VOL IX                                                      ISSUE NO. 19                                    September 19, 2017          


In This Issue

India: Delhi High Court issues directions to the Trademarks Registry for time bound issuance of Certified copies

 

Recently in the twin cases of Registrar of Trade Marks vs Kapoor Saws Manufacturing Co & Ors ; and Registrar of Trade Marks vs Sonik Industries & Ors , the Registrar of Trademarks was issued a summons in the original suit before the trial court, to produce certain records of the office. However, the same was not complied with by the Registrar of Trademarks.

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India: Andhra Pradesh High Court follows in the footsteps of Delhi High Court with regard to mass abandonment of trademarks

Against the arbitrary order of the Trade mark Registry, Hon’ble Justice Mr. Challa Kodanda Ram directed the Office of the Controller to not treat any trade mark application as abandoned without prior notice to the affected party, as provided under section 121, 128 and 132 of the Trademarks Act, 1999.

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India: Delhi High Court restrains Patanjali from using its alleged disparaging Ad – Yet Again!!

A day after the Bombay High Court passed an injunction restraining Patanjali from airing its alleged disparaging television advertisement for its bathing soaps, the High Court of Delhi on a petition filed by Reckitt Benckiser has issued an ad-interim injunction against Patanjali, thereby restraining Patanjali from airing the impugned advertisement.

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India: Delhi High Court on the question of first owner of copyright?

Recently, the Delhi High Court in the case of Neetu Singh vs. Rajiv Saumitra, while revisiting Section 17 of the Copyright Act, 1957, granted an interm injunction to Neetu Singh since Rajiv Saumitra and others did not place on record any document to show that Neetu Singh was acting as an employee of the Defendants when the literary works were created.

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India: Delhi High Court issues directions to the Trademarks Registry for time bound issuance of Certified copies

 

Source: www.ipindia.nic.in

 

 

Recently in the twin cases of Registrar of Trade Marks vs Kapoor Saws Manufacturing Co & Ors[1] ; and Registrar of Trade Marks vs Sonik Industries & Ors[2] , the Registrar of Trademarks was issued a summons in the original suit before the trial court, to produce certain records of the office. However, the same was not complied with by the Registrar of Trademarks.

 

Since the Registry failed to comply, a proclamation under Order XVI Rule 10 of the Code of Civil Procedure, 1908, was passed, by which the Registrar was required to be physically present before the Court to produce the requisite records. The Registrar then filed the present revision petition in the Delhi High Court against this proclamation order, arguing that since the proclamation order was issued, certified copies of the records had been sent to the Respondents, i.e. Kapoor Saws Manufacturing Co and Sonik Industries (Petitioners to the original suits).

 

The Counsel for the Registrar of Trademarks further stated that a joint interpretation of Sections 137 and 138 of the Trademarks Act, 1999 makes it clear that, certified copies of records are enough as evidence, without requirement of original records or the appearance of the Registrar as witness. As it is, the Office of the Registry of Trademarks are situated at different locations in the country and are very small with skeletal staff whose work is affected if they are also required to appear as witness before the courts.

 

The Counsel for the Respondents argued that in countless instances the application for certified copies remains pending before the Registrar’s office for long periods, causing serious inconvenience to litigants and also making it necessary to summon records as evidence.

 

The Court after hearing all the concerned parties Hon’ble Justice Rajiv Sahai Endlaw issued the following guidelines to the Office of the Registrar of Trademarks –

  • If not already in place, nominate one Nodal Officer of each branch to receive applications for certified copies and to issue certified copies.

 

  • To, within two months of today, announce on the website of the Registrar of Trade Marks, the particulars i.e. name/designation, address, phone number/s and email address of the Nodal Officer responsible for accepting and entertaining applications for certified copy and to issue certified copies for each office of the Registrar of Trade Marks.

  • To, within six months of today, make a provision, if not already in existence, for making online applications for certified copies.

  • To, within six months of today, make a provision on the website of the Registrar of Trade Marks for disclosure of the status of the applications for certified copies including any deficiency or defect therein required to be remedied by the applicant and/or the date when it will be ready for collection.

  • To, till the aforesaid is functional, as an interim measure, make a provision for sending intimation, to the applicant/s for certified copies, of deficiencies / defects required to be rectified via e-mail, SMS and other modes of communication.

  • To, endeavour to make provision for online payment of the fee and other charges if any for certified copies.

  •  To issue certified copies within one month of the receipt of a duly completed application.

  • To indicate on the certified copy, whether it has been prepared from the original of the document or from a copy of the document.

  • To explore the possibility of making an endorsement of “original seen and returned” on the copies on the record, originals of which are returned.

  • To ensure, that the certified copies are legible and wherever the original / copy on the record of the Registrar of Trade Marks has any colour other than black and white, the certified copy reflects such colour.

  • To, if the documents of which certified copies is sought have been lost or misplaced, intimate the same to the applicant within one month as aforesaid of the application for certified copy having been made.”

 

Justice Endlaw concluded by saying, “Once the Registrar of Trade Marks has implemented the aforesaid, it is expected that neither will any of the parties to the litigation nor any of the Courts, where such litigations are pending, would mechanically issue summons to the Registrar of Trade Marks as witness, requiring it to produce records unless reasons are recorded as to why the purpose of summoning cannot be served by obtaining certified copies and tendering the same in evidence.”

 

 

[1] C.R.P. No. 146/2015 & CM No. 21927/2015 (for stay)

[2] C.R.P. No. 29/2017 & CM No. 5066/2017 (for stay)

 

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India: Andhra Pradesh High Court follows in the footsteps of Delhi High Court with regard to mass abandonment of trademarks

 

 

 

Source: hc.tap.nic.in

 

In the last week of March 2016, the Indian Trademarks Registry (hereinafter referred to as the ‘Registry’) ordered the abandonment of an unusually high number of trademark applications. The said number of applications had been abandoned for lack of prosecution wherein examination report was claimed to have been dispatched by the Trademarks Registry but not received by the applicants/agents or wherein reply to examination report had been filed but not considered by the Registry.

 

Further, on April 4, 2016, the Office of the Controller General of Patents, Designs and Trademarks (hereinafter referred to as the ‘Office of the Controller’), released a public notice which was a step taken in the interest of justice, especially after the receipt of complaints from various stakeholders, who stated that the said applications were treated as abandoned without giving applicants a proper opportunity to be heard.

 

To redress all the parties who were adversely affected by all such scenarios, the Office of the Controller had provided a further opportunity till April 30, 2016, to file all such representations and reply to all such examination reports. It stated that if indeed it is found that parties are adversely affected by it, then the Office will take appropriate action necessary to remedy it.

 

 

However, on April 5, 2016, a writ petition was filed by the Intellectual Property Attorneys Association & Others, in which Hon’ble Justice Mr. Manmohan of the Delhi High Court, after hearing the contentions from both the sides and noticing the startling figures of disposal within a very short period of time, stayed the orders of abandonment passed by the Registry on or before March 20, 2016. The Learned Judge further added that the Office of the Controller shall not treat any Trademark application as abandoned without proper notice to an affected party as provided under Sections 21, 128 and 132 of the Trademarks Act, 1999.

 

In compliance with the order of the Delhi High Court, the Office of the Controller released a public notice on April 11, 2016, stating that the abandonment order are being kept in abeyance and the applicants and their authorized agents are free to file the reply to examination reports containing the Office objections by means of comprehensive e-filing services of trademarks at their official website.

 

Moving on, in January 30, 2017, the Trademark Registry issued a public notice ordering abandonment of high number of trademark applications. The said notice aimed at clearing back log of cases. However, the Applicants were given one last opportunity of sending a scanned copy of reply to Examination Report on or before February 28, 2017, failing which the applications will be deemed to be abandoned.

 

Aggrieved by the order of the Trademark Registry, Mr. K. Hermaprakasa Rao filed a petition with the Andhra Pradesh High Court under Section 151 of the Code of Civil Procedure, 1908, against the January 30 public notice.

 

The Petitioner placed reliance on the order of the Delhi High Court dated April 05, 2017, wherein Hon’ble Justice Manmohan Singh stayed the order of abandonment passed by the Trade mark Office on or after March 20, 2016 and ordered not to treat any trademark application as abandoned without prior notice to the affected party.

 

Against the arbitrary order of the Trademark Registry, Hon’ble Justice Mr. Challa Kodanda Ram directed the Office of the Controller to not treat any trade mark application as abandoned without prior notice to the affected party, as provided under section 121, 128 and 132 of the Trademarks Act, 1999.

 

Order of the Andhra Pradesh High Court, can be accessed over here.

 

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India: Delhi High Court restrains Patanjali from using its alleged disparaging Ad – Yet Again!!

 

Source: Patanjaliayurved.org

 

A day after the Bombay High Court passed an injunction restraining Patanjali from airing its alleged disparaging television advertisement for its bathing soaps (the Petitioners in this case being Hindustan Unilever), the High Court of Delhi on a petition filed by Reckitt Benckiser has issued an ad-interim injunction against Patanjali, thereby restraining Patanjali from airing the impugned advertisement.

 

“Lifebuoy” and “Pears” are two very well-known soap brands of Hindustan Unilever and the “Dettol” brand of soaps is one of Reckitt Benckiser’s most globally well-known trademarks. In the impugned Patanjali advertisement, the narrator urges the public to shun soaps like “Lifejoy”, “Tears” and “Dhitol” as they are chemical based and are used by movie stars.

 

These decisions by the Delhi and Bombay High Court is another addition to the growing list of cases regarding comparative advertising and disparagement thereto in the last few years. The Courts seem to have followed the recent decision of the Bombay High Court in the dispute between AMUL and Hindustan Unilever Limited regarding Amul’s advertisement, wherein it was observed that Amul’s impugned advertisement was disparaging to an entire class of products, i.e. Amul’s “real ice-cream” against “frozen desserts” which were depicted as allegedly harmful to consumers due to the presence of “vanaspati/vanaspati tel”.

  

 

A parallel can be drawn from the above instance and the present case between Patanjali v HUL and Reckitt Benckiser – “Herbal soaps” v. alleged “Chemical Soaps”. It is interesting to see whether the respective High Courts will adjudicate upon the same lines as the earlier judgment by the Bombay High Court.

 

The probable issues with respect to the current dispute between Patanjali and Reckitt Benckiser can primarily revolve around the concept of “comparative advertising”.

 

In the earlier mentioned recent case between AMUL and Hindustan Unilever Limited by the Bombay High Court, the judgment was in line with the precedents laid down in earlier cases like Pepsi Co., Inc. And Ors. vs Hindustan Coca Cola Ltd. (regarding Pepsi’s famous tagline “Yeh Dil Maange More”). In the said AMUL case, AMUL was deemed to have made a false statement regarding the constituents of “frozen desserts”. Similar questions can be raised in the present case of Patanjali – which states that the soaps “Lifejoy”, “Tears” and “Dhitol” are “chemical based”, and impliedly Patanjali’s soaps are not, which is up for debate as the same appears to be an unverified assertion as depicted in the impugned advertisement. And the above assertion might deceive or potentially deceive ordinary customers who might start believing that all soaps with any “chemicals” are harmful, thereby influencing them to shun soaps like “Lifejoy”, “Tears” and “Dhitol” and instead buy Patanjali’s soaps which by alleged comparison is not “chemical based”

 

There is also a possibility that the Advertising Standards Council of India (ASCI) might take issue against Patanjali’s impugned advertisement, which is bound to heap further misery on the Baba Ramdev led brand.

 

 

 

 

 

 

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India: Delhi High Court on the question of first owner of copyright?

 

Source: delhihighcourt.nic.in

 

Recently, the Delhi High Court in the case of Neetu Singh vs. Rajiv Saumitra, while revisiting Section 17 of the Copyright Act, 1957, granted an interm injunction to Neetu Singh (hereinafter referred to the ‘Plaintiff’) since Rajiv Saumitra and others (hereinafter collectively referred to as the ‘Defendants’) did not place on record any document to show that Neetu Singh was acting as an employee of the Defendants when the literary works were created.

 

Brief Facts:

 

The Plaintiff filed the present suit praying for a decree of permanent injunction restraining the Defendants from publishing, distributing and selling the literary work ‘English for General Competitions’. The Plaintiff is a renowned author engaged in the business of providing services in relation to ‘education, training & educational consultancy in the field of engineering, medical, para-medical, dental, nursing, marketing, management and information technology. Defendant No. 1, Mr. Rajiv Saumitra is the husband of the Plaintiff, and runs and manages Paramount Coaching Centre Private Limited (Defendant No. 2). Defendant No. 3 is the publishing house that prints books and notes for Defendant No.1.

 

The Plaintiff states that she started an education and training institute titled 'Paramount Coaching Centre' in 1982 which earned much goodwill and reputation in the market. Around 2006 the Plaintiff married Defendant No.1, who was a teacher at the said coaching centre. In order to expand the business, the Plaintiff and Defendant No.1 formed and incorporated a company in the name and style of 'Paramount Coaching Centre Pvt. Ltd' on November, 30, 2009, with Plaintiff and Defendant No.1 as its Directors. During the progress as a trainer/ academician/ educational consultant, the Plaintiff decided to write books on various subjects so as to bridge the gap between the instructional and teaching material available in the market and the actual needs of the students for understanding the concepts in the relevant subjects including those required for success in competitive examinations. After working and researching on various subjects, compiling educational data, question banks along with answers and from her own skill, labour and hard work, the Plaintiff wrote and authored several books under the titles Ënglish for General Competitions-From Plinth to Paramount Vol-I, Rasayan Vigyan- Samanya Pratiyogita Hetu, Jeev Vigyan-Samanya Pratiyogita Hetu, Bhartiya Arthvyavastha-Samanya Pratiyogita Hetu, etc.

 

Contentions of the Plaintiff

  • The Plaintiff claims that the above referred literary work is the original work of the Plaintiff created and authored for the first time and on applications filed she has been granted copyright certificates in the literary works.

  • The said books were written and authored by the Plaintiff between 2012 to 2014 during a period when the Plaintiff was married to Defendant No.1 and the copyright was secured by the Plaintiff to the knowledge of Defendant No.1 without any objection from him

  • The Plaintiff further claimed that she published the aforesaid books through her proprietary concern 'Paramount Reader Publication' and thereafter 'Paramount Reader Publication OPC Private Limited' was formed and incorporated on January 29, 2015. The said Paramount Reader Publication was a one person company and was given the right to publish the books authored by the Plaintiff to the exclusion of any other party. The rights to publish books was never licensed, transferred or assigned to any person including Defendant No.1 or 2 by the Plaintiff.

  • After May 2015 the relationship between the Plaintiff and Defendant No.1 got soured and they were involved in several civil cases as well as criminal complaints including concerning control of business of Defendant No.2.

  • The grievance of the Plaintiff is that one of the books authored by her titled as 'English for General Competitions - From Plinth to Paramount' was authored by the Plaintiff on or about May 2012 and was an instant success in the market. The book was initially published in July 2012 and thereafter in 2014 and 2016. It was rated as the best seller on the 'Amazon' website and is an excellent guide in case of competitive examination. The Plaintiff was granted copyright in the said literary work vide certificate No. L- 62916/2015. Neither the Defendant No.1 nor any other person has till date challenged her copyright in the literary works published. In and around December 2015, the Plaintiff learnt that Defendant No.1 was illegally copying and publishing certain books authored by the Plaintiff. Invoking Section 63 of the Copyright Act, the Plaintiff filed a criminal complaint at Mukherjee Nagar Police Station where after Police seized around 6000 incriminating copies. Further, the Plaintiff also filed a complaint under Section 63 of the Copyright Act read with Section 420/485/486 and 120 of the Indian Penal Code with the learned CMM, Mukherjee Nagar.

  • In June, 2016, the Plaintiff learnt that Defendant No.1 in connivance with Defendant No.2 published its first lot of books under the title "English for General Competitions - From Plinth to Paramount". The said book of the Defendants contains no mention of any author in the book and the book is a verbatim copy of the Plaintiff's book under identical title and the graphic representations of two mountains has also been copied by the Defendants in toto with a slight color variation. Thus, an ordinary unwary student would be deceived and mislead into believing that the book in fact originated from the Plaintiff and to confuse the students further the Defendants have priced the book at ₹150/- while the Plaintiff's book is being sold at ₹300/- per copy.

  • The Plaintiff further contends that she being the author of the literary work and there being no contract of service between the Plaintiff and Defendant No.2 in terms of Section 17 of the Copyright Act, ownership of the literary work vests with the Plaintiff. Further, since the Plaintiff owns registration of the copyright, the same is a prima facie evidence of ownership, and hence, the Defendants are liable to be restrained from publishing, selling the books authored by the Plaintiff.

  • Learned Counsel for the Plaintiff further submits that there is no material with the Defendant to show that Defendant No.2 was the employer of the Plaintiff thus claiming to be the owner of the copyright in terms of Section 17 (c) of the Copyright Act. No money has been shown to be paid to the Plaintiff. Further assignment if any in a literary work has to be in writing as per Section 19 of the Copyright Act and in the absence thereof there has been no assignment of the literary work by the Plaintiff who is the author of the work.

Contentions of the Defendants

  • In response to this claim of the Plaintiff, the Defendant No.1 & 2 filed a written statement and a counter claim. In the written statement and the counter claim the case of the Defendants in a nutshell is that the Plaintiff is not the exclusive owner/author of the book. The Plaintiff authored/compiled the books with the help of a team while she was admittedly working as a Director of Defendant No.2 from the year 2012 to 2014 and even as per the Plaintiff the relations between the Plaintiff and Defendant No.1 soured in May 2015. Thus, the Plaintiff cannot claim any copyright in the books which were authored by and on behalf of the Defendant No.2 who employed its entire team including the Plaintiff who was then one of the Directors of Defendant No.2.

  • It is the case of the Defendant No.1, that he was running a coaching centre in the name and style of M/s. Paramount Coaching Centre at Dr. Mukherjee Nagar, Delhi as a sole proprietorship concern when in July 2005, the Plaintiff came in contact with Defendant No.1 and sought financial assistance. Defendant No.1 allowed Plaintiff to take English classes in his coaching centre. Slowly on being lured and on the insistence of the Plaintiff, the Defendant No.1 converted Paramount Coaching Centre into a private limited company with Plaintiff and Defendant No.1 as its two Directors, as minimum two Directors were required as per the Companies Act, 1956. On March 12, 2006, the marriage between the Plaintiff and Defendant No.1 was solemnized on the Plaintiff furnishing an affidavit on oath that she was a spinster at the time of marriage, though the fact is that she was earlier married. Thus, after conversion of proprietorship concern of Defendant No.2 to private limited company, the Defendant No.1 retained his status as Managing Director but gifted 50% of the shareholdings to the Plaintiff and no consideration was paid to the Plaintiff. The Plaintiff along with the family members started controlling the key positions and in conspiracy with her other family members incorporated companies like Paramount Reader Publication OPC Pvt. Ltd. and thereafter M/s. K.D. Campus Pvt. Ltd. in early 2015.

  • The Plaintiff entered into a competing business with Defendant No.2 despite remaining the Director of Defendant No.2 and started transferring the business of Defendant No.2 to her aforesaid individual companies. Constrained by the acts of the Plaintiff, Defendant No.1 & 2 filed a Civil Suit wherein injunction was passed in favor of Defendant No.1 and against the Plaintiff and an appeal thereon was withdrawn by the Plaintiff in view of the settlement arrived at between the parties.

  • Relying upon the admissions of the Plaintiff in FAO (OS) 60/2016, wherein the Plaintiff demanded salary from the Defendant showing that the Plaintiff was an employee of the Defendant No 2, and contended that with an educational qualification of B.Sc. LLB, the Plaintiff cannot have individually authored the number of books, and thus, the stand of Defendant No 1 & 2 in the written statement and counter affidavit that the Plaintiff is not the exclusive author but has written and compiled the books with the team members of Defendant No. 2 is probabilized.

  • The Counsel for the Defendant while admitting that the Plaintiff was a Director of the Defendant No. 2 when the books were written stated that the Plaintiff had a fiduciary duty as a Director which is greater than that of an agent and the ownership for the books vested in Defendant No 2 on whose behalf the Plaintiff and other team members authored the books.

Decision of the Court

 

  • While referring to Section 17 of the Copyright Act, 1957, the Court said that save and except proviso ‘c’ where a work is made in the course of the author’s employment under a contract of service or apprenticeship to which clause ‘a’ or clause ‘b’ does not apply the employer shall, “in the absence of any agreement to the contrary” be the first owner of the copyright therein.

  • However, the Court noted that the Defendants have not placed on record any material to show that the literary work was authored as a part of the duties and obligations of a Director of Defendant No.2. In this regard neither any agreement nor the articles or memorandum of association of the company has been placed on record. In the absence of any terms and condition describing that the literary work was also a part of the duties and obligations of the Plaintiff in her capacity as a Director of the Defendant No.2, the plea of the Defendants based on the decision of the Supreme Court in the cases of Ram Pershad vs. The Commissioner of Income-Tax[1] and V.T. Thomas vs. Malayala Manorama Co[2]. , cannot be accepted.

  • On the issue of fair use, the Court reiterated its stand in the case of The Chancellors, Masters and Scholars of University of Oxford & Others vs Rameshwari Photocopy Service & Others,[3] where the Division Bench of the Delhi High Court distinguished the use of the copyrighted work for the purpose of teaching/studies and for commercial purpose. In the present case the Defendants, after making the copies of the study material which is in the form of the books, is selling the same to the students. Thus, the activity of the Defendants is commercial and for the purposes of profit making.

  • In view of the above, Hon’ble Ms. Justice Mukta Gupta granted an interim injunction in favor of the Plaintiff and against the Defendants.

 

 

[1](1972) 2 SCC 696

[2]AIR 1989 Kerala 49

[3]2016 (235) DLT 409

 

 

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