Allied Blenders Distillers Pvt. Ltd. Vs Hermes Distillery Private Limited

Trademark Infringement and the Perils of "Smart Copying"

Introduction:

The recent case before the Hon'ble High Court of Delhi sheds light on the nuances of trademark infringement and the concept of "smart copying." In this matter, the court restrained the defendants, emphasizing that even when adopting a strategy of intelligent imitation, it does not serve as a defense in cases of trademark infringement. This article delves into the legal intricacies of the case, drawing parallels with earlier judicial observations and analyzing the implications of "smart copying."

Judicial Precedent: The Balancing Act:

The judgment at hand resonates with the wisdom shared by Hon'ble Justice Shri Manmohan in the case of Marico Limited Vs. Mr. Mukesh Kumar (Judgement dated 27.08.2018 passed in CS(COMM) 1569/2016, reported as AIR Online 2018 Del 1322). Justice Shri Manmohan, in his 2018 judgment, aptly noted, "The most successful form of copying is to employ enough points of similarity to confuse the public with enough points of difference to confuse the courts." This observation, borrowed from Baker v. Master Printers Union of New Jersey,[47 USPQ 69 (D.N.J.1940)] sets the tone for understanding the delicate balance between imitation and differentiation.

Factual Matrix: OFFICER'S CHOICE vs. PEACE MAKER

In the recent case, the plaintiff's trademark was OFFICER'S CHOICE, characterized by a red and white color trade dress. On the other hand, the defendant's trademark was PEACE MAKER, also featuring a red and white color trade dress. The defendant argued that red and white color trade dress was commonly used by various parties and contended that the competing trademarks, OFFICER'S CHOICE and PEACE MAKER, were distinct.

Court's Analysis: Unraveling the Threads of "Smart Copying"

Despite the defendant's assertions, the Hon'ble High Court of Delhi exercised restraint, discerning a clear attempt at "smart copying." The court acknowledged that while the defendant highlighted the use of red and white color trade dress by various parties, the prima facie analysis revealed a conspicuous effort to engage in intelligent imitation. The court observed that the differences, as illustrated in the chart, were overshadowed by the broad similarities at first glance, pushing the distinctions into obscurity.

Conclusion: The Limits of Intelligent Imitation:

In trademark infringement cases, the judgment highlights the court's skepticism towards strategies of "smart copying." The decision underscores that merely pointing out differences in a meticulous chart may not absolve a defendant if the overarching similarities are glaring. This raises important questions about the boundaries of intelligent imitation and the extent to which courts will scrutinize attempts to confuse the public while simultaneously attempting to navigate legal defenses.

The Case Law Discussed:

Case Title: Allied Blenders Distillers Pvt. Ltd. Vs Hermes Distillery Private Limited

Date of Judgement/Order:15.01.2024

Case No. CS Comm 274 of 2021

Neutral Citation: 2024:DHC:288

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Prathiba M Singh, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Rong Thai International Group Company Limited Vs Ena Footwear Private Limited

Rectification of a Registered Trademark Based on Non-Use

Introduction:

The cancellation of a registered trademark on the grounds of non-use is a significant aspect of trademark law, as outlined in Section 47 of the Trademarks Act 1999. This article delves into a specific case heard by the Hon'ble High Court of Delhi, involving the registered trademark 'BAOJI,' registered under No. 1530274 in Class 25.

Scope of Section 47 and Necessary Conditions:

Section 47 of the Trademarks Act 1999 allows for the cancellation of a registered trademark based on non-use. However, the Hon'ble High Court emphasized that a successful challenge under this section necessitates demonstrating a continuous non-use for a minimum of five years from the date of entry into the register up to three months before the application for removal.

Case Analysis:

In the case under consideration, the registration certificate for the 'BAOJI' mark was issued on December 26, 2013, officially entering the register. The rectification application was filed on August 10, 2020. Accordingly, the critical date for assessing the use of the mark was set as May 10, 2020, three months before the rectification application.

The Court's Observations:

The Hon'ble High Court scrutinized the evidence and observed that sale invoices submitted into the record indicated consistent transactions by Respondent No. 1 using the 'BAOJI' mark from 2012 through 2022. This unbroken chain of evidence unequivocally established a continuous and uninterrupted use of the trademark over a significant period.

The concluding Note:

In light of the court's analysis and interpretation of Section 47, the cancellation petition was dismissed. This case underscores the importance of providing concrete evidence of continuous non-use within the specified timeframe to succeed in challenging a registered trademark on grounds of non-use.

The Case Law Discussed:

Case Title: Rong Thai International Group Company Limited Vs Ena Footwear Private Limited

Date of Judgement/Order:05.01.2024

Case No. C.O. (COMM.IPD-TM) 100/2021  

Neutral Citation: 2024:DHC:112

Name of Hon'ble Court: Delhi  High Court

Name of Hon'ble Judge: Sanjeev Narula, H.J. 

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Novartis Ag Vs Natco Pharma Limited and another

The Locus of Pre-Grant Patent Opponent in Patent Examination Process

Introduction:

The realm of patent law is characterized by a delicate balance between fostering innovation and ensuring that patents are granted on meritorious grounds. Central to this balance is the mechanism of pre-grant opposition, designed to facilitate a rigorous examination of patent applications. This article delves into the nuanced legal principles governing pre-grant opposition, emphasizing its facilitation role in the examination process and delineating its limitations.

The Division Bench, High Court of Delhi , Comprising of Hon'ble Judges namely Shri Yashwant Varma and Shri Dharmesh Sharma was having an occasion to answer this issue while passing the Judgement dated 09.01.2024 in Appeal bearing LPA No. 50 of 2023 titled as Novartis Ag Vs Natco Pharma Limited and another, delved into the critical examination of the order dated 14.12.2022 passed by controller of Patent , which allowed certain amendments and ultimately resulted in grant of Indian Patent. IN414518. This grant of Patent to Novartis subsequently led to litigation. The Hon'ble Division Bench, High Court of Delhi rejected the argument of the pre grant Opponent that the same had any right to be heard in Patent Examination process. Thereby  affirmed the order of controller , granting the subject matter Patent.

Background:

Novartis AG was the Applicant of the subject matter patent IN‘518, originated from PCT application no. PCT/US2006/043710 dated 08.11.2006, which was filed as Indian national phase application bearing no. 4412/DELNP/2007 on 08.06.2007 before the Controller of Patents. Natco and few other entities were pre grant opponent. The subject matter order dated 14.12.2022 passed by the controller which resulted in filing of the subject matter writ and subsequent thereto the present Letters Patent Appeal , whereby certain amendments in Indian Patent Application No. IN4145 were allowed without granting any opportunity to pre grant opponent , to be heard. 

The crux of the controversy lies in the alleged violation of the principles of natural justice. The opponent contended that the order permitting amendments to the patent application was issued without granting them a fair hearing. Specifically, all five pre-grant opposition hearings had concluded on 03 November 2022. Despite this, the Controller of Patents directed the applicant to carry out amendments, which were eventually allowed on 14.12.2022.

The Core Legal Question:

The pivotal issue at hand is whether an opponent possesses the right to participate in the patent examination process, especially when amendments are under consideration. Stated differently, does the opponent have a stake in the examination process, mandating their participation when modifications to the patent application are being evaluated? 

Judicial Interpretation:

The Hon'ble Division Bench's ruling provided a nuanced interpretation of the relevant legal provisions. According to Rule 55(5), the right of hearing is primarily associated with the adjudication and disposal of the representation for opposition. The court opined that conferring an opportunity for a hearing at the representation stage does not automatically translate to an inherent right for the opponent to participate in Patent examination process.

Furthermore, the court elucidated that while pre-grant opposition undoubtedly aids the Controller in decision-making, it does not ipso facto grant opponents an inherent right to participation or an audience during the Patent examination process. This interpretation upholds the procedural autonomy of the Controller in conducting examinations while balancing the interests of both applicants and opponents.

 Implications:

it is imperative to understand that the representation for opposition is not inherently adversarial or contentious. Instead, its primary objective is to aid and facilitate the examination of the patent application. This facilitative role underscores the constructive intent behind pre-grant opposition, which aims to ensure that patents are granted based on valid and meritorious grounds.

 The scope and limitations of pre-grant opposition are circumscribed by Section 25(1) of the relevant statute. This provision specifies the grounds on which opposition can be raised, thereby confining the opposition's ambit to statutory parameters. Consequently, any challenge raised by an opponent must align with the grounds delineated in Section 25(1), ensuring that the opposition remains tethered to statutory constraints.

The Division Bench's interpretation provides clarity on the locus of a pre-grant patent opponent within the patent examination framework. By distinguishing between the stages where opponents have a right to be heard, such as during pre-grant opposition, and stages where their participation is not mandated, the court ensures a balanced and efficient patent examination process.

The Concluding Note:

Pre-grant opposition serves a pivotal yet circumscribed role in the patent examination landscape. Its facilitative nature aims to aid the Controller in conducting a holistic examination of patent applications, ensuring adherence to statutory criteria and principles of natural justice. However, this role is not without limitations, as evidenced by the Court's observations emphasizing the pre grant opponent's restricted right to intervene in the process of grant of Patent only by way of pre grant opposition , however the same has no right to be heard in examination process of the Patent, which is solely the domain between Controller of Patent and the Applicant for Patent. 

The Case Law Discussed:

Case Title: Novartis Ag Vs Natco Pharma Limited and another 

Date of Judgement/Order:09.01.2024

Case No. LPA 50/2023 

Neutral Citation: 2023:DHC:84:DB

Name of Hon'ble Court: Delhi  High Court

Name of Hon'ble Judge: Yashwant Varma+Dharmesh Sharma, H.J. 

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Pespsico India Holding Vs Kavitha Kuruganti

Mistake of Styling a Candidate Variety as 'New': A Remediable Oversight

Abstract:

The issue surrounding the mis classification of a candidate variety as 'New' instead of extant variety, within the agricultural or botanical realm often invokes questions of procedural correctness, legal implications, and administrative flexibility. This article delves into the analytical assessment of the consequences of such an error, particularly in light of the Registrar's discretion to process it under the Extant category.

Introduction:

The nomenclature and classification of agricultural varieties play a pivotal role in ensuring systematic cataloging, research, and development within the agricultural sector. An inadvertent mistake in such categorization can lead to various administrative and legal repercussions. However, the key question remains: Is the mistake of styling a candidate variety as 'New' an irreparable error, or can it be remedied without fatal consequences?

Understanding the 'New' Category:

In agricultural contexts, designating a variety as 'New' implies a set of criteria and implications. Such a classification often denotes that the variety has unique characteristics or distinctions that differentiate it from existing or 'Extant' varieties. This categorization influences licensing, rights, and commercial implications associated with the said variety.

Implications of Misclassification:

Registrar's Discretion and Administrative Flexibility**

It's pivotal to consider the Registrar's role and discretion in such matters. The Registrar, as an administrative entity, possesses the authority and flexibility to interpret, rectify, or reconsider classifications based on the merits of the case.

In the given scenario, the Registrar's decision to process the candidate variety as an 'Extant' category indicates an exercise of this discretion. Such a decision underscores the administrative flexibility inherent in regulatory processes, enabling corrections to genuine errors without compromising overarching objectives.

Remediable Oversight: Legal and Practical Considerations:

The decision to treat the misclassified variety as 'Extant' aligns with pragmatic and equitable principles. It rectifies the inadvertent error, ensuring that the variety is subject to appropriate regulations, research, and commercial dynamics without the disproportionate implications of the 'New' categorization.

The concluding note:

The inadvertent mistake of styling a candidate variety as 'New' underscores the complexities and nuances inherent in agricultural classifications. While such errors demand scrutiny and rectification, they need not result in fatal consequences, especially when administrative entities like the Registrar exhibit flexibility, discretion, and a commitment to equitable resolutions. The decision to process the variety as 'Extant' exemplifies a balanced approach, prioritizing fairness, practicality, and the overarching objectives of agricultural regulation and development.

Case Title: Pespsico India Holding Vs Kavitha Kuruganti

Date of Judgement/Order:09.01.2024

Case No. LPA 590/2023

Neutral Citation: 2023:DHC:83:DB

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Yashwant Varma+Dharmesh Sharma, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

JRPL Riceland Vs Neeraj Mittal

Analysis of Trademark Infringement: ‘Biryani King’ Vs. ‘Biryani King XXXL

Introduction:

The case at hand involves a dispute between a plaintiff claiming ownership over the registered mark ‘Biryani King’ and a defendant using a deceptively similar mark, ‘Biryani King XXXL’. The central issue revolves around whether the defendant's use of the mark infringes upon the plaintiff's established rights.

Legal Framework:

Under trademark law, the proprietor of a registered trademark enjoys exclusive rights to use the mark in relation to the goods or services for which it is registered. The primary objective is to prevent consumer confusion and protect the reputation and distinctiveness of established brands.

Comparison of Marks:

Upon a visual and phonetic comparison, it is evident that the marks 'Biryani King' and 'Biryani King XXXL' share substantial similarities. The addition of 'XXXL' does not sufficiently distinguish the defendant's mark from the plaintiff's registered mark. Such similarity is likely to cause confusion among consumers, leading them to believe that the goods originate from the same source or are affiliated in some manner.

Similarity of Goods:

Another critical aspect is the similarity of goods for which the marks are used. Both parties are involved in the sale of rice. The overlapping nature of the goods amplifies the likelihood of confusion among consumers. Courts often consider the relatedness of goods or services when determining the likelihood of confusion, and in this instance, the similarity in goods strengthens the plaintiff's case.

Ex Parte Ad Interim Injunction:

An ex parte ad interim injunction is a provisional remedy granted to a party before a full trial on the merits. In the present case, the court found that the plaintiff had demonstrated a prima facie case of trademark infringement. The nearly identical marks used in relation to similar goods created a strong presumption of likelihood of confusion, warranting immediate injunctive relief to prevent further harm to the plaintiff's rights and potential damage to consumers.

The Concluding Note:

In light of the foregoing analysis, the court's decision to grant an ex parte ad interim injunction in favor of the plaintiff appears to be well-founded. The substantial similarities between the marks and the relatedness of goods establish a compelling case for trademark infringement. This case underscores the significance of protecting intellectual property rights and preventing consumer deception in the marketplace.

The Case Law Discussed:

Case Title: JRPL Riceland Vs Neeraj Mittal

Date of Judgement/Order:04.01.2024

Case No. CS(COMM) 943/2023

Neutral Citation: NA

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Anish Dayal, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Diabliss Consumer Products Pvt.Ltd. Vs Overra Foods

Trademark Infringement and the 'DIABLISS' Vs. 'DIABEAT' Case

Introduction:

The realm of intellectual property rights is vital for fostering innovation and ensuring fair competition. Trademarks serve as essential tools in this framework by providing businesses with exclusive rights over their distinct signs, symbols, and names. The case between 'DIABLISS' and 'DIABEAT' before Delhi High Court epitomizes the significance of protecting these rights and the consequences of their infringement.

Background:

This petition has been filed for removal of the trademark ‘DIABEAT’ bearing registration No.3664179 in Class 30 in the name of the respondent ‘OVERRA FOODS’ and rectification of the Register of Trade Marks  under Sections 57/125 of the Trade Marks Act, 1999. The Petitioner herein /plaintiff, who produces a diabetic-friendly sugar under the registered trademark 'DIABLISS', accused the Respondent/ defendant of marketing a strikingly similar product named 'DIABEAT' earlier filed a Suit before Madras High Court . Not only did the defendant mimic the name, but the packaging and trade dress also bore a close resemblance. Such actions undoubtedly posed a significant risk of consumer confusion, potentially diluting the distinctiveness of the plaintiff's mark. In suit before Madras High Court , interim Injunction was granted in favour of Petitioner herein/Plaintiff therein 

Initial Injunction:

Recognizing the potential harm caused by the defendant's actions, the Madras High Court initially granted an injunction in favor of the plaintiff. This preliminary relief underscored the court's immediate recognition of the apparent similarities between the two marks and the potential for market confusion. This order was the main guiding factor , which resulted in allowance of present rectification petition.

The Doctrine of Malafide and Dishonesty:

Central to the court's subsequent decision was the finding that the defendant's actions were "a mala fide and dishonest attempt to cause confusion in the market." The term 'mala fide' signifies bad faith, implying that the defendant intentionally sought to exploit the reputation and goodwill associated with the 'DIABLISS' mark. Such dishonest conduct is antithetical to the principles underpinning trademark law, which seeks to protect both consumers and legitimate businesses from deceptive practices.

Grounds for Removal of 'DIABEAT' Trademark:

The court's decision to order the removal of the 'DIABEAT' trademark stemmed from a comprehensive assessment of various factors:

1. Likelihood of Confusion: The similarities in the names, packaging, and trade dress between 'DIABLISS' and 'DIABEAT' created a substantial likelihood of confusion among consumers, thereby undermining the distinctiveness and exclusivity associated with the 'DIABLISS' mark.

2. Infringement of Registered Trademark:By replicating key elements of the 'DIABLISS' mark, the defendant infringed upon the plaintiff's registered trademark rights, thereby violating the statutory protections afforded under the relevant intellectual property laws.

3. Prevention of Unfair Competition:Beyond mere trademark infringement, the defendant's actions constituted unfair competition by capitalizing on the plaintiff's goodwill and reputation in the market. Such conduct erodes trust and undermines the principles of fair competition, necessitating judicial intervention to rectify the imbalance.

The Concluding Note:

The 'DIABLISS' Vs. 'DIABEAT' case serves as a poignant reminder of the critical role played by trademark law in safeguarding businesses' intellectual property rights and preserving fair competition in the marketplace. 

The Case Law Discussed:

Case Title: Diabliss Consumer Products Pvt.Ltd. Vs Overra Foods

Date of Judgement/Order:05.01.2024

Case No. C.O. (COMM.IPD-TM) 307/2022 

Neutral Citation: NA

Name of Hon'ble Court: Delhi  High Court

Name of Hon'ble Judge: Anish Dayal, H.J. 

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

University Health Network Vs Adiuvo Diagnostics Private Limited

Jurisdiction of High Court on the Basis of Cause of Action

Introduction:

The matter before the Hon'ble High Court of Madras revolved around the intricate issue of jurisdiction concerning the entertainment of a writ petition challenging the refusal of a pre-grant notice of opposition related to a patent application filed in Delhi. The central question was whether the Madras High Court had the requisite jurisdiction to adjudicate upon a matter as the Patent Application and pre grant notice of opposition was filed in Delhi.

Factual Background:

The Petitioner, seeking to oppose the Indian Patent Application No.9067/DELNP/2010 of the fourth respondent related to a fluorescence-based imaging and monitoring device, initiated pre-grant opposition proceedings before the Delhi office of the Controller. However, despite the filing being in Delhi, the hearing took place in Chennai and pre grant notice of opposition was rjected. Dissatisfied with the outcome of the pre-grant opposition, the Petitioner approached the Madras High Court through a writ petition.

Jurisdictional Challenge:

The primary contention revolved around the territorial jurisdiction of the Madras High Court. The locus of the patent application and the pre-grant notice of opposition was Delhi, raising doubts about the appropriateness of approaching the Madras High Court. However, the Petitioner anchored the jurisdiction of the Madras High Court on the grounds of accrual of cause of action, contending that the grant of the patent would adversely impact its business operations in Chennai.

Legal Analysis:

The constitutional framework governing the jurisdiction of High Courts in India is encapsulated under Article 226 of the Constitution of India. The provision empowers any High Court to exercise jurisdiction within the territories where the cause of action, wholly or partially, arises, irrespective of the seat of the Government, authority, or the residence of the concerned parties.

The Madras High Court, in its wisdom, interpreted Article 226 expansively to assert its jurisdiction. The Court underscored that the crucial determinant for invoking its jurisdiction was the accrual of cause of action. Given that the Petitioner's business interests in Chennai would be significantly affected by the grant of the patent in Delhi, the Madras High Court concluded that it possessed the requisite jurisdiction to entertain the writ petition.

Implications:

The Madras High Court's decision exemplifies a purposive and liberal interpretation of jurisdiction, emphasizing the substantive justice over technicalities. By adopting a cause-of-action-based approach, the Court ensured that litigants are not unduly circumscribed by rigid territorial boundaries, particularly in matters where the repercussions transcend geographical confines.

The Concluding Note:

The Madras High Court's adjudication elucidates the evolving jurisprudential stance on jurisdictional issues in India, particularly in the realm of intellectual property rights. By emphasizing the primacy of the cause of action, the Court harmonized constitutional imperatives with the exigencies of justice, thereby reaffirming the expansive ambit of Article 226 in safeguarding individual and corporate rights against potential infringements, irrespective of geographical limitations.

The Case Law Discussed:

Case Title: University Health Network Vs Adiuvo Diagnostics Private Limited

Date of Judgement/Order:03.01.2024

Case No. Writ Appeal No.3076 of 2023

Neutral Citation: 2023:BHC:AS:37466

Name of Hon'ble Court: Chennai  High Court

Name of Hon'ble Judge: Sanjay V Gangapurwala and D Bharwtha Chakravarthy, H.J. 

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Puma SE Vs India Mart Intermesh Limited

Due Diligence Requirements for E-marketing Websites

Introduction:

The digital marketplace has provided numerous opportunities for businesses and consumers alike. However, with these opportunities come challenges, particularly concerning the sale of counterfeit goods on e-marketing platforms. A pivotal issue that arises is whether e-marketing websites can be absolved from liability merely by functioning as a platform provider or if they must undertake due diligence to prevent the sale of counterfeit products. This article delves into this complex legal issue, with a specific focus on the recent case of PUMA v. INDIA MART before the Hon'ble High Court of Delhi.

Background:

PUMA, a renowned brand, initiated legal proceedings against INDIA MART, alleging that counterfeit PUMA products were being sold on its platform. The core contention was whether INDIA MART could escape liability by merely acting as a platform provider without conducting adequate due diligence on its sellers.

Analysis of Due Diligence Obligations:

The Hon'ble High Court of Delhi meticulously examined INDIA MART's operational framework. One significant observation was that INDIA MART's registration process for sellers was flawed. While sellers had the option to provide their GST/PAN numbers during registration, it was not mandatory. This omission indicated a lack of stringent verification processes in place.

The court's analysis highlighted the need for e-marketing platforms to exercise due diligence in verifying the authenticity of sellers and products listed on their platforms. The absence of mandatory verification mechanisms exposed INDIA MART to allegations of facilitating the sale of counterfeit goods.

Legal Precedents and Implications:

In arriving at its decision, the court relied on the precedent set in the case of DRS Logistics Pvt Ltd vs. Google India Pvt Ltd (2023 SCC OnLine Del 4809). The court emphasized that e-marketing platforms cannot evade liability by merely positioning themselves as intermediaries. Instead, they have a duty to implement robust due diligence measures to prevent unlawful activities, such as the sale of counterfeit products.

The ruling serves as a significant precedent, signaling that e-marketing platforms must adopt stringent verification procedures to authenticate sellers and products. Failing to do so could result in legal repercussions, including interim injunctions, as demonstrated in the INDIA MART case.

The conclusion Note:

The PUMA Vs INDIA MART case underscores the evolving legal landscape concerning the liability of e-marketing platforms in facilitating the sale of counterfeit goods. The Hon'ble High Court of Delhi's decision reaffirms that merely serving as an intermediary does not absolve e-marketing websites from liability. Instead, platforms must undertake rigorous due diligence measures, including mandatory verification of sellers and products. 

The Case Law Discussed:

Case Title: Puma SE Vs India Mart Intermesh Limited 

Date of Judgement/Order:03.01.2024

Case No. CS(COMM) 607/2021  

Neutral Citation: 2024:DHC:20

Name of Hon'ble Court: Delhi  High Court

Name of Hon'ble Judge: C Hari Shankar, H.J. 

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Manya Vejju @ MV Kasi Vs Sapna Bhog

Lodging of FIR and cause of action for suit under Section 60 of the Copyright Act, 1957

Introduction:

The intersection of intellectual property rights and criminal law has given rise to complex legal questions concerning the rights and remedies available to authors and creators. One such question, which the Hon'ble High Court of Mumbai recently addressed, pertains to the accrual of a cause of action under Section 60 of the Copyright Act, 1957 ("the Act"). This article critically examines the court's decision in light of the facts presented.

Background:

The Plaintiff, Sapna Bhog, an author found herself at the receiving end of baseless allegations of copyright infringement by the Defendant. The crux of the dispute arose when the Defendant, through a social media post, made malicious and unfounded predictions regarding the Plaintiff's future works. Subsequently, the Defendant escalated matters by lodging a First Information Report (FIR), alleging copyright infringement against the Plaintiff.

Section 60 of the Copyright Act, 1957:

Section 60 of the Act is pivotal as it provides a remedy to individuals who face groundless threats of copyright infringement. The objective is clear: to shield authors and creators from unjustified and malicious claims that could stifle their creativity and reputation. The provision seeks to strike a balance between the rights of copyright holders and the interests of individuals wrongly accused of infringement.

The Legal Conundrum:

The primary contention before the Bombay High Court was whether the lodging of an FIR against the Plaintiff constituted a 'threat' within the ambit of Section 60 of the Act. The Defendant argued that an FIR does not amount to an action as envisioned under the proviso to Section 60.

Court’s Rationale and Analysis:

In arriving at its decision, the Hon'ble High Court of Bombay leaned on the precedent set in Dhiraj Dharamdas Dewani Vs. Sonal Info Systems (2012 SCC Online Bom 351). The Court held that the lodging of an FIR indeed constitutes a 'threat' as contemplated by Section 60 of the Act.

By lodging an FIR based on baseless allegations, the Defendant not only cast a shadow over the Plaintiff's integrity but also initiated a chain of events that could have far-reaching consequences for the Plaintiff's professional standing and peace of mind.

Implications of the Decision:

The Bombay High Court's decision reaffirms the protective ethos of Section 60 of the Act. Authors and creators can take solace in knowing that the legal framework offers recourse against individuals who wield copyright infringement claims as weapons of harassment or intimidation.

The concluding Note:

The Hon'ble High Court of Bombay's decision in the case at hand provides clarity on the scope and applicability of Section 60 of the Copyright Act, 1957. By recognizing the lodging of an FIR as a 'threat' within the purview of the provision, the Court has fortified the rights of authors and creators against malicious and unfounded allegations.

The Case Law Discussed:

Case Title: Manya Vejju @ MV Kasi Vs Sapna Bhog

Date of Judgement/Order:13.12.2023

Case No. Appeal From Order No.438 of 2023

Neutral Citation: 2023:BHC:AS:37466

Name of Hon'ble Court: Bombay High Court

Name of Hon'ble Judge: N.J.Jamadarz, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539