Star India Private Limited Vs Crichd.Pk

Dynamic legal remedies in evolving digital landscape

Introduction:

The rapid evolution of digital technologies has significantly altered the landscape of content distribution, particularly in the realm of broadcasting and media rights. The legal system faces increasing challenges in responding to the complexities of digital copyright infringement, where online platforms and pirated streaming services threaten the legitimate business interests of content owners. One such dispute, titled Star India Private Limited vs Crichd.Pk (CS(COMM) 840/2024) in the Delhi High Court, deals with the infringement of broadcasting rights related to the ICC Women’s T20 World Cup 2024, which is being aired on the plaintiff’s OTT platform, Disney + Hotstar. This case sheds light on the dynamic legal remedies required to combat copyright violations in the fast-changing digital environment.

Factual Background of the Case:

In the case of Star India Private Limited vs Crichd.Pk, the plaintiff, Star India Private Limited, is the exclusive broadcaster of the ICC Women’s T20 World Cup 2024 on its OTT platform, Disney + Hotstar. Star India contended that the defendant, Crichd.Pk, a rogue website engaged in unauthorized streaming of live cricket matches, was broadcasting the T20 World Cup without the required permissions or licenses. The defendant’s infringing activities deprived Star India of legitimate revenues and undermined their exclusive broadcasting rights.

Crichd.Pk is known for operating outside traditional legal jurisdictions, making it difficult to enforce copyright laws directly. The unauthorized streaming of live sports events is a major concern for content creators and broadcasters who invest heavily in securing exclusive digital broadcasting rights. The live nature of sporting events, especially T20 cricket, further complicates enforcement due to the ephemeral and time-sensitive nature of the content.

Legal Issues and Infringement Allegations:

The plaintiff’s key allegation revolves around copyright infringement under the Copyright Act, 1957, which protects both the broadcasting rights and the communication to the public rights of the content owner. By illegally streaming the live matches of the ICC Women’s T20 World Cup 2024, Crichd.Pk violated Star India’s exclusive right to broadcast and distribute the content on its digital platform.

Additionally, Star India argued that the rogue website's actions amounted to passing off, where viewers might be misled into believing that the unauthorized stream had some affiliation with or endorsement from the legitimate broadcaster. The plaintiff sought injunctive relief from the court to stop the defendant’s infringing activities and prevent further damage to their business and reputation.

Interim Injunction: A Time-Sensitive Remedy:

Due to the time-sensitive nature of T20 matches, where games are typically completed in a few hours, the plaintiff argued that the delay in granting an interim injunction could result in irreparable harm. Once a match is broadcast illegally, the monetary damage and loss of exclusive viewership rights are immediate and often irreversible. The plaintiff established a prima facie case for granting an interim injunction, emphasizing that without immediate court intervention, the ongoing infringement would lead to significant financial losses and undermine their business interests.

Evolving Digital Environment:

The case underscores the unique challenges posed by the evolving digital landscape. The rise of the internet, coupled with sophisticated technologies enabling live streaming, has created new avenues for content piracy. Rogue websites like Crichd.Pk operate with impunity by hosting their servers in foreign jurisdictions, making it difficult for courts to effectively enforce orders.

Furthermore, the issue of mirror websites complicates enforcement, as infringing sites can easily change their domain names or set up alternative websites to continue their illegal activities. The dynamic and decentralized nature of the internet presents jurisdictional challenges, requiring legal remedies to be flexible and adaptive.

Application of Dynamic Injunction in This Case:

The court, in Star India Private Limited vs Crichd.Pk, granted a dynamic injunction against the rogue website, prohibiting it from engaging in any further infringing activities. The court also directed Internet Service Providers (ISPs) to block access to the infringing website and any other mirror sites that might be created to broadcast the ICC Women’s T20 World Cup without authorization. This form of adaptive remedy reflects the court’s acknowledgment of the rapid technological advancements that allow infringers to circumvent traditional injunctions and continue their activities in different formats.

Conclusion:

The case of Star India Private Limited vs Crichd.Pk serves as an important reminder of the need for dynamic legal remedies in today’s evolving digital landscape. As online copyright infringement becomes more sophisticated, courts must adopt flexible and forward-looking approaches to enforce intellectual property rights effectively. Through the application of dynamic injunctions and the collaborative efforts of ISPs and search engines, the legal system can adapt to the complexities of the digital age while safeguarding the interests of legitimate content owners.

Case Citation: Star India Private Limited vs Crichd.Pk; 30.09.2024: CS(COMM) 840/2024:Delhi High Court: Mini Pushkarna, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Wipro Enterprises Vs Himalaya Wellness

Hush Category Product (Women's Hygiene Product) and Probability of Confusion

Introduction:

In the domain of intellectual property law, trademark disputes often revolve around the use of similar marks for competing products, which can lead to consumer confusion and misrepresentation. One such dispute occurred between Wipro Enterprises (the Appellant) and Himalaya Wellness (the Respondent), concerning the use of the trademark "EVECARE" for women’s hygiene products. The primary issue revolved around trademark infringement and passing off, with Himalaya Wellness arguing that Wipro’s product name was confusingly similar to their own, thereby potentially misleading consumers. This case illustrates the broader legal principles surrounding the likelihood of confusion in product markets and the protection of trademark rights.

Factual Background of the Case:

The dispute originated when Himalaya Wellness, a company renowned for its Ayurvedic products since 1930, filed a suit against Wipro Enterprises. Himalaya alleged that Wipro's use of the mark "EVECARE" for its female hygiene products, categorized under Hush Products, infringed on their registered trademark for the same name, used for their Ayurvedic medicines. Specifically, Himalaya asserted that Wipro’s products could create confusion among consumers who might associate Wipro's female hygiene product with Himalaya’s well-established Ayurvedic offerings under the same brand name.

Himalaya Wellness contended that both products targeted the same demographic – women – and that the use of the identical mark would lead consumers to believe that Wipro’s products were connected with or endorsed by Himalaya. Consequently, Himalaya sought an interim injunction to prevent Wipro from using the "EVECARE" mark.

In response, Wipro argued that their use of the mark was in relation to a distinct class of products, specifically women’s hygiene products, and therefore there was no risk of confusion with Himalaya's products, which comprised tablets and syrups for medicinal purposes. Despite Wipro’s defense, the Single Judge of the trial court granted an interim injunction in favor of Himalaya, prompting Wipro to appeal the decision.

Issue of the Case:

The central legal question before the court was whether Wipro's use of the mark "EVECARE" constituted trademark infringement and passing off, thereby justifying the continuation of the interim injunction. The court was tasked with determining if Wipro’s use of the same mark for women’s hygiene products, under the Hush Product category, was likely to cause confusion among consumers and, therefore, whether Wipro should be restrained from further use of the mark.

Key Issues:

Likelihood of Confusion: Was Wipro’s use of the mark "EVECARE" likely to confuse consumers into believing that their products were associated with or endorsed by Himalaya Wellness?

Similarity of Goods: Did the products of both companies fall within similar categories or allied goods, which would contribute to the possibility of confusion in the minds of consumers, especially since both targeted the same consumer group?

Contentions of the Parties: Appellant (Wipro Enterprises):

Distinctive Nature of Products: Wipro argued that their product, marketed under the name "EVECARE", was a cosmetic cleansing product in the women’s hygiene category, which was entirely distinct from the medicinal products offered by Himalaya under the same mark. Wipro maintained that their product was not in competition with Himalaya’s tablets and syrups, which were used for Ayurvedic medicinal purposes.

Reputation and Market Position: Wipro contended that they were a reputable company with a longstanding presence in the market and did not engage in practices that would lead to consumer confusion or deception. They argued that they were not a "fly-by-night" entity, and their entry into the female hygiene market was genuine and legitimate.

Respondent (Himalaya Wellness):

Consumer Confusion: Himalaya argued that both companies targeted the same consumer base, i.e., women, and that the use of the mark "EVECARE" by Wipro created a high risk of confusion. The similarity in the names, combined with the overlap in the target demographic, meant that consumers were likely to assume that Wipro’s product was affiliated with or originated from Himalaya.

Search Results Confusion: Himalaya provided evidence from internet search results that displayed both companies’ products when the term "EVECARE" was searched. This, they claimed, was a clear indicator of potential confusion, as consumers could not easily distinguish between the two products.

Trademark Protection: Himalaya asserted their right to protect their registered trademark, which had been in use for a considerable period, and argued that Wipro’s use of the mark amounted to passing off.

Issues Dealt with by the Court:

The court delved into multiple aspects of the case, focusing on two pivotal issues:

Likelihood of Confusion: The court had to determine whether the use of the same mark for different products was likely to mislead or confuse consumers. In this context, the court emphasized that the relevant consumer base – women purchasing hygiene products – might not carefully scrutinize the difference between Wipro's hygiene product and Himalaya’s medicinal products, thereby increasing the risk of confusion.

Similarity of Goods and Services: Another critical issue was whether Wipro’s hygiene product and Himalaya’s Ayurvedic medicines could be considered allied or related goods. The court noted that while the products were physically different, they both catered to women’s health and hygiene, a broad enough category to create an association in the minds of consumers.

Court’s Reasoning: Likelihood of Confusion:

The court agreed with the Single Judge’s finding that the likelihood of confusion was significant in this case. The court reasoned that consumers, when purchasing hush category products like women’s hygiene items, are unlikely to engage in detailed comparisons between brands, especially when both products serve related functions in the domain of women’s care.

Moreover, the court clarified that allied goods do not need to share a physical relationship but rather a connection in the minds of consumers. Since both Wipro and Himalaya’s products catered to women’s health, the average consumer might reasonably assume that Wipro’s "EVECARE" product was linked to or endorsed by Himalaya.

Final Decision:

The court ultimately dismissed the appeal filed by Wipro Enterprises, affirming the interim injunction granted by the Single Judge. The court found that Wipro’s use of the "EVECARE" mark was likely to result in consumer confusion and could amount to passing off. However, the court made it clear that its observations were based on a prima facie view, and the final merits of the case would be determined during the trial.

Key Takeaways from the Judgment:

Allied Goods Doctrine: The court reiterated that goods do not need to be identical to create confusion. If the products are connected in the minds of consumers, they may be considered allied goods, which increases the likelihood of confusion.

Consumer Confusion in Hush Products: The judgment highlights the particular vulnerability of consumers in the hush category (women’s hygiene products) to confusion, as these products are often purchased without extensive inquiry or research.

Trademark Protection: The case underscores the importance of protecting registered trademarks, particularly when the marks have been long-established and recognized in the market.

Conclusion:

The decision in this case reinforces the principle that trademark rights are designed not only to protect the interests of the trademark owner but also to safeguard consumers from confusion and deception. The court's judgment places significant emphasis on the likelihood of confusion in the context of allied products, even when the physical nature of the goods may differ. The ruling also underscores the need for companies to conduct thorough due diligence before adopting a mark that might conflict with an established brand in a related product category.

Case Citation: Wipro Enterprises Vs Himalaya Wellness; 01.09.2024: FAO (OS) (COMM) 145/2023 :2024:DHC:7544-DB:Delhi High Court: Vibhu Bakhru and Tara Vitasta Ganju, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Aditya Birla Fashion Vs Mrs Saroj Tandon

Pre-Institution Mediation as per Section 12-A of the Commercial Courts Act, 2015: Mandatory for Counter-Claims in Commercial Disputes

Introduction:

The Commercial Courts Act, 2015 was enacted with the primary objective of ensuring the speedy resolution of high-value commercial disputes. Section 12-A of the Act, introduced in 2018, mandates pre-institution mediation for parties intending to file commercial suits, barring certain exceptional cases. The legislative intent behind this provision is to encourage amicable settlements before resorting to litigation. However, questions arise regarding its applicability to counter-claims. In the case of Aditya Birla Fashion and Retail Limited vs. Mrs. Saroj Tandon, the court addressed the crucial issue of whether pre-institution mediation under Section 12-A is mandatory for counter-claims filed in response to commercial suits.

Background of the Case: The Dispute:

Aditya Birla Fashion and Retail Limited (the petitioner) entered into a lease agreement with Mrs. Saroj Tandon (the respondent) for a commercial property. Due to the unforeseen circumstances caused by the COVID-19 pandemic, the petitioner had to close down its leased shop and sought the return of its security deposit from the respondent. The petitioner initiated pre-institution mediation, as required under Section 12-A of the Commercial Courts Act, 2015, before filing the suit. However, the respondent failed to appear for the mediation proceedings, leading the process to be declared a "non-starter."

Filing of Suit and Counter-Claim:

Subsequently, the petitioner filed a commercial suit before the High Court of Delhi for the recovery of its security deposit. The respondent, in turn, filed a counter-claim for the unpaid rental amounts, which was registered as a commercial suit. The crux of the issue arose when the petitioner argued that the respondent’s counter-claim was invalid due to the absence of pre-institution mediation, as mandated by Section 12-A.

Legal Framework: Section 12-A of the Commercial Courts Act, 2015:

Section 12-A of the Commercial Courts Act was introduced to ensure that parties attempt to settle their disputes amicably before burdening the courts with litigation. The provision mandates that no suit concerning a commercial dispute can be instituted unless the plaintiff exhausts the remedy of pre-institution mediation.

Key Provisions of Section 12-A:

Mandatory Mediation: Parties must attempt pre-institution mediation before filing a suit, unless urgent interim relief is sought.

Objective: The provision aims to reduce the burden on commercial courts by encouraging parties to resolve disputes outside the courtroom.

Exception: The requirement for pre-institution mediation is waived in cases where urgent interim relief is necessary.

Issue Raised:

The core issue in this case is whether the mandatory pre-institution mediation requirement applies to counter-claims in commercial disputes. While the statute clearly mandates mediation for initiating a suit, its applicability to counter-claims remains ambiguous.

Petitioner’s Argument: The petitioner contended that the respondent's counter-claim was not maintainable, as it did not comply with the mandatory pre-institution mediation requirement. Since the Commercial Courts Act explicitly requires mediation before the filing of a suit, the same principle, they argued, should apply to counter-claims.

Respondent’s Argument: The respondent, however, argued that pre-institution mediation was not required for the counter-claim because the parties had already engaged in mediation for the original suit, which was declared a non-starter due to their non-participation. Additionally, the respondent contended that requiring mediation for the counter-claim would defeat the purpose of a speedy trial and unnecessarily delay proceedings.

Legal Question Before the Court:

The court was called upon to decide whether Section 12-A’s pre-institution mediation requirement extends to counter-claims. The question was novel, as the law explicitly refers to the initiation of suits but does not directly address counter-claims.

Contentions of the Parties: Petitioner’s Contentions:

Non-Compliance with Section 12-A: The petitioner argued that the respondent’s counter-claim should be rejected on the ground that it was not preceded by pre-institution mediation, as required by Section 12-A. Legislative Intent: The petitioner further contended that the legislative intent behind Section 12-A was to promote early settlement of disputes, reduce the burden on courts, and ensure efficient resolution of commercial disputes. Allowing counter-claims to bypass this process, they argued, would undermine the purpose of the statute.

Respondent’s Contentions:Prior Mediation Attempt:

The respondent countered that pre-institution mediation had already been attempted in the original suit and had failed, as the mediation was declared a non-starter. Requiring a separate mediation for the counter-claim would be futile and redundant. Objective of Speedy Trial: The respondent also emphasized that subjecting counter-claims to mandatory mediation would delay proceedings, contrary to the objective of ensuring a speedy trial in commercial disputes.

Issues Dealt with by the Court:The court had to consider several key issues:

Applicability of Section 12-A to Counter-Claims: The court examined whether the mandatory pre-institution mediation under Section 12-A applies equally to counter-claims as it does to original suits.

Legislative Intent and Purpose: The court analyzed the broader legislative intent behind Section 12-A, particularly its role in promoting a favorable dispute resolution environment and enhancing India’s ranking in the World Bank's Doing Business Report by improving the efficiency of commercial dispute resolution.

Practical Considerations: The court also weighed the practical considerations surrounding mediation, such as its cost-effectiveness, the potential for an amicable settlement, and the possible delays caused by requiring mediation for counter-claims.

Court’s Reasoning and Final Decision: Reasoning:

The court reasoned that the intent of Section 12-A is clear: it seeks to promote mediation as an alternative dispute resolution mechanism for commercial disputes, including counter-claims. This ensures that disputes are resolved efficiently, without overburdening the judicial system. The court observed that counter-claims are integral to the overall dispute between the parties, and requiring mediation for counter-claims serves the same purpose as mediation for original suits.

However, the court also recognized that there were practical challenges in enforcing pre-institution mediation for counter-claims. In this case, the respondent’s counter-claim was filed before the mandatory nature of Section 12-A was explicitly clarified by the Supreme Court. Hence, the court was of the view that it would be unfair to penalize the respondent for not undergoing mediation.

Final Decision:

The court concluded that while pre-institution mediation under Section 12-A is mandatory for counter-claims, it would not reject the respondent’s counter-claim in this particular case, as the counter-claim was filed before the mandatory nature of Section 12-A had been explicitly enforced. The court further held that moving forward, all counter-claims in commercial disputes would be subject to the same pre-institution mediation requirement as original suits, unless the counter-claim seeks urgent interim relief.

Conclusion:

This judgment clarifies the scope of Section 12-A of the Commercial Courts Act, 2015, by confirming that pre-institution mediation is mandatory for counter-claims in commercial disputes. The court's decision underscores the importance of mediation in reducing litigation costs, promoting early settlements, and ensuring efficient resolution of disputes. However, the court also recognized the practical challenges in retroactively applying this requirement, thereby protecting the respondent’s counter-claim in the present case. This case serves as a significant precedent for future commercial disputes, emphasizing that pre-institution mediation is not merely procedural but a substantive step in the dispute resolution process.

Case Citation: Aditya Birla Fashion Vs Mrs Saroj Tandon; 2024:DHC:6693 02.09.2024: CM(M) 459/2023:2024:DHC:7486:Delhi High Court: Manoj Jain, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Akash Pack Vs Today Tea

Diligence Required for Corporate Entities Seeking Exemption Under the Limitation Act:

Background of the Case:

The case under discussion involves Akash Pack (the appellant) and Today Tea (the respondent) in a money recovery suit. This dispute arose from a judgment and decree passed on October 3, 2018, by the Additional District & Session Judge-03, East District, Karkardooma Courts, Delhi, in favor of Today Tea. Akash Pack, dissatisfied with the decision, sought to challenge the ruling through an appeal. However, the appeal was filed after a significant delay, leading Akash Pack to submit an application for condonation of delay under Section 5 of the Limitation Act, 1963.

The Limitation Act sets a statutory timeframe within which legal proceedings must be initiated. In cases where a party seeks an extension of this timeframe, it is required to demonstrate “sufficient cause” for the delay. Failure to comply with these time limits results in the loss of the right to file an appeal. Hence, Akash Pack’s application for condonation of delay became the key issue for the court to resolve.

Issue of the Case:

The central issue for the court was whether Akash Pack's delay in filing the appeal could be condoned and whether the appeal should be heard on its merits. The crux of the legal question revolved around whether Akash Pack, as a corporate entity, had exercised the due diligence expected of it and whether it had provided a credible and sufficient cause for the delay in filing the appeal.

Under Section 5 of the Limitation Act, the court has the discretion to allow delayed filings if "sufficient cause" is demonstrated. In this case, the court needed to determine if Akash Pack’s explanation met this standard.

Legal Framework: Section 5 of the Limitation Act:

Section 5 of the Limitation Act, 1963, allows a court to condone delays in filing appeals or applications when “sufficient cause” is established. However, the Act does not define what constitutes “sufficient cause,” leaving it to the discretion of the court.

The law requires parties seeking such relief to show that the delay was caused by factors beyond their control or that they acted diligently, even though they missed the statutory deadline. Courts have emphasized that though the law of limitation should be interpreted liberally to avoid injustice, "sufficient cause" cannot be a tool for litigants to bypass deadlines due to negligence or inaction.

Contentions of the Parties

Akash Pack (Appellant):

The appellant attributed the delay in filing the appeal to administrative exigencies, citing that an official responsible for handling the litigation had left the organization. This sudden departure led to a loss of track regarding the proceedings, causing the appeal to be filed after the statutory period had elapsed.

The appellant argued that the court should adopt a liberal approach in interpreting the law of limitation, especially since the substantive rights of Akash Pack would be adversely affected if the appeal was not heard. They also contended that the trial court’s judgment was flawed, particularly in its interpretation of the sale of goods and other legal aspects. Therefore, denying the appeal would lead to a miscarriage of justice.

Today Tea (Respondent):

Today Tea opposed the condonation of delay, asserting that Akash Pack failed to provide a sufficient cause for the delay. The respondent emphasized that as a corporate entity, Akash Pack should be held to a higher standard of diligence in managing its legal affairs.

The respondent pointed out that corporate entities are equipped with sufficient resources and professional staff to ensure compliance with statutory deadlines. Akash Pack’s failure to track its litigation reflected a lack of due diligence and should not be excused.

They further argued that the appellant’s negligence should not result in prejudice to the respondent, who had acquired valuable accrued rights due to the lapse of time.

Issues Dealt with by the Court

The court had to consider the following key issues:

Interpretation of “Sufficient Cause”: Whether Akash Pack's explanation for the delay in filing the appeal fell within the definition of “sufficient cause” under Section 5 of the Limitation Act.

Corporate Diligence: Whether a corporate entity like Akash Pack should be held to a higher standard of care and responsibility when managing litigation, given its resources and professional infrastructure.

Balance of Rights: Whether condoning the delay would unfairly prejudice Today Tea, considering the accrued rights it had gained due to the passage of time and Akash Pack’s inaction.

Substantial Justice vs Procedural Lapses: Whether the interest of substantial justice outweighed procedural lapses in this case, and whether denying the appeal would lead to injustice for Akash Pack.

Court's Analysis and Reasoning:

Sufficient Cause and Administrative Lapses: The court scrutinized the reasons provided by Akash Pack for the delay. The appellant claimed that an official responsible for managing the litigation had left the company, resulting in a loss of track of the case. However, the court found this explanation to be inconsistent and unsatisfactory. Akash Pack, as a corporate entity, is expected to have internal mechanisms for handling legal matters, and the departure of a single employee cannot be deemed a sufficient cause for such a long delay.

The court noted that the appellant had not provided documentary evidence or a clear timeline to justify the delay, further weakening their claim. The court emphasized that corporate entities are expected to exercise greater diligence in handling their legal obligations, given their resources and organizational capacity.

Corporate Diligence: The court observed that Akash Pack, as a corporate entity, should have been more proactive in tracking its legal proceedings. The company’s failure to do so demonstrated negligence rather than an unavoidable circumstance. Courts have consistently held that corporate entities must maintain systematic records and ensure that litigation is managed by capable professionals. Failure to do so cannot be excused under the guise of administrative lapses.

The court reiterated that while individuals may sometimes be granted leniency for delays due to personal difficulties, corporate entities cannot seek the same indulgence. The law expects higher standards of diligence from such entities, especially when dealing with legal proceedings.

Accrued Rights of the Respondent: The court also took into account the rights accrued to Today Tea due to the passage of time. The respondent had obtained a favorable judgment, and condoning the delay would effectively deprive the respondent of the finality of that judgment. The court held that substantial justice requires a balance between the rights of both parties. In this case, Akash Pack’s inaction should not result in prejudice to the respondent’s legitimate rights.

Final Decision: After considering all the facts, the court found that no sufficient cause had been established to condone the delay. The appellant’s explanations were found to be vague, inconsistent, and contrary to the records. Moreover, the court held that corporate negligence cannot be a ground for condonation under the Limitation Act. Consequently, the court dismissed Akash Pack’s application for condonation of delay, thus upholding the rights of Today Tea.

Conclusion:

This case underscores the principle that corporate entities are expected to exercise a high degree of diligence when seeking exemptions under the Limitation Act. Courts have repeatedly emphasized that while the law of limitation should be interpreted in a liberal manner, it cannot be rendered ineffective due to the negligence or inaction of the appellant, particularly when it involves a corporate entity with ample resources to manage its legal affairs. The court’s decision affirms the importance of balancing procedural justice with substantive rights and protecting the accrued rights of respondents who have relied on the statutory limitations to secure finality in legal disputes.

Case Citation: Akash Pack Vs Today Tea: 27.09.2024: RFA 303/2020:2024:DHC:7486:Delhi High Court: Girish Kathpalia, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Akemi Chemisch Vs Devki Nandan Malik

Passing off protects the goodwill of a business from misrepresentation

Background of the Case:

The present matter before the High Court of Delhi involves Akemi Chemisch Technische Spezialfabrik GmbH (plaintiff) versus Devki Nandan Malik trading as Delhi Hardware and Engg Works (defendant). The case revolves around allegations of intellectual property infringement, with the plaintiff asserting that the defendant is selling counterfeit products that unlawfully bear the plaintiff’s trademarks and copyrighted materials. The case is being heard under the jurisdiction of the Code of Civil Procedure, 1908 (CPC) and the Commercial Courts Act, 2015, which govern procedural aspects for civil litigation and commercial disputes in India.

Facts of the Case:

Akemi Chemisch Technische Spezialfabrik GmbH, a German-based company, is engaged in the business of manufacturing and selling high-quality adhesives and stone care products. It has gained substantial goodwill in the market, with its trademarks enjoying widespread recognition. The defendant, operating under the name Delhi Hardware and Engg Works, is alleged to be selling counterfeit products falsely representing them as genuine Akemi products.

The plaintiff claims that these counterfeit goods are not only substandard and inferior but also hazardous, damaging both the plaintiff’s reputation and posing a risk to consumer safety. As a result, the plaintiff has filed a suit for trademark and copyright infringement, along with an application for an interim injunction to restrain the defendant from continuing its unlawful activities.

Legal Issues:

The key legal issues in this case are:

Trademark Infringement: Whether the defendant has infringed the plaintiff's registered trademarks by selling counterfeit products under the same or deceptively similar marks.

Passing Off: Whether the defendant's conduct amounts to passing off, where the defendant has created confusion among consumers by falsely representing their counterfeit goods as those of the plaintiff.

Copyright Infringement: Whether the defendant has violated the plaintiff’s copyright by using packaging, labels, or promotional material that copies or imitates the plaintiff's original works.

Public Safety and Consumer Protection: Whether the sale of counterfeit products poses a danger to consumers, given the inferior quality and potential hazardous nature of the goods.

Trademark Rights: The plaintiff contends that their trademarks have acquired secondary significance, meaning they have come to be closely associated with their business and products. Any use of these marks by the defendant would create confusion in the market, misleading consumers to believe they are purchasing genuine Akemi products when, in fact, they are being sold inferior, counterfeit goods.

Passing Off and Infringement: The plaintiff alleges that the defendant is engaged in the practice of passing off their products as genuine Akemi products, which constitutes trademark infringement under the Trade Marks Act, 1999. The plaintiff claims that this not only causes irreparable harm to its brand and reputation but also misleads and deceives consumers.

Copyright Infringement: The plaintiff argues that the defendant has copied the packaging, labels, and branding of Akemi products without permission, infringing on the plaintiff’s copyrighted material.

Consumer Safety: The plaintiff asserts that the sale of counterfeit products poses serious risks to consumers, as these products are of substandard quality, potentially hazardous, and could cause damage to property or health.

Legal Analysis:

Trademark Infringement and Passing Off: Under Section 29 of the Trade Marks Act, 1999, a registered trademark is considered to be infringed if an identical or deceptively similar mark is used in relation to goods or services without the trademark owner's consent. In this case, the court observed that the defendant was using marks identical or confusingly similar to those of the plaintiff, leading to a clear case of trademark infringement.

Additionally, the common law principle of passing off protects the goodwill of a business from misrepresentation. By selling counterfeit goods under the Akemi name, the defendant is engaging in passing off, leading consumers to falsely believe they are purchasing genuine Akemi products, thereby damaging the plaintiff’s brand.

Copyright Infringement: Under the Copyright Act, 1957, copyright protects the artistic, literary, and aesthetic elements of a product, including packaging, labels, and promotional material. The defendant’s unauthorized use of packaging and branding similar to that of the plaintiff constitutes copyright infringement. This aspect of the case highlights the defendant’s attempt to pass off counterfeit goods by copying the "trade dress" of Akemi products, which is protected under copyright law.

Consumer Safety: The issue of public safety also plays a critical role in this case. The plaintiff has convincingly demonstrated that the counterfeit products being sold by the defendant are not only substandard but also hazardous, posing a potential risk to consumers. This is a matter of public concern, and the court recognizes the need to protect consumers from such dangerous, counterfeit goods.

Interim Injunction and Court’s Ruling:

Based on the strength of the plaintiff’s arguments, the court was persuaded to grant an interim injunction against the defendant. The injunction restrains the defendant from:

Manufacturing, selling, or distributing counterfeit products bearing the plaintiff's trademarks;

Using any marks deceptively similar to the plaintiff’s registered trademarks;Infringing upon the plaintiff’s copyright through unauthorized use of similar packaging or branding;Engaging in any acts of passing off that create confusion in the marketplace.The court emphasized that the sale of counterfeit products not only violates the plaintiff’s intellectual property rights but also poses a significant threat to consumer safety. As a result, the court granted the injunction to prevent further harm to the plaintiff’s business and to safeguard public interest.

Conclusion:

In cases involving the sale of counterfeit goods, the defendant has no legal right to sell products that infringe upon the intellectual property of another party. The court’s decision in this case highlights the importance of protecting trademark owners from the sale of counterfeit products, which can cause irreparable harm to their business and reputation. Additionally, the court underscored the need to protect consumers from the dangers of substandard and hazardous counterfeit goods.

Case Citation: Akemi Chemisch Vs Devki Nandan Malik: 21.08.2024: CS(COMM) 706/2024: Delhi High Court: Mini Pushkarna, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.