India: Delhi High Court disposes of the suit against Ishu Narang regarding infringement

Source: WWW.delhihighcourt.nic.in

On April 11, 2018, The Delhi High Court, in the case of Sandisk LLC vs Ishu Narang passed an order in favor of Sandisk LLC (hereinafter referred to as Plaintiff) issuing permanent injunction restraining  Ishu  Narang (herein after referred to as Defendant no. 2), their partners, proprietors, servants, agents and all others in active concert or participation with them, from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in packaging and/or products  which infringe the Plaintiff’s copyright in the artistic work comprised in the color  scheme, product layout or any substantial part thereof.

The Court directed the Defendant to pay INR 4,45,000 (US$ 6659 approx.) for value of goods seized at its premises and hand over those goods for destruction to the Plaintiff.

Brief Background

• The Plaintiff, a Fortune 500 and S&P 500 company, was incorporated under the laws of State of Delaware. It is the world’s largest dedicated provider of flash memory storage solutions which designs, develops and manufactures data storage solutions under the mark SANDISK.
• The Plaintiff is using the trademark SanDisk since 1988 for consumer electronic goods throughout the world.
• The Plaintiff is a registered proprietor of the mark SANDISK and has both common law trademark rights along with trademark registrations in more than 150 countries. Its trademark is used extensively and continuously globally since 1995 and in India since 2005.
• In the last week of May 2015, the Plaintiff came to know that large quantities of counterfeit SanDisk memory cards were being sold in the market. Thereafter, the Plaintiffs filed a suit in this Court seeking permanent injunction restraining infringement of trade dress, copyright, passing off; rendition of account of profits, damages and delivery up.
• The Court arrayed the suit John Doe, since the Defendant was unknown.  The Court vide order dated May 29, 2015 appointed a Local Commissioner.
• The Local Commission so appointed, found Defendant No.2, selling counterfeit products infringing the Plaintiff’s trademark and had seized a total of 890 infringing goods on June 10, 2015 from the premises of the Defendants.

   Issues

• Whether the Plaintiff is entitled to relief of permanent injunction restraining infringement of trade dress, copyright, passing off; rendition of account of profits, damages and delivery up against the Defendant?

   Plaintiff’s Contentions

• It was submitted that the Local Commission appointed by this Court seized a total of 890 infringing goods on June 10, 2015 from the premises of Defendant no.2.

• The Plaintiff stated that the total value of goods seized from the Defendant’s premises was INR 4,45,000 (USD 6603 approx.). He prayed the same to be granted.

Observations by the Hon’ble Court 

• The Court took note of  Order XIII-A of the Code Of Civil Procedure, 1908, and observed that Defendant No. 2 has no real prospect of defending the claim as the Defendant had not filed its written statement; therefore, a summary judgement was passed.
• Thereafter, the Court held that the Defendant was liable to pay to the Plaintiff for the value of goods seized by the Local Commissioner and the legal costs incurred by the Plaintiff.

Order

The Court passed an order of permanent injunction against the Defendant along with INR 4,45,000 to be paid to the Plaintiff for the value of goods seized at the premises of the Defendant. Further, the Court ordered that the Defendant shall hand over the goods seized by the Local Commissioner to the Plaintiff for destruction on May 14, 2018.

India: Effects of Sending Cease and Desist Notices in Cases of IP Infringement

In cases of IP infringement, be it with respect to trademarks, copyrights, patents or designs, a number of legal options are available to the IP holder to enforce their IP rights.

While the option to sue the infringer is always available, a more practical option is to issue a cease and desist legal notice to the infringer, inter alia, establishing the IP holder’s rights in the IP being infringed and, on the basis thereof, calling upon the infringing party to cease and desist from all infringing activity and further is undertake never to repeat such infringing actions again, under notice of legal action in case of non-compliance.

In developing markets such as India, one of the most popular defences taken by IP infringers is ignorance of the law in respect of the matter and also lack of knowledge of the IP holder’s rights in the impugned IP.

A cease and desist letter, therefore, sent prior to initiating a lawsuit helps obviate this defence being taken by the infringer and, in case of continued non-compliance, further helps in establishing the mala fides of the infringing party in case of a lawsuit on the grounds of infringement.

Briefly, the effects of sending a cease and desist legal notice to an infringer, whether prior to or as an alternative measure to, an infringement lawsuit are as follows:

• Establishes the IP holder’s rights in his IP;
• Serves notice to the infringer regarding the prevalent law protecting the IP’s holder’s rights;
• Serves notice to the infringer regarding the IP holder’s requisitions/demands;
• Serves notice to the infringer that non-compliance with the IP holder’s requisitions/demands will constrain the IP holder to pursue other (stricter) courses of legal action, which may involve a lawsuit;
• Establishes the IP holder’s bona fide attempt to reach an amicable resolution to the matter by making the infringer aware of the law as well as the IP holder’s rights in his IP and giving the infringer an opportunity to cease all infringing (illegal) activities without unnecessarily escalating the matter;
• Serves to protect the IP holder’s rights in future against the same infringer;
• Sets a precedent of the IP holder enforcing his rights.

Some of the primary advantages of issuing a cease and desist legal notice to an IP infringer are:

• If it results in compliance on the part of the infringer, then issuing a cease and desist legal notice proves a very cost-effective and simple way to combat IP infringement;
• Pro-active, yet amicable method of resolution;
• Helps ascertain the infringer’s stand in the matter prior to pursuing any further (stricter) course of legal action, based on whether or not the infringer chooses to comply with the requisitions made in the notice;
• Less time and cost-intensive, as compared to contesting a lawsuit on the grounds of IP infringement.
• Establishes the IP holder’s bona fide attempt to protect and enforce his IP rights;
• In case of non-compliance by the infringer, serves to establish the infringer’s mala fide intentions in subsequent legal proceedings.

However, it is important to keep in mind that issuing a cease and desist legal notice does not guarantee a resolution or a cessation of the opposite party’s infringing activities. Certain disadvantages of choosing to issue cease and desist letters instead of filing an infringement lawsuit are as follows:

• The infringer may simply choose to ignore the notice and continue infringing activities, in which case the IP holder will be forced to consider further (stricter) courses of legal action in order to successfully protect and enforce his IP rights;
• It may serve to give the infringer advance notice of the IP holder’s intentions of enforcing his IP rights and thereby may help the infringer take precautions or prepare for subsequent enforcement actions;
• It may incite the infringer to file a suit against the IP holder on the basis of groundless threats of legal action, in which case the IP holder, to preserve his IP rights, shall be forced to consider instituting an infringement lawsuit;
• It is important for the IP right holder to react with due diligence by filing a lawsuit for enforcement of his rights. As in many cases the IP right holder pays no heed to the groundless threat because of which the suits are decided ex parte in the favour of the infringer.
• In case the IP holder fails to successfully enforce his IP rights against the infringer, could result in setting a negative precedent vis-à-vis future infringer.

In conclusion, based on an analysis of the nature and extent of any case of IP infringement, issuing a cease and desist legal notice can be a simple, cost-effective and expeditious option to combat infringement, and in any case, certainly serves as a useful pre-cursor to potential IP litigation.

India: Tis Hazari Court awards damages worth INR 2 Lakhs for infringement of the mark ‘Orient’

Source: www.delhidistrictcourts.nic.in

The Tis Hazari, Court in Delhi in the case of M/S. Orient Bell Limited Vs M/S. Royal Marketing & M/S. Orient Cera Tiles, granted a permanent injunction in favor of M/S Orient Bell Limited (hereinafter referred to as the ‘Plaintiff’) restraining M/S. Royal Marketing and M/S. Orient Cera Tiles (hereinafter collectively referred to as the ‘Defendants’ and individually as ‘Defendant no. 1’ and Defendant no. 2 respectively) from passing off goods bearing their trademark and copyright ‘Orient’, infringement of the same in any manner and a mandatory injunction for the destruction/erasure of labels, blocks, dies etc.

Brief Facts

Ø  The Plaintiff was initially incorporated on May 18, 1997, as Orient Ceramics and Industries Ltd., which was later merged on February 7, 2012, with Bells Ceramics Ltd. after obtaining orders from Hon'ble Court at Gujarat. It is the registered proprietor of the mark ‘ORIENT’ for its business of manufacturing tiles.

Ø  In January 2002, the Plaintiff came to know about the infringement of his trademark Orient by Defendant No. 1. It is alleged that Defendant no. 2 is supplying tiles to Defendant no. 1 and to other shops at Delhi.

Ø  It is further alleged that Defendant no. 2 has created impression in the market that his goods are connected with the Plaintiff and thereby passing off the goods by infringing the registered trademark of the Plaintiff. Additionally, the trade name adopted by Defendant no.2 is alleged to be identically and deceptively similar to the corporate name of the Plaintiff.

Ø  Thus, the Plaintiff filed this suit for permanent injunction restraining infringement of trademark, passing off, infringement of copyright, damages, delivery up etc. against the Defendants.

Issues

Ø  Whether the Plaintiff is entitled to relief of permanent injunction against both the Defendants and its agents for passing off and infringement of the trademark ORIENT by way of manufacturing, exporting, selling, exhibiting etc. in the said name?

Ø  Whether the Plaintiff is entitled to mandatory injunction against the Defendants and their agents as to delivery of labels, blocks, dies, strips, cartons, stationery, literature or any other printing material bearing impugned trademark and copyright and for their destruction/erasure?

Ø  Whether Plaintiff is entitled to damages for a sum of INR 10 lakhs (USD 15600 approx.) against both the Defendants for such infringement of trademark and copyright?

Plaintiff’s Contention

Ø  The Plaintiff claimed to be using the mark uninterruptedly and continuously since the year 1982 in respect of tiles which is painted on reverse side of each tile.

Ø  The Plaintiff submitted that it has acquired substantial goodwill and reputation and has spent large amounts on publicity and advertisement of his trademark. The advertising expenses runs into multiples of lakhs since the year 1995-96.

Ø  It claimed to be holding registration of copyright as Orient Tiles vide no. A-68840/2005.

Ø  The Plaintiff further submitted that the tiles are purchased by both illiterates and literates that causes confusion. In addition, the act of the Defendants has harmed the reputation and goodwill of the Plaintiff. It stated that the loss cannot be calculated in money.

Ø  It was contended that the triple test of identical goods, identical trademark/trade name and identical trade channel are satisfied in the present case and dishonest motive and mischief of the Defendants are revealed.

Defendant’s Contention

Ø  The Defendants failed to appear and to disprove the case of the plaintiff in evidence.

Ø  However certain averments were made by them in the written statement. These averments were:

o   Defendant no. 2 through the written statement submitted that the trade of the Defendant is in existence since the year 1995 and the Plaintiff is non-suited on ground of acquiescence.

o   The trade name ‘Orient’ is a generic name and the Plaintiff cannot have monopoly over it. The Plaintiff himself has commenced his business only from the year 1997 and at that time the Defendant’s business was in existence in fans and cement.

o   The Defendants contented that there are more than 100 companies doing business under the name of Orient. It stated that there is no likelihood of deception as there is a huge price difference in the products of Plaintiff and the Defendants.

o   The Defendants further stated that the word Orient is written differently. They write Orient Cera Tiles in bold letters and the Plaintiff writes Orient Walls. In addition, the cartons and boxes both of them are different.  

o   The expense on advertisement and volume of sale does not entitle the Plaintiff with monopoly over the word Orient when the Defendant itself is in existence since the year 1996. It is submitted that the first user is not the only criteria for determining the right and entitlement in the intellectual property rights. There is difference both in quality and price of which the buyers can clearly make distinction. Accordingly, Defendant no. 2 has denied the claim of the Plaintiff and prayed for dismissal of the suit.

Court’s Decision

Ø  While dealing with issue no. 1 the Court held that ‘the proprietor of an unregistered trademark whose mark is unauthorisedly used by another cannot, however, sue for the infringement of such trade mark. His only remedy lies in bringing a passing-off action, an inconvenient remedy as compared to an infringement action.’

Ø  The Court also differentiated between passing off action and infringement. It opined that ‘in a passing-off action the Plaintiff will have to prove that his mark has by user acquired such reputation as to become distinctive of the Plaintiff's goods so that if it is used in relation to any goods of the kind dealt with by the Plaintiff, it will be understood by the trade and public as meaning that the goods are the Plaintiff's goods. In an infringement action, the Plaintiff is not required to prove the reputation of his mark. Further, under Section 37 a registered mark is assignable and transmissible either with or without goodwill of the business concerned while under Section 38 an unregistered trade mark is not assignable or transmissible except in the three cases set out in Section 38(2).’

Ø  The Court agreed that ‘the Plaintiff is using the said mark ORIENT which is also signified by the name of the Plaintiff company which is M/s. Orient Ceramics and Industries Ltd. Plaintiff company is using the name since the year 1977 when it was incorporated and in the year 1982 it had adopted the trademark name ORIENT.’ It further stated that ‘the Plaintiff must show the actual infringement on the date of filing of the suit. The Plaintiff company filed the suit on February 22, 2002, by which time the said mark ORIENT was in use. As per claim of the Plaintiff, the mark ORIENT for plastic flushing cistern has date of registration on June 26, 2001. The other trademarks of the Plaintiff are dated after the year 2002, i.e. after the date of filing of the suit. As per the case of the Plaintiff, the Defendant no. 2 is manufacturing Cera Tiles in the name of ORIENT on or before the filing of the suit. Thereby the case of the Plaintiff falls under category of passing off mark ORIENT with the plaintiff and not the infringement of trademark in favour of plaintiff bearing date of registration as 01.08.2005.’

Ø  Regarding damages, the Court pointed out that the Plaintiff could have shown its figure of net profit made from the year 1995 till the date of filing of the present suit. Since the Plaintiff failed to do that, the total damages are awarded in favor of the Plaintiff and against both the Defendants for a sum of INR 2 lakhs (USD 3120 approx.) out of which INR 1 Lakh (USD 1560 approx.) are in the nature of compensatory damage and INR 1 Lakh (USD 1560 approx.) are in the nature of punitive damage.

Thus, the suit was decreed in favor of the Plaintiff with relief of permanent injunction against both the Defendants and its agents who are restrained in passing off goods in the trademark and copyright ORIENT and its infringement of trademark and copyright by way of manufacturing, exporting, selling, exhibiting etc. in the said name.

India: Delhi High Court awards damages worth 10 Lakhs for Patent Infringement

Source: WWW.delhihighcourt.nic.in

The Hon’ble Delhi High Court in a recent judgement in the case of, Vior (International) Ltd. & Anr. v. Maxycon Health Care Private Ltd., held that the acts of the Defendants for unauthorized manufacturing and selling of patented product amounts to infringement of Plaintiffs rights granted under Section 48 of the Patents Act, 1970. Further, the act of the Defendants of blatantly copying the content of Plaintiffs website is in violation of the copyright vested with the Plaintiffs and amount to infringement as per Section 51 read with Section 14 of the Copyright Act, 1957.

The Case

Facts

Vior (International) Ltd. (hereinafter referred to as ‘the Plaintiff No. 1’), a Switzerland based company, are exclusive owners of registered Indian Patent no. 221536, a product by process patent on Ferric Carboxymaltose, a novel water-soluble iron carbohydrate complex prepared by a novel process. The patented product is useful in the intravenous treatment of iron deficiency when oral iron preparations are ineffective or cannot be used. The Plaintiff 1 has granted a licensee to Plaintiff 2, a company incorporated under the Companies Act, 1956, for the manufacture and commercialization of above patented product, in India. Further, Plaintiff 2 is the owner of the copyright with respect to literary work on website the www.emcure.co.in.

The Plaintiffs filed a suit for restraining the Defendants from infringement of Indian Patent No.221536; infringement of copyright in the literary work; dilution & tarnishment of brand image of the Plaintiffs; malicious falsehood; delivery up; rendition of accounts; damages etc. against the Defendants.

Further, the Plaintiffs pleaded that the Defendants are manufacturing and selling the impugned patented product and falsely represented on their website that the Plaintiff no.1 has given an IP license to the Defendant no. 1 to manufacture and commercialize the impugned patented product. 

Still, further, the Plaintiffs pleaded that Defendant no. 1 has blatantly copied the literary write-up/content of the Plaintiff No.2s website www.emcure.co.in, thereby amounting to infringement of the copyright of Plaintiff No.2. Such activities of the Defendant no.1 also amounts to dilution of the brand image of the Plaintiffs thereby resulting in unlawful enrichment.

Furthermore, the Plaintiffs pleaded that the Defendant No.1, despite the operation of an ad-interim injunction against it, continued its infringing activities through the Defendant No.3 and under the able guidance of the Defendant No.2.

As none appeared on behalf of the Defendants despite service of notices hence the proceedings are treated ex-parte.

Issue:

• Whether the acts of the Defendants for unauthorized manufacture and sale of patented product amounts to infringement of Plaintiffs’ patent rights?
• Whether the act of the Defendant no. 1 for misrepresenting on the website as being an IP license holder of impugned patent amounts to infringement of Plaintiffs’ patent rights?
• Whether the act of the Defendant no. 1 for blatantly copying the content of the Plaintiff no. 2 website, amounts to infringement of Plaintiff no. 2’s copyright?

Plaintiff’s Contentions

The Plaintiffs relying upon the evidence of sole witness, Shri Pankaj Pahuja (PW₁) and the documents Ex. PW_1/1 to Ex.PW₁/_23, Ex PW₁/B, Ex.PW₁/A₁ to Ex.PW₁/A₅ as well as Mark E to Mark H, argued that the act of the Defendants are nothing short of oppressive, arbitrary and unconstitutional.

The Plaintiffs’ relying upon the decision by the Division Bench of Delhi High Court in paragraph number 69 and 70 of Hindustan Unilever Limited v. Reckitt Benckiser India Limited, 2014 (57) PTC 495 [Del] [DB] claimed for damages to the tune of INR 1,00,01,000 (USD 142861 approx.). The Plaintiffs have claimed the rendition of accounts of profit illegally earned by Defendants or in the alternate damages to the extent of INR 1,00,01,000 (USD 142861 approx.).

Further, for claiming the punitive damages, the Plaintiffs relied upon the case of Jockey International Inc & Anr. vs. R. Chandra Mohan & Ors. CS(OS) 253/2012, wherein it was held that one who chooses to stay away from the proceedings of the Court, should not be permitted to enjoy the benefits of evasion of Court proceedings. The damages in such case must be awarded. 

Analysis by the Court on unauthorized manufacture and sale of patented product under misrepresentation as IP license holder

The Court while determining whether a patent has been infringed, took into consideration Section 48 of the Patents Act, 1970, and held that the act of the Defendants to deal with the impugned API clearly relates to the product Ferric Carboxymaltose as has been claimed by the Plaintiff No.1 in its independent claim 1. Further, such a product cannot be clinically effaceable without using the

process as claimed. The Court agreed with the Plaintiffs that the acts of the Defendants amount to infringement of the Plaintiffs’ rights.

Analysis by the Court on blatant copying of literary work

The Court while examining the issue of copying of literary work, took into consideration Section 51 read with Section 14 of the Copyright Act, 1957, and held that the act of the Defendant No. 1 of blatantly copying the content of the Plaintiff No.2’s website is in violation of the copyright vested with the Plaintiff No.2 and amounts to infringement of copyright by the Defendant No.1. The Court relied on the case of R.G Anand vs M/S. Delux Films & Ors. and held that the literary work of Defendant No.1 in its website is substantially similar to the content of the Plaintiff No.2, thus, such an adoption is mala fide and is with a clear intention on the part of the Defendant to save himself of the labour. Moreover, the acts of the Defendant No.1 in publication of a statement indicating a false association with the Plaintiff No.1 amounts to a tort of malicious falsehood.

The Court also relied on the decision of Rookes v. Barnard (1964) and awarded damages that is not merely to compensate the Plaintiffs for the loss that has been sustained by reasons of the Defendants’ wrongful act, but also to punish the Defendants in an exemplary manner and vindicate the distinction between a willful and innocent wrongdoer.

Decision of the Court

The Court held that the act of the Defendants amounts to infringement of patent and copyright of the Plaintiffs. In view thereof, damages for a sum of INR 10,00,000 (USD 14284 approx.) in favour of the Plaintiffs and against the Defendants, is passed on account of infringing the registered marks, trade dress and violating interim order.

PCT rules amendment on fee reduction

Source: www.wipo.int

According to an amendment to the regulations under the Patent Cooperation Treaty (PCT) adopted by the Assembly of the International Patent Cooperation Union (PCT Union) on September 30, 2014, at its Forty-Sixth (27^th Extraordinary) Session, with effect from July 1, 2015, a revised schedule of fee structure is provided. As per amendment to the PCT Schedule of Fees, the 90% fee reductions in item 5 of the Schedule of Fees is applicable, if the international application is filed by:

• an applicant who is a natural person and who is a national of and resides in a State that is listed as being a State whose per capita gross domestic product is below US$ 25,000 (according to the most recent 10-year average per capita gross domestic product figures at constant 2005 US$ values published by the United Nations), and whose nationals and residents who are natural persons have filed less than 10 international applications per year (per million population) or less than 50 international applications per year (in absolute numbers) according to the most recent five-year average yearly filing figures published by the International Bureau; or
• an applicant, whether a natural person or not, who is a national of and resides in a State that is listed as being classified by the United Nations as a least developed country;

Provided that, if there are several applicants, each must satisfy the criteria set out in either sub-item (a) or (b).

Further, as per understanding adopted by the PCT Assembly, which became effective from October 11, 2017; the above stated 90% fee reduction would be applicable only to those applicant(s) who are the sole and true owners of the application and are under no obligation to assign, grant, convey or license the rights in the invention to another party which is not eligible for the fee reduction.

 

Hence, only if the PCT international application is filed by the sole and true owners of the invention satisfying the criteria set out in either sub-item (a) or (b) of item 5 of the Schedule of Fees, the 90% fee reduction is allowed. In case, the request for such fee reduction is filed by the assignee or other party on behalf of the sole and true owners of the PCT international application, such fee reduction shall not be allowed if such party is otherwise not eligible for the fee reduction.  

India: Delhi High Court on the link between cause of Action and Jurisdiction

Source: WWW.delhihighcourt.nic.in

In the case of Microsoft Corporation & Anr vs Rajesh Kumar & Ors the Hon’ble Delhi High Court dismissed the application filed by Rajesh Kumar and others (hereinafter referred as the Defendant) under Order 7 Rule 10 of CPC holding that the Hon’ble Delhi High Court had jurisdiction to decide the case filed by Microsoft Corporation and another (hereinafter referred as the Plaintiff).

BRIEF FACTS

• The Plaintiff is a subsidiary of American software company Microsoft Corporation, headquartered in Hyderabad, India. It has offices in the 9 cities of Ahmedabad, Bangalore, Chennai, Hyderabad, Kochi, Kolkata, Mumbai, the NCR (New Delhi and Gurgaon) and Pune.
• Defendant is a global software services company headquartered at New Jersey, USA and having other offices in DC Metro area and a state of the art outsourced software development based out of New Delhi, India.  
• It was alleged that the Defendant used unlicensed versions of the Plaintiff’s software for servicing its clients, on the Defendant’s employees’ laptops, during presentations, etc. Cause of action arose in Gurugram, Haryana and Hyderabad, Telangana where Plaintiff have their offices and carrying on their business.
• An application under Order 7 Rule 10 of CPC was filed by the Defendant alleging that in the entire plaint there is no allegation from the Plaintiff for copyright violation in Delhi, but only in Gurugram, Haryana and Hyderabad.
• Therefore, it was alleged this Court has no territorial jurisdiction to entertain this suit and the plaint be returned.

PLAINTIFF’S CONTENTIONS

• It was contended that since the Defendant was using the unlicensed software to service the clients in Delhi, the Court had jurisdiction.
• It was also stated that since the Plaintiff carries on business from Delhi, the Court had territorial jurisdiction. Thus, the Defendant’s own documents or its websites gave hints of its operative office in New Delhi.

Referring to page 24 of the Defendants’ website that the Defendant admitted that they are using the Plaintiff’s technology. It was further pointed out that page 46 of the website states that ‘the Courts in New Delhi, India shall have the exclusive jurisdiction on any dispute that may arise out of the use of this site.’

DEFENDANT’S CONTENTIONS

• It was alleged that this Court had no territorial jurisdiction as the Plaintiff had business and its subordinate offices at Gurugram and at Hyderabad and at which places the cause of action had also arisen.
• The allegations made in para 28 of the plaint that ‘Defendant would be servicing their clients, using the unlicensed software programs of the Plaintiffs, on the Defendants' employee’s laptops, during presentations etc., in Delhi’, were denied calling it a speculation.
• It was alleged that in the entire plaint there is no averment of Plaintiff's copyright violation within the territorial jurisdiction of this Court and rather per averments made in the plaint, the cause of action has arisen only at Gurugram, Haryana and in Hyderabad, Telangana at which places the Plaintiffs have their offices and are also carrying its business.
• The locus standi of the Plaintiff no. 2 was also challenged alleging that they were neither the owner of the copyright of this software nor an assignee.

COURT’S DECISION

• The Court referring to the rule laid down in Pfizer case and The LT Foods Ltd. case held that the Defendant had to specifically deny each, and every assertion made by the Plaintiff other than the jurisdiction, if they do not then it can be seen as an admission.
• The Court also considered that on their website the Defendant had admitted that one of its offices is in New Delhi, they have also mentioned that being a global company and as per that company’s governing laws, the Courts in New Delhi were given an exclusive jurisdiction. Also, as no denial of the allegations made by the Plaintiff was done, it cannot be said that the Court had no jurisdiction.

In view of the above, the Hon’ble Court held that the application under Order 7 Rule 10 for return of the Plaint filed by defendant, was devoid of any merits and dismissed the same. 

India: Impact of proposed EU IPR enforcement mechanism on the growth of Indian generic drugs

India is one of the largest suppliers of low cost generic medicines in the world. The use of generic medicines, in comparison with their branded counterparts, has the potential to substantially reduce out-of-pocket expenditure on drugs for chronic diseases like cancer. Friction between generic drug manufacturers and innovation companies typically arise when generic drug manufacturing companies initiate research using a patented product, to submit information to regulatory bodies like Drug Controller General of India, to seek approval for introducing a generic version of a patented product. Bayer vs Cipla case for development of generic drug “sorafenib” for patent product ‘Nexavar’ is a landmark case in this regard. Though the generic drug manufacturer is allowed to introduce the generic version subsequent to patent expiration, the research on patented drug is carried out when the patent is still in force. Several countries, including India, have provisions governing such research activities.

The Indian Patent Act, hereinafter referred as “Act” includes provisions that facilitate research and development using patented product/process without being liable for infringement. Such an exemption from patent infringement is known as Bolar Exemption. Section 107A (a) of the Act provides bolar provision as mentioned below:

107A. Certain acts not to be considered as infringement. – For the purpose of this Act,

(a) any act of making, constructing, using or selling or importing a patented invention solely for uses reasonably relating to the development and submission of information required under any law for the time being in force, in India, or in a country other than India, that regulates the manufacture, construction, use or sale of any product;…

shall not be considered as an infringement of patent rights.

The above provision is not limited to pharmaceutical products, but also extends to any product/process that may require regulatory approvals.

Médecins Sans Frontières (MSF) is a non-profit, self-governed organization providing emergency aid to people affected by armed conflict, epidemics and natural disasters, it includes distribution of affordable medicines like generic drugs to them. A recent move by the European Union (EU) to introduce an enforcement mechanism for IP rights has been criticized by the MSF in its recent 2018 letter to EU. Under the said enforcement mechanism, the court is empowered to grant ‘provisional injunction’ for infringement of patent. Further, the proposed provision also grants extraordinary right to the patent holder to draw everyone in the manufacturing and supply chain into litigation, if found suspected of patent violation, even without any actual proof of it. Furthermore, the scope of above said regulatory provision is so wide that it may even drag to the court the third-party procurers of generic drugs, such as MSF, that supplies affordable generic medicines to low income countries around the world. Hence, the said provision is vague and unethical.

India: ‘Magic Rice’ Belongs to Assam

The ‘magic’ Boka Saul, a century old breakfast staple in Assam, recently got a Geographical Indication Tag. In 2016, a Nalbari based NGO Baishya’s Lotus Progressive Centre and Simanta Kalita of Centre for 

Environment Education (CEE), Guwahati, applied for a GI tag for the rice. Hemanta Baishya, founder-member of Lotus Progressive Centre (LPC), was quoted telling a newspaper daily, that ‘Our years of hard work have finally paid off. The main aim with which we applied for the GI tag was to ensure the well-being of farmers that are dependent on this particular variety of rice. Farmers, who up till now were just growing it for themselves, will now be able to grow it for a wider audience. The Boka rice, we hope, will become a commercially-viable crop,’[1]

Boka Sauk or the ‘Magic Mud Rice’ as it is popularly known, is a paddy variety grown in parts of lower Assam i.e., Nalbari, Barpeta, Goalpara, Kamrup, Darrang, Dhubri, Chirang, Bongaiagoan, Kokrajhar and Baksa. It is sown in the month of June and harvested in December also known as ‘Xaali’ season locally. The consumption tradition of the rice dates back to 17th Century, when Boak Saul was consumed by the Ahom soldiers while they were fighting against the vast Mughal army.

Its specialty lies it the fact that it is a unique ‘zero fuel’ rice variety. Hemanta Baishya, founder-Member of Lotus Progressive Centre, in an interview said ‘Boka saul requires zero fuel. The rice does not need to be cooked’.[2] All that is needed to be done is soaking the rice in cold water for about an hour to swell and its ready to eat. According to a study by the Guwahati University’s Biotechnology Department, Boka Saul has 10.73 per cent fibre content and 6.8 per cent protein. The rice is highly nutritious, and it also cools down the body. Simanta Kalita of Centre for Environment Education (CEE), Guwahati told The Indian Express, ‘During floods, this is a great emergency food for obvious reasons. Going ahead, we hope the government will consider it for its relief programme.’[3]

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[1] http://www.guwahatiplus.com/article-detail/a-lot-can-happen-over-assam-s-magic-rice-boka-chaul

[2] https://indianexpress.com/article/north-east-india/assam/the-rice-that-needs-no-cooking-magic-rice-variety-from-assam-gets-gi-tag-5299318/

[3] https://indianexpress.com/article/north-east-india/assam/the-rice-that-needs-no-cooking-magic-rice-variety-from-assam-gets-gi-tag-5299318/

Afghanistan: Important Declaration on Recording of Licenses in the International Register Under Madrid System for International Registration of Marks

Source: www.wipo.int

In accordance with Rule 20bis(6)(b) of the Common Regulations as provided under the Madrid System for International Registration of Marks, the Government of Afghanistan has recently declared that the recording of licenses in the International Register shall have no effect in Afghanistan.

Consequently, a license relating to a mark in an international registration designating Afghanistan shall, in order to have effect in that Contracting Party, be recorded in the National Register of Afghanistan. The formalities required for such recording must be completed directly with the Office of Afghanistan and according to the conditions laid down by the legislation of that Contracting Party.

The declaration made by the Government of Afghanistan under the above-mentioned Rule came into force on June 26, 2018, which is also the date of coming into force of the Madrid Protocol with respect to Afghanistan.

India: Delhi High Court restricts the infringement of the mark ‘John Deere’

Source: www.delhihighcourt.nic.in

The Hon’ble Delhi High Court, on May 23, 2018, passed an order in the case of Deere & Company & Anr vs. Malkit Singh & Ors, in favor of Deere & Co. (hereinafter referred to as the “Plaintiff”) issuing an interim injunction against Mr. Malkit Singh & Ors (hereinafter referred to as the “Defendant”) holding that the Defendant has infringed the trademark and trade dress of the Plaintiffs products in bad faith. The case is listed before the Court on July 30, 2018, for disposal as well as for framing of issues and for case management hearing.

Brief Facts

• The Plaintiffs, a company existing under the laws of the State of Delaware, USA are leading manufacturers and exporters of agricultural vehicles including tractors, harvesters, etc. as well as their spare parts under the trademark JOHN DEERE. The products of the Plaintiffs are easily identifiable by their distinct share of green paint, augmented by yellow strip.
• The Plaintiffs have secured registrations for a number of its JOHN DEERE trademarks, including the (green yellow) trademark, under various classes, including Classes 7, 12 and 28 under the Trademarks Act, 1999.
• In the last week of October 2017, the Plaintiffs came to know that the Defendants were manufacturing, selling, exporting and advertising infringing products under the mark MALKIT by using an identical color combination as that of the Plaintiffs. Thereafter, a Cease and Desist notice was sent to the Defendants. In response, the Defendants emphasized that they had rights over its Green and Yellow mark.
• On further investigation, it was found that the Defendants were engaged in the manufacture, supply, export and sale of infringing tractors and agricultural equipment like Combine Harvesters, Rice Transplanter, Thresher, Straw Reaper, Mini Harvester etc. with an average production of 350 harvesters a year in Uttaranchal, MP, Andhra Pradesh, UP and Delhi.
• The present suit has been filed for permanent injunction restraining infringement and dilution of a trademark by the Defendant, passing off of trade dress, unfair competition, rendition of accounts, delivery up, damages, etc. 

Issues

1.      Whether the Defendants have adopted a mark similarly deceptive to that of the Plaintiff in bad faith?

Plaintiffs Mark

It is stated in the plaint that the Plaintiffs’ ‘leaping deer’ logo comprises an image of a yellow deer in conjunction with the trademark ‘John Deere’. It is further stated that a particular combination of the Green and Yellow colors for its agricultural implements i.e. green color for the body and yellow color for the seat and the wheels/rims.

Plaintiff’s Contentions

1. The Plaintiff contended that the Green and Yellow color combination had become so synonymous with the Plaintiffs that the particular shades of Green and Yellow are commonly referred to as John Deere Green and John Deere Yellow and the logo and the Green and Yellow color combination used by the Plaintiffs have collectively been termed as the JOHN DEERE marks
2. The Plaintiff submitted that the Defendant is engaged in the manufacture and supply of goods that are similar to the goods of the Plaintiff i.e., tractors and agricultural equipment. Further, the Defendants also advertise their products through various online portals like, www.malkitcombines.com, www.combineharvestor.co.in, www.justdial.com. The Defendants’ activities clearly evidence their intention to ride upon the reputation and established goodwill of the Plaintiffs’ products under the JOHN DEERE marks.
3. The Plaintiff contended that the Defendants had adopted and used identical trade dress, wherein the color scheme, getup, layout, manner of placement of various parts of the equipment is identical to the trade dress of the Plaintiffs’ JOHN DEERE products and its Green and Yellow color combination and the same is bound to create a false impression in the minds of unwary consumers and members of the trade that, the Defendants are somehow associated with the Plaintiffs’ business and that the Defendants have been specifically authorized to provide their goods and products under the John Deere trademarks by the Plaintiffs themselves.
4. The Plaintiff further relied on Deere & Co. & Anr. v. S. Harcharan Singh & Ors., wherein a Coordinate Bench of this Court gave an order dated March 5, 2015, recognizing the immense goodwill and reputation vested in the Plaintiffs’ said marks and has held such marks to be well-known trademarks as defined under Section 2(1)(zg) of the Trade Marks Act, 1999.

Defendant’s Contention

1. The Defendant stated that the the impugned color scheme for combine HARVESTOR was in use by the Defendant, was in the knowledge of the Plaintiff at least since 2008. In addition to the above, the predecessor of the Defendant has been using the impugned color scheme since 1988.
2. He further states that the Ministry of Agriculture took products of both the parties for testing purposes in 2015, and therefore, the Plaintiffs are deemed to have been aware of the Defendants’ use of the impugned color combination since 2015.

Rejoinder

In the rejoinder, the Learned Counsel for the Plaintiffs stated that the defenses sought were an afterthought and contrary to the Defendant’s own reply to the cease and desist notice. He pointed out that in reply to the cease and desist notice the Defendants had taken the stand that the color combination being used by them was totally different from the Plaintiffs’ color combination and asserted that they (the Defendants) had monopolistic copyright in the color combination.

Court’s View

• The Court opined that the Plaintiffs’ were entitled to sole and exclusive use of this trade mark comprising such color combination (trademarks include combination of colors by virtue of the definition under Trademarks Act, 1999) as well as the right to claim an injunction in respect of infringement of rights due to the fact that they had secured registration for the trademark comprising a color combination of green and yellow.
• The Court was of the view that the Plaintiffs’ Green and Yellow color combination has been used for 100 years over the agricultural products and even the tractors (green color for the body and yellow color for the seat and the wheels/rims), therefore, the mark/combination is reputable, distinctive and stands as an instant source-identifier for the Plaintiffs’ agricultural products.
• The Defendants’ adoption of an identical color combination, its use in the same manner as that of the Plaintiffs and its denial of the Plaintiffs’ rights in the said color combination in its reply to the legal notice amounts to unfair advantage and constitutes behavior which is contrary to honest and industrial practices. Therefore, the Defendants action amounts to infringement of the Plaintiffs’ trademark.
• Consequently, the Court till further order, ordered an interim injunction restraining the Defendants and related parties to deal with the agricultural equipment with Plaintiffs mark. 

The matter is listed before the Court on July 30, 2018, for disposal of I.A.3692/2018 as well as for framing of issues and for case management hearing.