Tuesday 21 June 2016

International Yoga Day Celebrated Worldwide on June 21

June 21, 2016 marks the second International Yoga Day, two years after Indian Prime Minister Narendra Modi successfully convinced the UN to declare an international day for Yoga. The declaration was made on December 10, 2014, and India celebrated the inaugural Yoga day with full fervor on June 21, 2015, as covered in Vol. VII, Issue No. 25 of our e-newsletter “IP ©onnect”, dated June 22, 2015,  available here.

The celebrations did not simmer down for the second edition of the Yoga day, as over 30,000 people performed yoga, led by PM Modi during the event held at the Capitol Complex in the city of Chandigarh, Punjab. President Pranab Mukherjee also led about 1,000 people at a Yoga event held at the Rashtrapati Bhavan.

The logo of International Day of Yoga is the folding of both hands. It symbolizes ‘Yoga’ that is the union, which reflects the union of individual consciousness with that of universal consciousness, a perfect harmony between mind and body, man and nature – a holistic approach to health and well-being.

Photo Courtesy: The Hindu, an Indian daily

During his speech in the U.S. Congress on June 8, 2016, Prime Minister Modi jocularly remarked that “it is estimated that more Americans bend for Yoga than to throw a curve ball. And no, Mr. Speaker, we have not yet claimed intellectual property rights on Yoga.” This comment raises interesting questions about the protectability of Yoga as an intellectual property. Our research team analyzed this aspect last year, which can be found at the aforementioned link.

Mr. Vikrant Rana, Managing Partner of S.S. Rana & Co., participated in the Croatian celebration of International Yoga Day in Hrvatska on June 19, 2016 organized by the Embassy of India, Zagreb.

Second International Yoga Day in numbers:
  • 135 plus nations participating.
  • Estimated 40-50 crore yoga day participants from across the world.
  • Over one lakh yoga programmes across India.
  • 35,000 people, led by the PM, participated in the event in Chandigarh, Punjab.
  • 57 ministers led yoga programmes in various parts of India.
  • 10,000 participants simultaneously performed yoga at various locations in Delhi.
  • $80 billion: the estimated evaluation of the yoga industry worldwide. 

India: Recent Trend of COMPAT taking Notice of CCI’s disregard to Principles of Natural Justice

The recent change in the relationship between the Competition Appellate Tribunal (COMPAT) and the Competition Commission of India (CCI) has been studied in light of the appeal made in the case of M/s GHCL Ltd. v. M/s Coal India Ltd. and M/s Western Coalfields Ltd. (Case No. 08 of 2014) before the CCI.

Source: 1. IZ quotes, 2. Pinterest
Brief Background:

The Informant-GHCL, is a soda ash manufacturing and selling Company. The Opposing Parties (OP) are the Central Government owned Coal India Ltd. (here in after referred to as ‘CIL’), and its subsidiaries- Mahanadi Coalfields Ltd, Western Coalfields Ltd and South Eastern Coalfields Ltd. CIL issued a Letter of Assurance (LoA),  NGP/WCL/S&M/C-12(348-B)/798 dated June 07, 2010, to the Informant, who required coal for running its captive power plant, calling upon it to fulfil various conditions precedent to enter into a Fuel Supply Agreement (hereinafter referred to as ‘FSA’) for supply of coal. FSA was mandatory for commencing supply of coal under the New Coal Distribution Policy, 2007 (hereinafter referred to as ‘NCDP’). Informant was required to execute a Memorandum of Understanding along with the FSA. The terms and conditions of FSA were non-negotiable and any delay or failure to execute the FSA within the stipulated time period would result in the invocation of the bank guarantee issued by the Informant. The Informant was required to furnish a Commitment Guarantee (CG) in the form of a bank guarantee of INR 1, 00, 38,900, equivalent to 10% of the base price of indigenous coal as on the date of application for issue of LoA. Pursuant to this, the Informant claimed that the opposing parties were abusing its dominant position and thus acting in contravention of the Competition Laws.

  1. What is the relevant market in the present case?
  2. Whether the Opposite Parties are dominant in the said relevant market?
  3. If the Opposite Parties are in a dominant position whether they have abused their dominant position in the relevant market?
Contentions of Informant:
  • The opposing parties have abused their dominant position by dictating the terms and conditions of supply of coal through LoA, FSA and MoU, which are not in accordance to the NCDP. The Deemed Delivered Quantity (DDQ) clause gave undue power to opposing parties to avoid liability for short supply. Severe operational and maintenance problems were caused due to supply of inferior quality of coal by the opposing parties, thereby forcing the Informant to purchase quality coal from alternate sources.
  • When the Informant contested the clauses in the MoU, the opposing parties threatened to encash the commitment bank guarantee furnished by the Informant, pursuant to a clause in the LoA.
  • E-auction conducted by the opposing parties increased their revenue by 36% but made them unable to meet their contractual commitments like Annual Contracted Quantity (ACQ) to consumers under FSAs. The Informant was forced to engage alternative sources to obtain additional supply of coal.
Contentions of Opposite Party (OP):
  • CIL does not hold a dominant position because there are a number of other significant active players in the global market.
  • It cannot be said that CIL used its dominant position to make the Informant sign the MoU as despite being provided ample opportunity, of nearly 2 years, to raise objections, the Informant silently signed the MoU and only brought up this issue before the Commission.
  • Being owned and controlled by the Government it is not driven purely by a profit motive and its social responsibilities take precedence over its commercial interests.
  • Office of the Coal Controller (CCO), and the sampling and analysis process is in accordance to Bureau of Indian Standard. CCO rules also provide for a statutory complaint mechanism which can be exercised by any customer who is not happy with the grade of coal that is being supplied to it. Thus, the absence of a clause specifically providing a customer with the same remedy cannot be seen as discriminatory treatment, as the right to do so does not affect the ability of the customer to exercise his/her rights.
  • The findings of the Director General Report are nothing but a reproduction of the findings of the Commission which were used in previous cases.
  • The allegation that the coal was being diverted towards e-auction is false. As WCL could not have foreseen the short lifting on the part of the power consumers at the time of entering into FSA and MoU.
  • It was prayed on behalf of WCL that the Informant has misrepresented the facts and has not approached the Commission with clean hands.

CCI found the Informant’s allegations prima facie true and asked its investigation wing- DG’s office, to probe into the matter. The DG report stated that-
  1. The conditions imposed by the opposing parties in LoA, FSA and MoU were unfair and discriminatory including reduction of the quantity of supply, trigger level for penalty and DDQ.
  2. WCL’s conduct of asking the Informant to extend CG or face the consequence of encashment of Bank Guarantee, was found to be abusive under section 4(2)(a)(i) of the Competition Act.
  • It appears that the plea of CIL has no force. The Informant’s contention that the quality of coal supplied by WCL was of inferior quality is accepted. 
  • The relevant geographic market was taken as the whole of India by the DG as the conditions for supply of coal in the entire country are uniform and homogeneous.
  • Pursuant to the Coal Mines (Nationalization) Act, 1973, production and distribution of coal is in the hands of the Central Government, therefore, CIL and its subsidiary companies have been vested with monopolistic power in this regard. Further, coal companies have acquired a dominant position due to the New Coal Distribution Policy (NCDP).
  • Opposing Parties have not produced any document material to substantiate the terms of the FSA, LoA and MoU. Further, the purchaser had no option but to accept the terms and conditions of MoU as there was no scope for negotiation.
  • The Commission, in agreement with the DG, is of the opinion that opposing parties have contravened the provisions of section 4(2)(a)(i) of the Act by imposing unfair and discriminatory conditions in FSA upon the Informant.
  • In view of the above points the following order was passed:
    1. Opposing Parties are directed to cease and desist from abusing its dominant position.
    2. Opposing Parties are to take remedial steps within 60 days from the receipt of this order.
    3. A penalty of Rs. 1773.05 Crores have been imposed upon them.
Opposing Parties preferred an appeal before the Appellate Tribunal. Therefore, the directions relatable to the clauses and conduct which are also subject matter of this order would be subject to the decision of Competition Appellate Tribunal (hereinafter referred to as the ‘COMPAT’).

The COMPAT observed that it has repeatedly been held by the Supreme Court that the quasi-judicial Commission is “bound to comply with different facets of the principles of natural justice."


There has been a remarkable change in the outlook of the COMPAT regarding the judgments passed by CCI. The shift in trend which seems to have begun in 2015, simply cannot go unnoticed. In the Board of Control for Cricket in India (BCCI) v. CCI case (decided on February 23, 2015) it was held by COMPAT that the order passed by CCI was a blatant violation of the settled principles of natural justice and was liable to be set aside only on that ground. The same was reiterated in the case of All India Organization of Chemists and Druggists v. CCI (decided on April 27, 2015). Further on December 11, 2015, COMPAT had revoked the Commission's order that imposed a combined penalty of INR 6,316 crore on 11 cement companies for allegedly forming a price cartel on the same grounds of ignorance of principles of natural justice. It is a matter of concern that the CCI has been nonchalant in its administration of justice and has time and again ignored the principles of natural justice. The fact that COMPAT is taking notice of such astonishing lapse in law is a positive sign that will herald a fairer and more just implementation of law.

  1. http://smartinvestor.business-standard.com/market/story-384406-storydet-COMPAT_turns_down_Rs_1_773_crore_CCI_penalty_on_Coal_India.htm#.V1Udsfl97ow
  2. http://kluwercompetitionlawblog.com/2016/02/05/lessons-from-compats-judgment-in-hiranandani/
  3. http://www.conventuslaw.com/archive/india-competition-watchdog-guilty-of-violating-principles-of-natural-justice/
The Burgeoning Saga of Character Merchandising: Instances and Legalities

Indian Daily, the Times of India has recently reported that senior and famous comic-artist of India, Narayan Debnath who has created some popular cartoon characters like “Handa Bhonda”, “Batul”, “Nonte Phonte”, detective Koushik Roy etc. has sought copyright protection of the cartoon characters created by him. Reportedly several platforms have misused the artist’s characters thereby infringing copyright vesting in these characters originally created by Debnath.[i]

Aggrieved by the continuous copy and misuse of his creations, the artist has now decided to secure copyright protection over three of his characters namely “Handa Bhonda”, “Batul”, and “Nonte Phonte”. The Times of India quotes the artist who states that "I always knew these were my creations, but now there will be a legal stamp on it."

Source: Internet

This is not the first instance when characters or comic characters have been misused by third parties for their own benefit. We often come across bags, lunch boxes, gift items, stationery, apparels, utensils, balloons and toys decorated with cartoon characters like Mickey Mouse, Donald Duck, Disney Princess, Chacha Choudhary and Chotta Bheem which are not flaunted by kids alone but even the elder ones love wearing t-shirts showcasing comic characters. However, while purchasing these items and merrily using them it never strikes us that the use of these comic characters without the creator’s permission is infringing the creator’s IP rights. This commercialization of characters, whether real or fictional is also termed as “character merchandising”.

What constitutes “character merchandising”?

In the case of Star India Pvt. Limited v. Leo Brunette (India) Private[ii], the Bombay High Court observed that character merchandising involved exploitation of fictional characters or fame of celebrities by licensing such famous fictional characters to others. The Court further remarked that for character merchandising it was necessary that to be merchandised the character must have gained some public recognition and achieved a form of independent life and public recognition for itself and only then can such character be moved into the area of character merchandising. 

Character Merchandising and Trademark Law

Comic characters can be protected as “trademark” under the Trademark Act, 1999 as the scope of a trademark under the Act is wide enough and entails that anything which is capable of being graphically represented and able of distinguishing goods and services of different person can be registered as a trademark.[iii] Hence, comic characters even in two- dimensional and three-dimensional forms can be covered under the Act.

Moreover, the names of comic characters can also be protected under the Act. Hence, to prevent misuse by third parties the original authors or creators have the option of protecting their creation under the Trademark Act as well.

Character Merchandising and Copyright Law

Relevant provisions for protection of comic characters under the Copyright Act, 1957 are reproduced herein below.

As per the Copyright Law, copyright vests in a person the moment a work is created. Thus,

prima facie copyright registration is not mandatory and an action against any infringement can be initiated even without registration. However, registration of work under the Act is deemed advisable as the Certificate of Registration serves as a proof in a Court of Law.

Here it would be relevant to discuss the case of Raja Pocket Books v. Radha Pocket Books[iv], wherein the Plaintiff sought temporary injunction against Defendant for manufacturing apparels bearing the Plaintiff’s character “Nagraj” under the name “Nagesh”. The Plaintiff contended that copyright in the comic series Nagraj vested in it and the Defendant’s act of introducing a comic series bearing a closely resembling character as well as title phonetically similar to “Nagraj” amounted to infringement.

The Court while making an order in favour of Plaintiff and referring the Apex Court’s decision in the case of R.G. Anand v. M/s Delux Films & Ors.[v] opined that:
  • There could be no copyright in an idea, subject matter, themes or plot of legendry facts;
  • Copyright will be confined to the form, manner and arrangement and expression of the idea by the author of the copyrighted work;
  • Where same idea is being developed in a different manner, it is manifest that the source being common, similarities are bound to occur;
  • Test of similarity- whether or not the similarities are on fundamental or substantial aspects of the mode of expression adopted in the copyrighted work. If the defendant's work is nothing but a literal imitation of the copyrighted work with some variations here and there it would amount to violation of the copyright;
In cases of copyright, the term of right assumes significant consideration as a copyright in a work is not for an indefinite period but does come with a stipulated duration i.e. within the lifetime of the author until 60 years from the beginning of the calendar year next following the year in which the author dies[vi], which implies that pursuant to death of the creator and after 60 years from the date of death the characters will be in the public domain open to use without the author’s permission or license.

Licensing of Fictional Characters

The licensing of fictional or comic characters has emerged as one of the most sought after strategy to commercially exploit a creation and a profitable way for licensees to market their products. Reportedly, the famous Marvel Comics has leveraged the commercial value of its superheroes through a series of profitable licensing agreements.[vii] The business of  character merchandising, has become very well known in our present times and everyone who has a character, whether real or fictional, to exploit, does so by the grant of licences to people who wish to use the name of the real or fictional character.[viii]

For example, in India Bonjour Retail has secured license of fictional/comic characters like Doraemon, Hot wheels, Hello Kitty, Barbie and Ben 10 and is manufacturing socks with the images of said characters. [ix] Raj Kumar Jain, the MD of Bonjour Retail with reference to
licensing states that licensing of fictional characters from the IP holders gives it an edge over others.


It cannot be denied that comic characters and IP rights are intrinsically woven together and to reap the best benefits of creation it’s advisable for the creators to register their ideas under the relevant IP laws. The markets today are flooded with items bearing characters, celebrity or comic, hence it is essential that IP rights are safely secured so that this burgeoning misuse of characters by wrongful perpetrators are avoided.
India: Leak of Movie “Udta Punjab” Creates Unrest in Bollywood

The movie “Udta Punjab” can be boldly categorized as one of the most controversial movies of our times. The movie which is based on the theme of drug abuse in the Indian State of Punjab had first fallen into the vicious trap of the Central Board of Film Certification (hereinafter referred to as the “CBFC”) which cleared its release with an astonishing 89 cuts and also fluttered away the word “Punjab” from its title. However, later on the movie was cleared by the Bombay High Court with only one cut. The second controversy that the movie landed up in, was its leak on the internet two days prior to its official scheduled release. The movie was reportedly downloadable on torrent websites.

Indian Daily, Times of India reports that pursuant to the aforesaid incident, the makers of the movie filed a criminal complaint of copyright theft with the Bandra- Kurla Complex cyber police station.[i] Reports also mention that pursuant to the said complaint, movie was removed from the websites and a message was displayed on the sites which read as “removed due to a copyright complaint”.

This is not the first time that the Bollywood has encountered the leak of a movie on the internet prior to its release. There have been several instances when Bollywood movies have suffered a similar fate.[ii]

In view of such prevalent instances of illegal broadcast of movies, several times production houses invoke the remedy of John Doe Orders (against unknown defendants) to restrain illegal downloads and prevent cable operators from broadcasting the movie without proper license or authorisation from the producer.

Additionally, the Copyright Amendment Act, 2012 also introduces provisions like protection of technological measure (Section 65A) and protection of right management information (Section 65B) which entail digital rights management measures for preventing piracy in cinematographic films.

India: Geographical Indication Registration Tag on Uttarakhand’s Tejpatta

On 31 May, 2016, Uttarakhand was granted the Geographical Indication Certificate for its famous sweet bay leaf, famously known as Tejpatta. The present GI Certificate was given by Geographical Indication Registry, Chennai. Tejpatta (more famously known as ‘Cinnamomum Tamala” in the west) is a famous spice which is used in many Hilly cuisines and is also transported to various parts of the country. This crop is also known for its medical properties.

Tejpatta is extensively grown in many parts of Uttarakhand, including Nainital, Chamoli, Tehri, Bageshwar, Almora, Pithoragarh, and Champawat. Over Thousand metric tons of Tejpatta is grown in the state of Uttarakahand.

With the help from United Nations Development Program (UNDP) - Global Environment facility, Herbal Research and Development Institute, a nodal agency of Uttarakhand Medicinal Plant Board, has applied for the Registration of GI. Some other Crops in Uttarakhand are also identified for GI Registration.

Uttarakhand has also obtained a GI Registration of Basmati Rice. Uttarakhand shares this GI Tag, on Basmati Rice, with the state of Utter Pradesh, Haryana, Jammu & Kashmir, Punjab, New Delhi and Himachal Pradesh. The details of Uttarakhand’s GI Tags are;

Sl. No.
Application No.
GI (Geographical Indication)
Goods Type
The entire states of Punjab, Haryana, Delhi, Himachal Pradesh, Uttarakhand, and parts of western Uttar Pradesh and Jammu & Kashmir.
Uttarakhand Tejpatta

As per experts, obtaining a GI Tag on Tejpatta, will be beneficial for over 10, 000 farmers involved in its production, as a price hike of 85- 140 INR is expected, in the near future. Government has also proposed a new scheme for increasing its production. Under this scheme, tejpatta will be cultivated in an additional area of 500 hectares in Uttarakhand. 

Thursday 16 June 2016

India: Unfair Trade Practice Case - Shri Kamble Kallappa Vs Bennett Coleman and company Limited

The Competition Commission of India (hereinafter referred to as ‘CCI’), decided a recent matter of unfair trade practice and abuse of dominant position in favor of Bennett Coleman and Company Limited. The complaint was made by Shri Kamble Sayabanna Kallappa, that in Mumbai, the newspaper vendors are selling ‘The Times of India’ only with ‘Mumbai Mirror’ and refusing to sell ‘The Times of India’ along with ‘The Economic Times’ or ‘Maharashtra Times’ in a combo offer, forcing people to pay separately for ‘The Economic Times’ or ‘Maharashtra Times’. The commission held that all the newspapers which are available in the combo offer including ‘The Times of India’, ‘Mumbai Mirror’, ‘The ‘Economic Times’ and ‘Maharashtra Times’, are also available separately at their respective selling price. Hence, the consumers have the choice to either purchase the newspapers in the combo offer or to purchase each newspaper separately.

Brief Background

In the present matter, the charge of anti-competitive practice is made against Bennett Coleman and Company Limited, which is India’s largest media conglomerate and also the publisher of ‘The Times of India’ – a leading English language newspaper in India having editions all over the country including Mumbai. Bennett Coleman also publishes ‘Mumbai Mirror’ – a daily tabloid in English, ‘The Economic Times’ - an economic and business daily, ‘Maharashtra Times’ - a daily newspaper in Marathi language, and ‘Navbharat Times’ - a daily newspaper in Hindi language along with a host of other periodicals.

The Informant stated that Bennett Coleman made available the Mumbai edition of ‘The Times of India’ in a combo offer with ‘Mumbai Mirror’ or ‘The Economic Times’ or ‘Maharashtra Times’ at a selling price of Rs. 7/-. The Informant alleged that in the combo offer, the newspaper vendors in Mumbai are selling ‘The Times of India’ only with ‘Mumbai Mirror’ and refusing to sell ‘The Times of India’ along with ‘The Economic Times’ or ‘Maharashtra Times’.

Contentions by Shri Kamble Sayabanna Kallappa (Informant)

The informant submitted that the complaint was made against the practice of newspaper vendors to the “The Times of India’, with the video recording (CD) containing the behavior of the vendors, but the same was not responded to, by anyone from ‘The Times of India’ The informant further addressed the issue to the Editor of the ‘The Times of India’ which was again not addressed.

It was submitted that through this conduct Bennett Coleman wants to increase the circulation of ‘Mumbai Mirror’ in the Mumbai market and supports newspaper vendors who refuse to sell the said newspaper as per the said offer and compel the buyers to buy unwanted newspaper. This is an unfair trade practice and abuse of dominant position in terms of Section 4(2)(a)(i) of the Act.

Observation of Competition Commission
  • All the newspapers are available in the combo offer including ‘The Times of India’, ‘Mumbai Mirror’, ‘The ‘Economic Times’ and ‘Maharashtra Times’, are also available separately at their respective selling prices in Mumbai. Hence, the consumers have the choice to either purchase the newspapers in the combo offer or to purchase each newspaper separately.
  • The video recording submitted by the Informant shows that some vendors are stating that the combo offer is available only for annual subscribers.
  • Bennett Coleman does not appear to have imposed any restriction or unfair condition on the consumers through the said offer as it is not compelling the consumers to buy the newspapers only in the combo offer.
  • If some vendors are not providing ‘The Economic Times’ or ‘Maharashtra Times’ along with ‘The Times of India’ in the combo offer, then it cannot be said that the Bennett Coleman is responsible for the said conduct of such vendors.


In the view of above, the Commission held that no case is made out against Bennett Coleman for contravention of any of the provisions of Section 4 of the Act and the information was ordered to be closed forthwith in terms of the provisions of Section 26 (2) of the Act.