India: The Division Bench of the Delhi High Court reverses the interim injunction granted to ITC

On September 02, 2016 ITC  Limited (hereinafter referred to as the ITC) filed a suit to the single Judge of the Delhi High Court against Britannia Industries Limited (hereinafter referred to as the Britannia) to permanently injunct the latter from violating the packaging/trade dress rights of the ITC Limited products. The Single Judge granted interim injunction against Britannia for “deceptively similar” packaging. Aggrieved by the Order of the Single Judge the ITC appealed to the Division Bench of the Delhi High Court for setting aside the order of the Single Judge.

Brief facts and background of the case

ITC Limited had launched a new product called “Sunfeast Farmlite Digestive – All Good” biscuit in February 2016. The packaging consisted of a combination of the colors yellow and blue.. Thereafter Britannia launched a similar product under the name “Nutri Choice Digestive Zero” biscuit a few months later in July 2016. The packaging of the aforesaid product was also done in yellow and blue . The parties to this suit have previously been entangled in legal wrangles too. Britannia had filed a complaint against the ITC Limited before the Advertising Standards Council of India (ASCI).

In the present case, Britannia had offered to replace the blue color in their packaging by another shade of blue, and the same was deemed unacceptable by ITC Limited. Britannia stated that the color blue is an integral part of their packaging, as it supposedly reflects the theme of “World Diabetes Day”. As there was no consensus between the parties regarding the issues at hand, the suit went to trial on September 2, 2016.

ITC’s Submissions before the Single Judge Bench

The ITC Limited asserted three unique and distinctive features of their packaging. Details of the same are as under:

• The brand name “Sunfeast” is written on the top-left hand side of the label on the yellow colored portion with the trade mark “Farmlite” underneath it, alongwith the mark “Digestive - All Good” situated below “Farmlite”.
• The color scheme used in the trade dress is Yellow and Blue. The left part of the packaging is in a yellow background and the right side of the packaging is in blue and both colors are separated by a curved line.
• The picture of the biscuits appear on the right front side of the label which is depicted with a wheat spike/sheaf of wheat with grains lying at the bottom of an individual wheat biscuit with the words "No Added Sugar/Maida" written on the biscuit in a bold white font. The words Sugar and Maida are separated by a white horizontal dividing line between the two words.

The ITC averred that Britannia has copied various elements of their trade dress, including the color combination. They also submitted that the trade channels were identical and in furtherance to that also submitted sales and revenue as well as advertising figures to substantiate their claims.

Britannia’s Submissions before the Single Judge Bench

Britannia claimed that they held 66% of the market share, whereas ITC had a meagre 1.8%. They also averred that the predominant color of the packaging of their product is yellow, and that blue is merely a secondary color used to indicate a connection to diabetes.

Britannia stated that while there might be a similarity in the packaging of the two, when viewed as a whole there was no case made out for passing off. To that end, the Britannia distinguished their packaging as follows:

• The word “Britannia” itself appeared prominently against a red background in one corner of the impugned packaging.
• The word “Nutri Choice” is featured prominently in their packaging, and the same is not present in the ITC’s packaging.
• That the shades of blue and yellow used in the impugned packaging are different from that of ITC’s.
• The Britannia averred that a distinction has to be drawn between an action for infringement, and an action for passing off.

They claimed that the three essentials of passing off (establishing goodwill, demonstrating misrepresentation by Britannia to public, and establishing the loss suffered) were not demonstrated by ITC. They further averred that color per se is not an element of distinctiveness for identifying the source of the products. It was also averred that the ITC had failed to establish distinctiveness and secondary meaning with respect of their packaging. 

Issues Involved

• The difference between an action for infringement, and that of passing off.

The Hon’ble Court referred to the landmark judgement of Kaviraj Pandit Durga Dutt Sharma v Navaratna Pharmaceutical Laboratories to elucidate on this issue – the difference being that the use by Britannia of the trade mark of ITC is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement.

• The elements of Passing Off.

With regard to this issue, the Court referred to the landmark judgment of the House of Lords in Reckitt & Colman Products Limited. v. Borden Inc, wherein the elements of passing off were definitively established as - 

• Establishing goodwill,
• Demonstrating misrepresentation by Britannia Industries Limited to public
• And establishing the loss suffered

Decision of the Single Judge

The Court observed that the sales and turnover figures submitted by ITC in support of their claims is a significant factor whilst examining the reputation of ITC’s product. 

The Court also opined that secondary meaning or distinctiveness can be acquired in a short span of time. Even more so for eatables. They also observed that with respect to eatables like biscuits, the color scheme of the packaging plays an important role in the consumer making an initial choice and in enabling a discerning consumer to locate the particular brand of a manufacturer.

It was held that the packaging of Britannia was deceptively similar to that of ITC’s, and that the three elements of passing off are fulfilled in the present case.

As per the Court’s reasoning, the balance of convenience is in favor of ITC, and that granting an interim injunction would cause far less damage to Britannia as their product has been in the market for only two months.

The Court thereby granted an interim injunction, and restrained Britannia from using any variant of color blue in the packaging. But they allowed Britannia to use any other distinctive color instead or to use the same packaging as used in the international markets for the same product.

Aggrieved by the order of the Single Judge Britannia appealed to the Division Bench of the Delhi High Court. On March 10, 2017 the Division Bench of the Delhi High Court turned the table around and ruled in favor of Britannia, setting aside the order of the Single Judge.

Britannia’s Submission before the Division Bench:

1. Britannia submitted that the predominant color of the packaging of its product was yellow, and that blue is merely a secondary color used to indicate a connection to diabetes.
2. Britannia further submitted that they have been using yellow as the primary color in combination with red and green for its earlier products and therefore started using a combination of yellow and blue for the Digestive Zero product
3. Britannia contended that the color blue was being used worldwide in relation to sugarless or zero sugar products.
4. Britannia further contended that the word ‘Britannia’ itself appeared prominently against a red background in one corner of the impugned packaging. Further, the words ‘Nutri Choice’ featured prominently in its packaging, and the same was not present in ITC packaging.
5. Britannia averred that color per se was not an element of distinctiveness for identifying the source of the products. It was also averred that ITC failed to establish distinctiveness and secondary meaning with respect to its packaging.

ITC’s Submission before the Division Bench:

1. ITC asserted that its brand name ‘Sunfeast’ was written on the top-left hand side of the label on the yellow portion with the trademark ‘Farmlite’ underneath it, along with the mark ‘Digestive - All Good’ situated below ‘Farmlite’.
2. ITC further asserted that the color scheme used in the trade dress was yellow and blue. The left part of the packaging was in a yellow background and the right side of the packaging was in blue, and both color were separated by a curved line.
3. ITC contended that the picture of the biscuits appeared on the front-right side of the label, which was depicted with a wheat spike/sheaf of wheat with grains lying at the bottom of an individual wheat biscuit with the words ‘No Added Sugar/Maida’ written on the biscuit in a bold white font. The words ‘Sugar’ and ‘Maida’ were separated by a white horizontal dividing line between the two words.
4. ITC submitted that there are many sugarless or zero sugar products which do not use the color blue in their packaging.
5. ITC submitted that Britannia had copied various elements of its trade dress, including the color combination. Further the trade channels were identical and in furtherance to that also submitted sales, revenue and advertising figures to substantiate its claims.

Decision of the Division Bench

The Division Bench made the following observations-

• The get-up (the yellow - blue combination of the package) was not exclusively and distinctively associated with the ITC

The Court observed that ITC had failed to establish that the get-up in the form of the yellow-blue combination employed by ITC had become so distinctive of its products that whenever any person saw the yellow-blue combination on a package of digestive biscuits, he/she would associate it with ITC.

•  Reliance on Trade Marks and Business Name in its advertisement

The Court further observed that ITC in its advertisements mainly relies on its Trade Marks and Business Name. In such a situation ITC had a greater difficulty in establishing its claim based on general get-up and in the present case, on the combination of yellow and blue.

• Introduction of a new feature into get up of goods does not automatically acquire any proprietary interest

The Court further observed that in the short span of time of 6 months the yellow and blue combination in the packaging of ITC’s biscuits could not have become so identified with ITC so as to enable it to prevent its use by competitors.

• Distinctiveness is acquired in get-up when it is not only novel but also striking

The Court further observed that the get-up and specifically the yellow-blue combination, does not fall in this category.

On the basis of the above observations the Division Bench held that the combination of yellow and blue as used by ITC for its “Sunfeast Farmlite Digestive – All Good” biscuits – has not become so identified with its goods as to become a “badge” of its goodwill and the element of passing off was not established. Accordingly the Court set aside the order of interim injunction.

DU Photocopy Case: Publishers end the protracted legal battle

The Delhi University Photocopy case which began in the year 2012, came to an end when the Oxford University Press, Cambridge University Press, and Taylor and Francis (hereinafter referred to as “Publishers”) withdrew their copyright suit against Delhi University and Rameshwari Photocopier. This battle which continued for 5 years was expected to continue for a few more years. One of the reason of withdrawal could be that a group of Oxford University Students, Alumni and Academicians urged the Publishers to refrain from appealing this progressive decision of the Division Bench so as to make knowledge accessible and affordable for all students.

For the ease of convenience of our readers we have summarized the events of the case till date below -

• In the year 2012, the Publishers filed a suit for infringement of Copyright against Rameshwari Photocopy Services and the University of Delhi for making Photostatted course packs or study material available to the students, without taking any permission from the publisher.
• The High Court of Delhi granted ad interim injunction whereby the defendant was restrained from making and selling course packs and also reproducing the plaintiff publication by compiling the same either in the book form or course packs.
• During the trial Society for the Promotion of Educational Access and Knowledge (ASEAK) and Association of Students for Equitable Access to Knowledge (ASEAK) were impleaded as Defendants.
• In September 2016, the Delhi High Court decided the case in favor of the Defendants and held that “Copyright, especially in literary works, is thus not inevitable, divine, or natural right that confers on the authors the absolute ownership of their creators. It is designed rather to stimulate activities and progress in the arts for the intellectual enrichment of the public.”
• Aggrieved by the order of Single Judge the Publishers filed an appeal to the Division Bench. In addition to withdrawing the case from the Delhi High Court, the Publishers assured that it was not going to take up the issue before any other higher court, such as the Supreme Court of India.
• On December 9, 2016 the Division Bench of the Delhi High Court decided the appeal interpreting Section 52(1)(i) of the Copyright Act as permitting photocopying of copyrighted works for preparation of course packs and remanded the suit to the single bench for a fact specific determination on whether the copyrighted materials included in the course packs in this case were necessary for the purpose of instructional use by the teacher to the class.
• On March 9, 2017 the Publishers withdrew the suit from the Delhi High Court.

In addition to withdrawing the case from the Delhi High Court, the Publishers assured that it was not going to take up the issue before any other higher court, such as the Supreme Court of India. The Publishers jointly made a public statement that

“We continue to stand by our principles stated throughout this case. We support and seek to enable equitable access to knowledge for students and we understand and endorse the important role that course packs play in the education of students. We support our authors in helping them produce materials of the highest standard and we maintain that copyright law plays an important part in balancing the interests of those creating, curating, and disseminating learning materials with those requiring access to them. 

 

“We look forward to working even more closely with academic institutions, teachers and students to understand and address their needs, while also ensuring that all those who contribute to and improve India’s education system—including authors and publishers—continue to do so for the long term.”  

To sum up, this decision of withdrawal is likely to benefit students who cannot afford the original copies of the academic books..

India: After initial hiccups Arnab Goswami changes the name of his new venture to ‘Republic TV’

On November 1, 2016, the nation was shocked when the face of ‘The Newshour’, Mr. Arnab Goswami stepped down as the Editor-in chief of its parent news channel Times Now. Few days later, Mr. Goswami announced that he will launch his new venture, a News Channel called ‘Republic’. Republic made its social media debut with the launch of a Twitter handle and Facebook page and is also in the process of launching its website republicworld.com.

After initial optimism on social media, his new venture quickly plunged into controversy when Subramanium Swami, a senior BJP Leader, and a member of the Rajya Sabha (Upper House of the Indian Parliament) addressed a letter to the Ministry of Information and Broadcasting alleging that the name of Mr. Goswami’s proposed news channel ‘Republic’ violates the provisions of the Emblems and Names (Prevention of Improper Use) Act, 1950 (hereinafter referred to as the ‘Act”). In his opinion, use of the word ‘Republic’ for commercial purposes is expressly prohibited by the said Act, and Mr. Swami very aptly iterated this fact in his letter to the Ministry.

The issue at present here is whether the use of the word ‘Republic’ is in contravention to the Act. Reading the Statement of Objects and Reasons of the Act will throw some light on the primary reasons for the promulgation of the said Act. It states that-

“The General Assembly of the United Nations Organization recommended in 1946 that members of the United Nations should take necessary legislative or other appropriate measures to prevent the use, without proper authority, and in particular for commercial purposes, of the emblem, the official seal and the name of the United Nations and of the abbreviations of that name. A similar recommendation has since been received also from the World Health Organization for prevention of the use of its name (and abbreviations), emblem and official seal. Instances have also come to light of the use in India (and abroad) of the Indian National Flag and emblem and of the names or pictorial representation of Mahatma Gandhi and other national leaders, for commercial and trade purposes and in a manner likely to offend the sentiments of the people. The provisions of the Indian Trade Marks Act, 1940, Indian Patents and Designs Act, 1911, Indian Merchandise Marks Act, 1889, and the Indian Companies Act, 1913, are not adequate to prevent these abuses.  The Bill seeks to prevent the improper use of these names, emblems, etc., for the purpose of trade, business, calling, profession, patent or design and to impose a penalty for misuse of emblems, etc., specified in the Schedule and empowers the Central Government to make additions, and amendments in the Schedule as and when necessary”

According to news reports, Swamy contended in his letter to the Ministry that item 6 in the schedule to the Act prohibits the use of the word ‘Republic’. Item 6 to the schedule to the Act reads as follows: “6. The name, emblem or official seal of the President, Governor, Sadar-i-Riyasat or Republic or Union of India.” Section 9(2)(d) of the Trademarks Act,1999 also imposes an absolute restriction on the registration of marks which is in contravention with the Emblems and Names (Prevention of Improper Use) Act,1950.

The Indian Government and the Judiciary have not taken strong note of instances of violations of the provisions of the Act. There are of course sporadic instances of cases where the judiciary ordered the authorities to take steps. For instance, in the case of Ravikanth Shinde v Managing Director, Gujarat Heavy Chemicals Ltd. and Ors[1]. The Respondents in this case were manufacturing ‘kitchen salt’ under the trademark Dandi with the pictorial representation in the background which creates an impression of Mahatama Gandhi. The Andhra Pradesh High Court directed the authorities concerned under the Emblems and Names (Prevention of Improper Use) Act, 1950, to take steps in accordance with the Act to ensure that Mahatma Gandhi's picture or the name Dandi is not used for any commercial purpose.

Mr. Goswami’s trademark application, a copy of which can be found over here, was subsequently filed on November 20, 2016, in Class 35, which relates to advertisement and publicity services. It is pertinent to note, that the Trademark Registry did not raise any objection on the basis of Section 9 (2) (d). However, it did raise an objection based on Section 9 (1) (a) in the following words: “As the mark is a common surname/personal name/geographical name/ornamental or a non-distinctive geometrical figure and as such it is not capable of distinguishing the goods or services of one person from those of others.”

However, this controversy was put to rest subsequently, as Mr. Goswami has since rebranded his channel to ‘Republic TV’.

For general information of our readers, we have listed a few marks both in India and Abroad below a substantial part of which contains the word ‘Republic’ -

Table – 1: List of marks in India containing the word ‘Republic’

Table – 2: List of marks in the United States bearing the word ‘Republic’

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[1] 2003(4)ALD400

India: The Iconic Ambassador, once dubbed ‘King of Indian Roads’ taken over by French auto-giants Peugeot

CK Birla Group, the parent company of Hindustan Motors, an Indian Automotive Manufacturer based in Kolkata, India, issued a statement on February 11, which confirmed that the iconic Ambassador brand has changed hands and has been sold to European auto major Peugeot for a sum equal to ₹ 80 crore. ($ 12 Million approx.)

The official statement read as, “Hindustan Motors has executed an agreement with Peugeot SA for the sale of the Ambassador brand, including the trademarks, for a consideration of ₹ 80 crore”. The CK Birla group firm has inked an agreement with Peugeot SA to this effect. 

Peugeot is a French car manufacturer, part of Groupe PSA, renowned for its roaring-lion trademark. The PSA Group has inked a partnership with the CK Birla group to re-enter the Indian market and earmarked an initial investment of 100 million euros (around ₹ 700 crore) to set up vehicle and powertrain manufacturing in Tamil Nadu. The tie-up entails two joint venture agreements between the companies of the two groups.

The long-term partnership will allow both companies to participate in the growth of the Indian automotive market, which is expected to reach 8-10 million cars by 2025, from the current 3 million in 2016, according to a report by the Hindustan Times.

The PSA group, which sells three brands – Peugeot, Citroen and DS – is no stranger to India, having entered into a partnership with the erstwhile Premier family, resulting in joint venture Peugeot PAL India. However, it pulled out of the JV in 2001.

The group had made repeated attempts to return to the Indian market. In 2009, it decided to go slow on plans to kick off operations in India due to a global economic slowdown. Later, in 2011, it announced plans to re-enter the Indian market with a mid-sized sedan, 10 years after it had exited the country. The plan, however, did not materialize.

Interestingly, Hindustan Motors currently does not own any trademark registrations related to the word ‘Ambassador’. The earlier mark owned by HM was not renewed, and application for the new mark bearing numbers 2803570 and 2803571 have been advertised with the opposition period getting over on February 9, 2017 and February 9, 2016 respectively. As no opposition have been filed against the same, they will proceed to registration in due course. A list of trade-marks owned by Hindustan Motors in Class 12 are as follows –

India: Delhi High Court grants temporary Injunction against Macleods Pharmaceuticals Ltd

In a recent case decided by the Delhi High Court, Justice R.K.Gauba granted temporary injunction in favor of Intas Pharmaceuticals Ltd (hereinafter referred to as the “Plaintiff”) restraining the use of its trademark by the Macleods Pharmaceuticals Ltd (hereinafter referred to as the “Defendant”). The Court granted the interim relief as the Plaintiff proved a prima facie case in their favor and the Defendants’ use of the mark was phonetically/visually similar to that of the Plaintiff’s mark .

Brief Facts of the Case:

The Plaintiff is a company incorporated under the Companies Act and is engaged in the manufacture of medical and other pharmaceuticals products. The Plaintiff got its trademark GABAPIN registered in the year 1997. In May 2016, it came to the knowledge of the Plaintiff that the mark used by the Defendant ‘GABAMIN’ is phonetically/visually similar to the Plaintiff’s mark ‘GABAPIN’ and is likely to cause confusion in the minds of public.

Accordingly, the Plaintiff filed a civil suit seeking permanent injunction against the Defendant for infringement of its registered trademark "GABAPIN".

Plaintiff’s Submission

1. The Plaintiff produced records before the Court, showing that it had introduced the medicines in the name of GABAPIN ME and GABAPIN NT which is a variation of GABAPIN.
2. The Plaintiff contended that the Defendant has not shown any document or alleged in any manner to be selling any medicinal product containing the chemical compound "Gabapentin" alone.
3. In the application for ad interim relief the Plaintiff alleged that it learnt about the medicinal products having been introduced in the market by the Defendant sometime in May 2016 and in the Plaint the Plaintiff mentioned that the Defendant had applied for registration of the mark “GABAMIN” under Class 5 before the Trademark Registry and upon this knowledge the Plaintiff filed its opposition in January 2010 to which the Defendant had failed to file any counter statement.
4. The Plaintiff further contended that the use of the mark “GABAMIN” and “GABAMIN NT” by the Defendant is phonetically/visually similar to its registered mark and is dishonest and intended to ruin the goodwill and reputation of the Plaintiff.

Defendant’s Submission

1. The products of the Plaintiff and that of the Defendant has different composition and there is no scope for confusion.
2. The Defendant contended that in its mark GABAMIN the expression GABA is only a prefix and is a derivative of the chemical compound “GABAPENTIN”. It is a generic term and monopoly cannot be claimed by the Plaintiff. The rest of the mark is dissimilar and the suffix “MIN” is sufficient to distinguish the two products.
3. The Defendant further contended that the Plaintiff is guilty of concealment of the fact that it had knowledge about the products of the Defendant since 2010, as the Plaintiff had earlier opposed an application of the Defendant in relation to the mark “GABAMIN”.
4. The Plaintiff is not entitled to equitable relief on account of equitable laches and acquiescence. The Defendants’ product has been in the market since a long time, a fact that can be substantiated by their sales report.
5. The Defendant claims that balance of convenience lies in their favor.

Decision of the Court

The Court started that it is true that neither side can claim exclusive rights to the use of a generic term such as "Gabapentin". The Court finds no substance in the submission of the Defendant that the Plaintiff is guilty of concealment of material facts. The Plaintiff has clearly declared in the pleadings that its product primarily contains the chemical compound "Gabapentin". The two other products later developed had other ingredients, one sold under the mark "GABAPIN ME" being similar to that of the impugned product of the Defendant, both also having as its contents "Methylcobalamin" and the other "GABAPIN NT" being again similar to the other product of the Defendant "GABAMIN NT", each adding the chemical compound "Nortriptylin" to the prime ingredient "Gabapentin". The Court rejected the contention of the Defendant that Plaintiff concealed the facts relating to trademark registration application submitted by the Defendant in 2006.

The Court further observed that filing of an application of registration of a trademark indicates that the applicant only proposes to use the trademark. Hence, it cannot be assumed that the Plaintiff had knowledge of the product being sold in market since 2010. The Court further observed that it is not possible to raise objections on the ground that prefix used therein is generic in nature and it is not permissible for the mark to be split up to compare them.

On these grounds, the Court held that the Plaintiff has made out prima facie case in its favor. The Court allowed the application under Order 39 Rule 1 & 2 of the Code of Civil Procedure and granted the relief of temporary injunction and restrained the Defendants from using the mark "GABAMIN" and / or "GABAMIN NT" or any other words identical or deceptively similar thereto, singularly or in conjunction with any other words or monogram / logo as a trade mark, service mark, trade name, trading style, or in any other manner whatsoever. However, the Court allowed the use the mark GABAMIN-NOR. But the use of the said mark shall be such that “GABAMIN‟ and “NOR‟ are in the same font and size. 

India: Copyright Office notifies applicants to remove discrepancies in their application

February 6, 2017                                                                                                     New Delhi

The Copyright Office has issued discrepancy letters to the applicants/ concerned persons who have applied or their respective copyright registration before the Registrar of Copyright to remove  the discrepancies. owever, as per status available on the records of the Copyright Office, the said discrepancies are yet to be rectified.

The list of discrepancy applications that have been released by the Copyright Office and can be found here.

Through a notice dated February 6, 2017 the Copyright Office requested all concerned applicants to remove the respective discrepancies latest by February 28, 2017, failing which it would be assumed that the concerned applicant has abandoned his application and same shall be Recorded without acknowledging any further correspondence in this regard. However, the applicants may be at liberty to apply a fresh application.

India: Trade Marks Office gives a ‘Final’ Opportunity to Applicants aggrieved by the Mass Abandonment of Applications

During the month of May, June and July of 2016, the Indian Trade Marks Registry had dispatched 49289 Examination Reports containing office objections u/s 9, 11 and other relevant sections of the Trade Marks Act, 1999 to the concerned applicants or their authorized agents on record. Out of the Examination Reports so dispatched, no reply/communication had been received in 23303 applications even after the expiry of more than 30 days from the date of dispatch.

By a public notice dated January 30, 2017, a copy of which can be found over here, the Trade Marks Registry gave one last opportunity to send the scanned copy of the reply to the Examination Report by or before February 28, 2017 at parm.tmr@nic.in. If an applicant fails to do so, then the concerned applications will be treated as abandoned.