argument of the applicant, let us see what Section 51 of the Copyright Act 1957 provides for.

"51.Copyright in a work shall be deemed to be infringed:

(a) when any person, without a license granted by the owner of the Copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a license so granted or of any condition imposed by a competent authority under this Act".

From bare perusal of Section 51 of the Copyright Act 1957 it is apparent that if a person does have license from the Registrar of Copyright, then such act does not amount to be infringement of Copyright.

In the facts of the case, the High Court interpreted the copyright registration granted in favor of the Applicant, to be such license given by the Registrar of Copyright.

The Hon'ble High Court of Gujarat observed that since the Applicant is registered proprietor of the copyright. Hence necessary ingredients of Section 51 of the Copyright Act 1957 has not been satisfied.

 

The Hon'ble further observed that there is no any question of registration of FIR by the Police authorities against the Applicant herein as Section 64 of the copyright Act 1957 provides the power to the police authorities only to investigate the matter. Let is see what Section 64 of the Copyright Act 1957 stipulates?

"64. Power of police to seize infringing copies

(1) Where a magistrate has taken cognizance of any offence under section 63 in respect of the infringement of copyright in any work, it shall be lawful for any police officer, not below the rank of sub-inspector, to seize without any warrant from the magistrate, all copies of the work wherever found, which appear to him to be infringing copies of the work and all copies so seized shall, as soon as practicable, be produced before the magistrate."

Thus, it is apparent that Section 64 of the Copyright Act 1957 does not define an offence. It is only the enabling section which empowers the police authorities to seize the infringing products.

The Hon'ble Court rightly observed that under Section 64 of the Copyright Act, the police authorities can only seize the infringing goods. Section 64 of the Copyright Act does not provide for any offence. Hence, the police authorities wrongly registered the FIR against the applicant.

The conclusion would be like this: a police authority can not register an FIR against any person after invoking Section 64 of the Copyright Act 1957. It is only a provision that provides power to a police authority to investigate the matter and seize the infringing product. No criminal liability can be affixed on the basis of Section 64 of the Copyright Act 1957. Of course, aid under Section 51 and 63 would be required in order to fix criminal liability on any person.

This is so because neither Section 63 nor Section 64 of the Copyright Act 1957 provides for what constitutes an infringement. Without satisfying the necessary ingredients of Section 51 of the Copyright Act 1957, an FIR solely registered on the basis of Section 64 of the Copyright Act 1957, would not be maintainable.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

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Zydus Wellness Vs Arihant Remedies

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Judgement  Date:14.09.2022
Case No. CS (Comm) 417 of 2022
Hon'ble High Court of Delhi
Navin Chawla, H.J
Zydus Wellness Vs Arihant Remedies

The goods of defendant's were purchased by the Plaintiff from fripkart and those products were delivered in Delhi. In view of this the Court rejected application of the Defendant under Order 7 Rule 11 CPC and held that court is having jurisdiction.

Plaintiff's Trademark:GLUCON D
Defendant's Trademark:GLUCOSE D

Injunction was granted.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

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Carlsberg Breweries Vs Tensberg Breweries

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Judgement Date:16.09.2022

Case No. CS (Comm) 646 of 2022

Hon'ble High Court of Delhi

Navin Chawla, H.J

Carlsberg Breweries Vs Tensberg Breweries

Plaintiff's Trademark:CARLSBERG

Defendant's Trademark: TENSBERG 

Injunction granted. 

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

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Indiamart Intermesh Vs Mr.Sameer Samim

Judgement Date:13.09.2022

Case No. CS (Comm) 631 of 2022

Hon'ble High Court of Delhi

Prathiba M Singh, H.J

Indiamart Intermesh Vs Mr.Sameer Samim 

Plaintiff's Domain Name: www.indiamart.com

Defendants domain name: www.India-mart.co

Injunction granted. 

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

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Dabur India Vs Ashok Kumar

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Judgement Date:14.09.2022
Case No. CS (COMM) 135/2022
Hon'ble High Court of Delhi
Prathiba M Singh , H.J
Dabur India Vs Ashok Kumar

These are batch matters which addressed the issue of grant of domain names by domain name registrants. There has not been any regulation so far regarding regulating the procedure of grant of domain names by different DNRs. This is the reason why many parties keep on adopting many domain names which were similar to well known trade marks. By the afore mentioned Judgement dated 14.09.2022, the Hon'ble High Court of Delhi directed all the DNRs to appoint grievance cell so that any body, including the right holder can participate in the process of grant of domain names by these Domain Names Registrants. This is few of those orders which plays important role in regulating the procedure of grant of domain names by the DNRs.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539
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Maan Pharmaceuticals Ltd. Vs Mindwave Healthcare Pvt. Ltd.

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Judgement Date:12.09.2022
Case No. FAO(COMM) 78 of 2022
Hon'ble High Court of Delhi
Vibhu Bakhru and Amit Mahajan , H.J
Maan Pharmaceuticals Ltd. Vs Mindwave Healthcare Pvt. Ltd.

In a recent Judgement pronounced by Hon'ble Single Judge, of Delhi in Amrish Aggarwal Vs Venus Home Appliances Pvt. Ltd.: 2019 SCC OnLine Del 9966, general direction has been issued by the Hon'ble Court that while filing Suit for Trademark infringement, the Plaintiff is required to file Legal Proceeding Certificate.

From bare perusal of the guidelines issued by Hon'ble Single Judge, High Court of Delhi, it is apparent that no penal consequences have been provided. What could be effect of Non filing of Legal Proceeding Certificate in a Suit for Infringement, was yet to be adjudicated.

The Hon'ble Division Bench , high court of Delhi was having an occasion to deal with inter-alia this issue in Judgement dated 12.09.2022 passed in Appeal bearing FAO(COMM) 78 of 2022, titled as Maan Pharmaceuticals Vs Mindwave Healthcare Pvt. Ltd.

Coming to the facts of the case, this Appeal was filed by the Defendant against order order dated 07.12.2021 passed by the learned District Judge (Commercial Court-02), Saket Courts - South District, New Delhi whereby the application filed by the appellant (defendant) under Order VII Rules 10 and 11 of Code of Civil Procedure, 1908 (hereinafter ‘the CPC’), was dismissed.

The Hon'ble Division Bench , after observing that the Respondent was having sales office at Neb Sarai, within the jurisdiction of Court. The the order of the Trial Court to effect of favoring the Jurisdiction of the Court was held to be correct.

The Respondent also pleaded that the Appellant have intention to come within territorial jurisdiction of the Hon'ble Court. The Appellant is all set to launch its product within jurisdiction. The Appellant sought rejection of the plaint on the ground that mere apprehension of sale of goods with the impugned trademark in the future, will not amount to cause of action.

However the Hon'ble High Court of Delhi rejected this argument by observing that in view of the settled law , there is no merit in the objection taken by the Appellant that an apprehension to sell the goods with impugned trademark in future will not confer a cause of action in favour of Respondent.

The factum of non mentioning of rectification petition filed by the Appellant was also held not to be material suppression as It is settled law that filing of a rectification petition does not take away the right of a registered proprietor to injunct the infringement of its trademark. The pendency of the rectification does not create any bar for grant of interim injunction. Hence this argument was also rejected.

Now comes to the question of non compliance of general direction issued by the Hon'ble Single Judge , Delhi High Court in Judgement reported as Amrish Aggarwal Vs Venus Home Appliances Pvt. Ltd.: 2019 SCC OnLine Del 9966. The appellant argued regard to non-filing of the Legal Proceedings Certificate in a Suit for infringement. The said plea has been taken on the strength of the decision passed by a Single Bench of this Court in the case of Amrish Aggarwal Vs Venus Home Appliances Pvt. Ltd.

In order to appreciate this argument of the Appellant, the relevant portion of said general direction issued by the Hon'ble Single Judge , Delhi High Court in Judgement reported as Amrish Aggarwal Vs Venus Home Appliances Pvt. Ltd.: 2019 SCC OnLine Del 9966 are reproduced as under:

"It is further directed that in trade mark infringement matters the following documents ought to be necessarily filed along with the plaint:

i. Legal Proceedings certificate (LPC) of the trade mark showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licences granted, renewals etc.,

ii. If the LPC is not available, at the time of filing of the suit and urgent orders of injunction are being sought, a copy of the trade mark registration certificate, copy of the trade mark journal along with the latest status report from the website of the Trade Mark Registry. This should be accompanied by an averment in the pleadings that LPC is applied for. Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Any licences and assignments ought to be pleaded"

Said Judgement does not prescribe for penal consequences in case of non compliance of afore mentioned direction. The Hon'ble Division Bench, High Court of Delhi rejected by observing that though a Legal Proceedings Certificate is an important document, which should be placed before the court at the time of deciding preliminary applications, the same, however, will not take away the statutory right of a plaintiff to seek injunction, which it is otherwise entitled to.

The Hon'ble Division Bench reasoned that in Amrish Aggarwal Vs Venus Home Appliances Pvt. Ltd.: 2019 SCC OnLine Del 9966, the Hon'ble Single Judge had passed certain directions in order to deter frivolous litigations and for the purpose that the time of the courts is not wasted due to non-filing of relevant documents. It was felt that a Legal Proceedings Certificate is an important document, which should be placed before the Court at the time of deciding preliminary applications.

The Hon'ble Division Bench also observed that there is no such requirement in the statute that a suit for infringement will not be entertained, if not accompanied by a Legal Proceedings Certificate. Thus it is clear that in a Suit for infringement, though a Plaintiff is supposed to file Legal Proceeding Certificate of its Trade Mark, however non compliance does not necessarily take away the right of plaintiff to seek injunction.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

Steel Bird Hi Tech India Vs Mr. Tazeen Farooqui

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Judgement Date:13.09.2022
Case No. CS (Comm) 277 of 2017
Hon'ble High Court of Delhi
Yogesh Khanna, H.J
Steel Bird Hi Tech India Vs Mr. Tazeen Farooqui

Plaintiff's Trademark: STEEL BIRD
Defendants Trademark: SEA BIRD
Plaintiff as well as Defendant were registered Proprietors of their respective trademark.
Where both the parties are registered proprietor, Plaintiff can still invoke relief of Passing off.
Injunction granted.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

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Haryana Pesticide Manufacturers Association Vs Willowood Chemicals Pvt. Ltd.

Judgement Date:12.09.2022
Case No. W.P.(C)- IPD 15/2021
Hon'ble High Court of Delhi
Yogesh Khaan , H.J
Haryana Pesticide Manufacturers Association Vs Willowood Chemicals Pvt. Ltd.

The amendment application filed by the Respondent No.1 seeking amendment of Patent was allowed without serving copy of the same to the Petitioner.

Though hearing in pre grant opposition proceeding was granted to the Petitioner where in amendment of claims from 1 to 27 to 1 to 25 claims were discussed.

After grant of the Patent it came to notice of the Petitioner that amended claims 1 to 19 were allowed.

Subsequently it came to notice that separate proceeding was conducted in reply to FER in reply to which, the Respondent No.2 filed amendment application seeking amendment of claims from 1 to 25 to 1 to 19.

It was done behind the back of the Petitioner/Opponent. Aggrieved with the same , the Petitioner/opponent filed the writ petitioner.

The Hon'ble Court observed that the amendments sought by the Respondent No.1/Applicant were trivial in nature or in any case by way of disclaimer.

However the Hon'ble Court refused to grant any relief to the Petitioner on the ground that post grant opposition has already been filed against the impugned Patent.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539
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Mohd Ershad Sole Proprietor EK Agencies Vs The Registrar of Copyright

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Judgement Date:07.09.2022
Case No. C.O. (COMM.IPD-CR) 17/2021
Hon'ble High Court of Delhi
Prathiba M Singh , H.J
Mohd Ershad Sole Proprietor EK Agencies Vs The Registrar of Copyright

Petitioner's prior registered copyright: HIGHGRON ASLI KESRI CHAI since 2015.
Respondent obtained NOC Subsequently for identical copyright : ASLI KESRI CHAI under No. A-131509/2019.

The impugned registered copyright ASLI KESRI CHAI under No. A-131509/2019 was ordered to be cancelled.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

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Hindware Limited Vs Sanjay Ceramic Works and Another

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Judgement Date:06.09.2022
Case No. RFA(OS)(COMM) 9/2019
Hon'ble High Court of Delhi
Vibhu Bakhru and Amit Mahajan , H.J
Hindware Limited Vs Sanjay Ceramic Works and Another

The Appellant/Plaintiff's Suit was decreed however no relief of damages was granted. The Appellant filed the Appeal seeking relief of damages on account of compensatory damages. However the same was declined by the Hon'ble Division Bench on the ground that there was no evidence for computing the damages in the aforesaid manner. The Appeal was dismissed.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

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Warner Bros Vs www.Uatchfree.st & Ors

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Judgement Date:08.09.2022
Case No. CS (COMM) 402/2019
Hon'ble High Court of Delhi
Navin Chawla , H.J
Warner Bros Vs www.Uatchfree.st & Ors

The Subject matter Suit was decreed against Rogue websites under the Provisions of Order 13-A of the Commercial Court Act 2015 as the the Defendant Nos. 1, 14 to 21 were not appearing.

The Hon'ble High Court of Delhi decreed the suit by observing that the Defendant Nos. 1, 14 to 21 have no real prospect of successfully defending the claim of copyright infringement and have further not chosen to contest the said claim.

The Hon'ble Court further observed that the present matter is mainly concerned with the enforcement of the injunction orders which are passed against the rogue websites.

The rogue websites do not have any defense to the claim of copyright infringement but use the anonymity offered by the internet to engage in illegal activities, such as copyright infringement in the present case.

Accordingly the Suit was summarily decreed in favour of the Plaintiff under the Provisions of Order 13-A of the Commercial Court Act 2015.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

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Paras Ayurvedic Pharma Limited Vs Salman Iqbal Ahmed Momin and Another

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Judgement Date:06.09.2022
Case No. Commercial Appeal (L) No.21303 of 2022
Hon'ble High Court of Mumbai
G.S.Patel and Gauri Godse , H.J
Paras Ayurvedic Pharma Limited Vs Salman Iqbal Ahmed Momin and Another

In disputes pertaining to intellectual property right, orders of interim injunction plays Vitol role in deciding the fate of litigation. Normally in IPR dispute, it is very common to ask for relief of interim injunction, including the order of ex parte injunction.

Seeking interim injunction is an equitable remedy. This is well established principle of law that a party who seeks an equitable relief, must do equity. In words, a party seeking the relief of interim order, must approach the Court with clean hands.

Thereby it can be said that Plaintiff is supposed to disclose all the material information while asking for relief of interim Injunction. The Plaintiff is required to approach the Hon'ble Court with clean hands.

It is also well settled proposition of law that non disclosure of facts, which are not material to the dispute between the parties, can not be said to be fatal while granting or declining ex parte injunction.

There can not be straight jacket formula for demarcating the thin line between material or non material suppression. The Hon'ble Court takes its own view deciding upon facts of each case.

If there are non disclosure of earlier communication between the plaintiff and the defendant on the subject matter trademark, it may be regarded as material suppression.

But what could be effect of non disclosure of earlier communication between the plaintiff and distributor of defendant , on the subject matter trademark, was an issue which have been discussed by Hon'ble Courts in few of the Judgements.

The Division Bench, Hon'ble High Court of Mumbai was having an occasion to address this issue while passing its Judgement dated 06.09.2022 in Commercial Appeal bearing Commercial Appeal (L) No.21303 of 2022 titled as Paras Ayurvedic Pharma Limited Vs Salman Iqbal Ahmed Momin and Another.

This Appeal was filed by the Defendant against ex parte order dated 09.12.2021 passed by Hon'ble Single Judge in Interim Application (L) No 28220 of 2021.

The subject matter commercial intellectual property suit was an action for copyright infringement and also for passing off.

The Plaintiff filed subject matter suit on the basis of adoption and user of its unique art work in relation to the product namely medicinal oil or application under the trademark Roghan Sukoon Massage Oil since the year 1989.

As per claim of the Plaintiff, the said Trademark and art was comprised of unique artistic work featuring a unique combination of yellow, orange, and red colors and a particular device. The Plaintiff also claimed to have obtained copyright registration of the artistic work on 22nd April 2014.

As per wordings of Plaint, the Plaintiff in early November 2021 came across the defendant’s impugned goods styled under the name Rogan Sukoon Massage Oil, which according to the Plaintiff, was infringing copy of the Plaintiff was infringing copy and accordingly subject matter Suit was filed and ex parte order was obtained.

The Appellant/Defendant filed the Appeal on the grounds inter alia that that the Defendants had already disclosed their proposed new label “to the Plaintiffs” by a Whats App message to +9192220585595 in the year June 2021.Hence the Plaintiff/Respondent was guilty of pleading accrual of cause of action only since Nov 2021.

However the Hon'ble High Court of Mumbai rejected this argument by observing that the WhatsApp massage referred to above is apparently sent to a person who is or was a distributor, and that too of the Defendant’s product.

The same number is also shown on the Plaintiffs’ product. But the fact that the Defendant and the Plaintiffs may have shared a distributor does not substantiate the submission that the Plaintiffs had knowledge of the Defendant’s product since June 2021. The knowledge of a distributor is not knowledge of the Plaintiffs.

The Golden line observed in the Judgement was that "The knowledge of a distributor is not knowledge of the Plaintiffs." Similarly the Hon'ble Decision Bench also rejected Defendant's reliance on the earlier mail sent to Plaintiff's distributor.

While this this argument, the Hon'ble Division Bench observed that an email also said to have been sent to one Shri Balaji also could not suffice as such attribution of knowledge to the Plaintiffs, since Shri Balaji was only of several distributors of the Plaintiffs’ products. No such email was sent to the Plaintiffs’ email address. Accordingly the subject matter Appeal was dismissed.

It is submitted that Idea behind rejecting this argument perhaps may be for the reason that the right holder can not be deemed to be aware of any communication done with one of its distributor. Hence it is clear that until and unless Defendant proves that Plaintiff has suppressed something, which is within the knowledge of Plaintiff's knowledge, it can not said that such non disclosure is fatal.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539
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Star Television Productions Limited Vs Eurosport & Ors

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Judgement Date:09.09.2022
Case No. CS (Comm) 359 of 2020
Hon'ble High Court of Delhi
Asha Menon , H.J
Star Television Productions Limited Vs Eurosport & Ors

Plaintiff's Trademark: STAR TV and STAR DEVICE
Plaintiff's business and Service: TV Channels
Defendant's Trademark: EUROSPORT and STAR DEVICE
Defendants business and Service: Sports television channels

Refusal of Interim Stay by IPAB in a cancellation petition can not oust the discretion of plaintiff to file suit for infringement and ask for interim relief. Para 64, 68,69.

Trademark of both the parties are registered. However still Plaintiff can ask for passing off. Para 72.

By use of Trademark EUROSPORT by the Defendant, possibility of confusion can not be ruled out. Para 76.

Word STAR is unique word in relation to broadcasting channels of the plaintiff. Para 77.

The defendants have no explanation for choosing the Single Star logo. Para 77

Though there was disclaimer on the Plaintiff's Trademark, however in the relevant class and goods, i.e 09,38 and 41 , there was no any disclaimer. Hence the same does not amount to be material one. Para 78.

The Plaintiff has agreed in the settlement that Defendant may use EUROSPORT, which is not similar to Star Mark of Plaintiff in India. However the Defendant did not comply with the said clause. Para 85.

Defendant was restrained.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539


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