Contemplating effectiveness of proposed amendments to Drugs and Cosmetics Rules in tackling the menace of deceptively similar trademarks

Trademark infrignement

The problems faced by brand owners and consumers who deal with trademarks that are identical or deceptively similar are well known. In most such cases, consumers may be end up buying one product thinking its another, leading to inconvenience. However, when such confusions occur in pharmaceutical products, it may not just be a matter of inconvenience, but could have far reaching consequences. This very problem of pharmaceutical products marketed under trademarks that are confusingly similar is sought to be addressed in India by an amendment proposed to the Drugs and Cosmetics Rules, 1945.

The proposed amendment may be attributed to the directions given by the High Court of Delhi in a suit 

between Curewell Drugs & Pharmaceuticals and Ridley Life Science, although Indian courts have dealt with many cases involving drugs bearing confusingly similar names. The draft proposes to introduce the below recited rules to address the issue of drugs bearing confusingly similar names.

“In case the applicant intends to market the drug under a brand name or trade name, the applicant shall furnish an undertaking to the licensing authority that such or similar brand name or trade name is not already in existence so that the brand name or the trade name to be used by the applicant shall not lead to any confusion or deception in the market.”

It is pertinent to note that, Section 17B of the Drugs and Cosmetics Act, 1940 empowers the drug licence granting authority, Drug Controller General of India (DCGI), to raise objections in case of drugs bearing confusingly similar brand names, which is also pointed out by the Court. In view of said section, it is not clear how the proposed amendment to the Rules further empower DGCI to proactively tackle the problem.

One may argue that it is not the lack of provisions in appropriate statutes to deal with the problem, rather it is the lack of procedures and infrastructure to effectively implement the provisions, that has led to the problem not be effectively addressed. The Court in fact recognises this and has issued directions for consideration by the authorities to tackle the problem effectively. The directions are listed below.

  • Creation of a secured platform, to be under the supervision of the DCGI, which is accessible to all State FDAs, both for access of data and for uploading of data.
  • Creation of a “master electronic database” of all the approved brand names for manufacture and sale of drugs issued both by the DCGI and the State FDAs and making the same available to all state FDAs and Drug controllers through a secured platform. The list to be maintained and made available both brand wise and manufacturer wise, on the secured platform.
  • List of registered trade marks under Class 5 for pharmaceutical and medicinal preparations be obtained from the Controller General of Patents, Trade marks and designs and be made available to the approving authorities at the Central level and State level.
  • Access to the data be given to Drug Inspectors/Drug Controllers across the country;
  • Drug Inspectors/Drug Controllers to conduct regular and periodic inspections as per the Act and the Rules to ensure that the drugs that are being manufactured in a particular unit are duly licensed for. The reports of the said inspections to be submitted through the secured platform;
  • Periodic and regular reports of drug inspectors should be compulsorily submitted to the respective licensing authorities on the secured platform and a mechanism be set up for review of the said reports at the State level;
  • Periodic meetings ought to be held at the central level, to review the status of manufacture and sale of drugs across the country, under the aegis of the DCGI;
  • Strict action in accordance with law ought to be taken against those manufacturers who manufacture drugs without licences, who indulge in adulteration or contamination of drugs etc. A periodic report as to the number of actions taken, ought to be uploaded on the secured platform of the DCGI.    

Implementing procedures and developing technology platforms in line with the directions above is certainly the way forward if the authorities wish to tackle the problem proactively and effectively. We certainly hope that such long-term solutions, though time consuming and resource intensive, are implemented, given the serious consequence that may result from the problem of drugs being marked under deceptively similar trademarks.

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Crocs’ Litigation Brings Clarity About the Overlap Between Rights Conferred by Design Registration and Rights Against Passing Off Trademark

crocs

Protecting some of the core Intellectual Properties (IP) of a business using as many different forms of IP rights as possible might seem to be a logical thought process. While some of the IP, no matter how crucial, may only be protected using only one form of IP rights, there may be others that seem to have the potential to be protected using multiple forms of IP rights. One such IP that appear to have the potential to be protected using multiple forms of IP rights is aesthetic design.

Designs that are solely judged by the eye are primarily protected by way of design registration. Generally, design of a product although appealing to the eye, the design itself does not serve the putobleronerpose of identifying the product with a company. In other words, generally design of the product does not perform the function of identifying the source of the product, which trademarks do. However, there are instances when design goes beyond its normal function of being appealing or judged by the eye, to also identify the source of the product, which is the primary function of a trademark. Consider Toblerone’s triangle design of the product, which is recognized as a trademark. The triangle design of the candy can associate the candy with its source, and hence rightly protected as a trademark.

Statutes governing protection of trademarks in most countries, including India, recognize that designs of products can be trademark. However, if shape of a product is used as a trademark, then it is not considered a design in India. Section 2(d) of the Designs Act, 2000 excludes a trademark from the definition of “design”, which is protectable under the Designs Act. On the other hand, the Trademark Act, 1999 does not exclude a design registered under the Designs Act from being recognized as a trademark. Therefore, when a registered design is also claimed to be a trademark, then to harmoniously interpret the Designs Act and the Trademark Act, one of the below listed options may be adopted:

  1. design registration should be revoked; or
  2. registered design should not be considered a trademark.

In the litigation involving Crocs, the Court adopted the latter in its judgement. Crocs has design registration over the shape and configuration of a footwear and had attempted to restrain third party from infringing their design, which was not successful. The reasons for Crocs failure to get relief based on infringement of design is not discussed here, since the same is not very relevant to this article’s topic of interest. Crocs also attempted to restrain third party from copying their design on the ground of passing off. In response, the Court took the view that a registered design is not a trademark.

Although the Court has adopted the later of the above two options, I am inclined towards the former. In my view, any contention by the owner of the registered design that the design is a trademark should result in the revocation of the design registration. The design registration should be revoked since the Designs Act specifically states that a trademark is not considered a “design”. Notable, the Trademark Act, as discussed earlier, does not state that a shape of a product (design) cannot be a trademark on being registered as a design. Therefore, one can argue that the Designs Act and the Trademark Act contemplate a situation in which some registered designs over a period can acquire secondary meaning. Such a secondary meaning acquired by the design of the product enables the product to be associated with its source, which is the function of a trademark. Therefore, there can be situations in which a registered design transforms from being just a design, to a design that has the characteristics of a trademark. In the event of such transformation, the protection of the design within the Designs Act should terminate and the design should be accorded the status of a trademark. 

In conclusion, in the Indian context, till such time, if ever, a registered design is provided the protection of a trademark when the design acquires the trait of a trademark, it is advisable to decide beforehand whether a design is likely to be used as a trademark. In case the design is likely to be used as a trademark, then registering the design under the Designs Act may be detrimental to the interests of the owner of the design, since design protection is for a limited period and protection of the registered design as a trademark is unlikely.

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Updated manual of Indian Patent Office’s practice and procedure is expected soon

Open book on wooden table. Knowledge and education conceptual image.

The Indian Patent Office has released a draft manual of the Patent Office’s practice and procedure. The Office has sought suggestions on the draft manual from stakeholders. The updated manual once finalized will replace the existing manual. The manual provides guidance for effectively prosecuting patent applications at the Office, however, the manual does not have the force and effect of law. Nonetheless, the manual is considered important to anticipate the Office’s interpretation of various provisions of the statute, and fine tune patent prosecution strategy. We will be publishing a detailed analysis of the new manual once released.

The draft manual can be downloaded here. 

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Indian industrial design registration process is now completely online

efiling

The e-filing system previously allowed only filing of applications online for the registration of industrial designs. The upgraded e-filing system provides for filing of all the prescribed forms electronically. Therefore, the upgraded e-filing system can now be used for prosecuting the applications as well. With this upgradations, patent, trademark, copyright and industrial design applications in India can be filed and prosecuted using respective e-filing systems.

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Proposed amendment to Patent Rules has the potential to dilute improvements made so far

The Indian patent regime is infamous for its slow speed of processing patent applications. The Government has over the years taken several initiatives to address this issue, primarily by increasing the number of patent examiners. The initiatives have started showing positive results.

In terms of the actual statistics, as per the Ministry of Commerce and Industry, the pendency of patent applications awaiting examination has reduced from 204,177 in March 2017 to 172,488 as on February 2018. Further, the number of applications examined in the month of February 2018 was 6235 as against 3925 during the corresponding period of the previous year. Even though the percentage improvement in the number of applications examined monthly is significant, at the rate of 6235 applications per month, the backlogs are not going to be cleared anytime soon.

While the timeline for processing patent applications was improving, an immediate relief, by way of amendments to The Patents Rules, was made available to start-ups and those who select India as ISA or IPEA in a corresponding PCT application. The amendment provided for expedited examination of patent applications on request.

Under the expedited process, examination reports started being issued within a month or two, and lately within days, as against 4 or more years taken ordinarily. However, before we conclude that the patent office is completely equipped for speedy disposal of patent applications, we have to put the speedy disposal of the applications under expedited process in perspective. As per the 2016-17 annual report (“Report”), 38,578 requests for patent examination were filed, and the number of expedited examination requests stood at 135. Hence, at least in the year 2016-17, the patent office had to deal with a very small number of patent applications under expedited examination, and consequently the speed doesn’t necessarily reflect on the preparedness of the patent office to process a large number of requests for examination within comparable timelines.

The proposed amendment to the patent rules is aimed at enabling a much wider set of applicants to avail the benefit of expedited examination. The applicants, irrespective of nationality, who will be eligible to request for expedited examination, if the amendments were to come through, are listed below.

  1. (Eligible even now) An applicant who has selected India as the ISA or IPEA in a PCT application corresponding to the Indian application for which expedited examination is sought
  2. (Eligible even now) An applicant who is considered a “startup(refer Rule 2(fb))
  3. An applicant who is considered a “small entity” (refer Rule 2(fb))
  4. At least one of the applicants is a female, and the remaining applicants, if any, are natural persons
  5. An applicant who is considered a “government undertaking” (refer Section 2(h)), or is a similar entity in case of a foreign applicant
  6. An applicant who is eligible under patent prosecution highway

In our view, enabling the listed new category of applicants to request for expedited examination will result in workload, which will substantially limit the ability of the patent office to examine applications under expedited process at the speed at which the office is examining at present.

Consider small entities, who will be eligible. Although we do not know how many applicants have claimed small entity status while filing applications, we believe it is a significant number. Once the amendments come into force, at least a sizable number of applicants, who have claimed small entity status, and have been awaiting examination, might request for expedited examination. Hence, there is likely to be a spike in the number of expedited examination requests the office may receive soon after the introduction of the amendments. Not to forget the new applications that will be filed by small entities, who are likely to request for expedited examination, consequently adding to the queue of applications awaiting expedited examination.

Further, the number of applications awaiting examination, who have at least one female applicant, is also not know. The patent office had started collecting gender data of applicants some time back, and the patent office may have some extrapolated estimate of pending applications which have at least one female applicant. However, our guess is that it is a much smaller number compared to small entities.

Regarding government undertakings who may become eligible, might again add a much smaller number to the queue of expedited examination requests, as compared to small entities. We assume that foreign government undertakings may have filed fewer applications in India, and their inclination to file in future as well may be limited. Hence, it is mostly Indian government undertakings filing for patents in India. Considering that, as per the Report, Indian applicants filed 13,219 (30%) out of 45,444 applications in 2016-17, applications filed by government undertakings out of the 13,219 applications may relatively be a small number. Further, whether government undertakings will consider spending INR 60,000 for expedited examination instead of INR 20,000 for ordinary examination is yet another question, and in our view, very few may be willing.

Even though the inclusion of female applicants and government undertakings may not add a substantial number to the queue of expedited examination requests, we believe that the applicants who will become eligible under patent prosecution highway may add a substantial number. Even though at present India doesn’t have patent prosecution highway arrangement with any country, an arrangement with Japan is likely to take shape in the near future.

As per the Report, Japanese applicants filed 4,275 applications out of 45,444 applications filed in 2016-17, which is about 9.4%. As per an estimate, allowance rate in Japan is around 75%. Therefore, 75% of the nearly 4000 applications, i.e 3,000 applications, filed by Japanese applicants may become eligible. Further, assuming at least a 4 year waiting time in India to receive an examination report, and around a 1 year turnaround time to receive examination report in India, around 9,000 applications from Japanese may become eligible the moment the amendment is introduced.

In our view, even if 20% of the small entities and applicants eligible under patent prosecution highway were to request for expedited examination, it would cripple the patent office’s ability to examine applications at the rate the office is examining applications under expedited process.

In conclusion, the processing time of expedited examination requests is likely to be significantly impacted by inclusion of small entities and applicants eligible under patent prosecution highway. Start-ups, who have been benefiting from the expedited examination of their applications may no longer be able to get patents granted within a short period. In case the number of expedited examination requests entertained by the patent office is restricted to a certain number, then applications from start-ups may end up being a small percentage of the restricted number of applications. It may be wise to concentrate on reducing the backlog and the time taken to issues first examination reports in the ordinary course, before adding additional burden on the patent office by making a larger category of applicants eligible to apply for expedited examination.

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Supreme Court setting aside the order of the Division Bench results in Monsanto’s patent still being valid

cotton

In a judgement passed by the Supreme Court of India on January 08, 2019, an order of the Division Bench of the Delhi High Court was set aside. Earlier, the Division Bench’s order had held a key patent of Monsanto invalid. The patent is key to Monsanto’s Bollgard II Bt cotton business vertical. The Supreme Court primarily set aside the Bench’s order because the patent was held invalid in the absence of a trial, and the Supreme Court bought into the argument of Monsanto that it had not waived its rights for a trial in the matter of validity of its patent. Therefore, it is important to note that Supreme Court did not scrutinize the patent in question to declare the patent valid. The question of validity of the patent is likely to be dealt with in a trial court, and eventually the Supreme Court, given the stakes.

The suits concerning the current patent, and its eventual outcome will be extremely important to the biotechnology industry, and more specifically to agro-biotech industry. The decision on validity of the patent will have a major impact on what is considered patent eligible subject matter in the biotech industry. The decision may also hugely impact claim drafting and IP strategy that may be adopted to protect subject matter comparable to the one claimed in the patent.

The patent includes two sets of claims, 1-24 and 25-27. The first set of claims, 1-24, cover a method of producing a transgenic plant, whereas the second set covers a product, viz., a nucleic acid sequence. The independent method claim 1 includes the step of incorporating a Nucleic Acid Sequence (NAS) into the genome of a plant. The independent product claim 25 on the other hand claims the NAS. The method claim targets those companies, which prepare donor seeds that have NAS, and such companies are fewer in number. The claims which are relatively of substantial commercial value are the product claims 25-27. The product claims target those companies who prepare hybrid seeds, which are derived from a process involving the donor seeds comprising the claimed NAS. The hybrid seeds will include the NAS, and therefore read on the product claim.

While the validity of the process claim may be questioned, the parties who are up against Monsanto are more interested in invalidating the product claims. We will discuss later on in the article about the far-reaching impact of the product claims in question. The independent product claim 25 is reproduced below.

25. A nucleic acid sequence comprising a promoter operably linked to a first polynucleotide sequence encoding a plastid transit peptide, which is linked in frame to a second polynucleotide sequence encoding a Cry2Ab Bacillus thuringiensis 8-endotoxin protein, wherein expression of said nucleic acid sequence by a plant cell produces a fusion protein comprising an amino-terminal plastid transit peptide covalently linked to said 5-endotoxin protein, and wherein said fusion protein functions to localize said 5-endotoxin protein to a subcellular organelle or compartment.

The first part of the claim, appearing before the expression “wherein”, includes elements of the product (NAS), and the second part of the claim recites the consequence of its use.

The validity of the patent is challenged based on the provisions of § 3(j) of The Patents Act, 1970 (“Act”), which excludes patenting of plants and animals in whole or in part, seeds, varieties, species, and essentially biological processes for production or propagation of plants and animals. However, said section allows patenting of microorganisms.

The argument used to challenge the validity is that NAS by itself are inert and inanimate, and its only use is when the NAS is incorporated into a plant genome to form a seed or a plant, and seeds and plants are excluded subject matter.

We agree with the contention that NAS by itself are inert and inanimate, and its only use is when the NAS is incorporated into a plant genome to form a seed or a plant. However, we are not convinced that the Act, as it stands, allows for patent to be rejected or invalidated based on such contention.

In the above referred contention, it appears that it is not the subject matter of the claim, which is scrutinized to check whether it falls within the scope of excluded subject matter. Instead, the industrial application (which is not necessarily the subject matter of the claim) of the subject matter of the claim is scrutinized to check whether it falls within the scope of excluded subject matter. In our view, the subject matter and not the industrial application (when not considered part of the claim) of the subject matter, should be scrutinized to reject or invalidate a claim based on provisional of excluded subject matter.

We propose to use a few analogies to demonstrate the faults in the argument that a claimed subject matter should be classified as being within the scope of excluded subject matter if its only use or industrial application falls within the scope of excluded subject matter. In the first analogy, consider a tool that is developed for performing surgery. In this case the tool by itself is inert and inanimate, and its only use is in a surgical process, which is excluded subject matter under § 3(i). In another analogy, consider a pharmaceutical product that is developed to fight cancer. In this case again, the product by itself is inert and inanimate, and its only use is in a medical process (consumption of the drug as per a prescribed dosage), which is also excluded subject matter under § 3(i). Going by the argument based on “use”, both the surgical tool and the pharmaceutical product should be considered to fall within the scope of excluded subject matter. Therefore, if a patent is held invalid on the basis of “use”, there would be practically a blanket ban on patenting of pharmaceutical products, which is clearly not the legislative intent, given the amendments made to the Act in the past to comply with TRIPS.

Having made arguments in favour of upholding the validity of the patent, we now look at the challenge upholding the validity of the patent. At the outset, in our view, we believe that the patent is valid based on the provisions of the Act, since the subject matter as claimed doesn’t fall within the scope of excluded subject matter. It is important to note that it is the NAS that is claimed, and not the seed. Assuming that the claimed NAS is patent eligible, consider the potential infringers. Primarily, the hybrid seed companies who produce and sell seeds that include the claimed NAS are potential infringers, and so are farmers who use such seeds. Therefore, at present the farmers are at the mercy of the patent owner, who has gone against the hybrid seed sellers (companies) and not the users (farmers). While it is certain that no company will make the mistake of filing patent suit against farmers in India, given how politically sensitive such an action would be, there is noting in the Act that stops the patent owner from going against farmers.

Now the question is whether there is legislative intent expressed in the Act to shield farmers from patent suits. In our view, § 3(j) indirectly expresses the legislative intent to shield farmers from patent suits, to the extent the legislature could envisage patent threats to farmers. However, in our opinion, the protection offered by the language used in § 3(j) is inadequate. The exposure of farmers to patent suits is well known by examples in foreign countries, and the legislature should make amendments to the Act at least now, instead of assuming that patent suits are unlikely to be filed against farmers in India.

The amendment to shield farmers could be made by altering the language of § 3(j). However, we believe that such an amendment could lead to more complications. Instead, the Act may be amended, say by adding a clause to § 47, to exclude certain acts by farmers from being considered patent infringement. The reason why we propose to add a clause to exclude farmers, rather than amend the language of § 3(j), is because, we believe that it is still the legislative intent to encourage inventions of the nature claimed in the patent. Such an encouragement is possible only when hybrid seed companies, like the ones Monsanto is going after, are still within the ambit of patent infringement. An amendment to § 3(j) may exclude both the hybrid seed companies and the farmers from patent infringement, whereas it may be legislative intent to only shield farmers.

Another concern in holding the patent valid is the impact on the price of such seed. A valid patent means, the seed companies will have to pay licencing fee to the patent owner, and it is eventually the farmer who pays for it all. However, while the Act has provisions to impact pricing, invalidation of the patent is certainly not the answer to pricing concerns. The government is and continues to regulate trait value to be paid to patent owner, and we believe is the right approach to tackle pricing concerns.

In conclusion, we believe that the subject matter as claimed doesn’t fall within the scope of excluded subject matter, and hence the validity of the patent should be upheld. The seeds produced by seed companies, and therefore the seed companies, should be within the ambit of patent infringement. Further, The Patents Act, 1970 should be amended to introduce a clause to shied certain acts of framers from patent infringement. Additionally, price control of certain farm inputs should be carried out by calibrating trait value, as is being done currently.

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Burger King Corporation vs Techchand Shewakramani & Ors

The plaintiff (Burger King) is a US based Company while the defendants (Techchand Shewakramani) are based in Mumbai.

The Plaintiff sought permanent injunction against the defendants with respect to their trademarks “Burger King” and “Hungry Jacks” in the Delhi High Court.

The Defendants filed the present application praying for the rejection of the plaint on the grounds of lack of cause of action and lack of territorial jurisdiction.

The defendants contended that the Delhi High Court did not have the jurisdiction to entertain the suit, given Section 134 (2) of the Trade Marks Act which reads as follows:

“Suit for infringement, etc., to be instituted before District Court.—

(1) No suit—

(a) for the infringement of a registered trade mark; or

(b) relating to any right in a registered trade mark; or

(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff’s trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

(2) For the purpose of clauses (a) and (b) of sub-section (1), a “District Court having jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain. Explanation.—For the purposes of sub-section (2), “person” includes the registered proprietor and the registered user.” (emphasis added)

The plaintiffs have not only invoked section 134 of the Trade Marks Act, but have also relied on Section 20 of the Civil Procedure Code.

“Section 20: Other suits to be instituted where defendants reside or cause of action arises.

Subject to the limitations aforesaid, every suit shall be instituted in Court within the local limits of whose jurisdiction-

(a) the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain; or

(b) any of the defendants, where there are more than one, at the time of the commencement of the suit actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or

(c) the cause of action, wholly or in part, arises.”

On examining various precedents on the issue, the Court has concluded that either Section 20 of CPC or Section 134 of Trademarks Act can be invoked when it comes to deciding the jurisdiction for initiating a trademark infringement suit. In other words, the referred section of both the statutes don’t override each other, instead they complement each other, thereby allowing the plaintiff to explore multiple options while deciding on the court in which the suit may be filed. Similarly, the CPC provision can also be invoked for initiating copyright infringement suits.

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Glenmark Pharmaceuticals Ltd. Vs Galpha Laboratories Ltd. & Ors

Law gavel on white.

In an unprecedented order, the Bombay High Court has imposed that the infringing party to a suit, i.e., Galpha Laboratories Ltd., pay a sum of Rs. 1.5 Crores as cost.

The Court came to this conclusion after noting that Galpha Laboratories was a habitual offender and they had had multiple suits of infringement against them. Added is the fact that in 2017, the Central Drugs Standard Control Organization (CDSCO) had published a list of drugs which were “Not of Standard Quality/Spurious/Adulterated/Misbranded”. Five products on that list belonged to Galpha Labs. In this light, the Court observed that Galpha had no respect for the law and was a repeat offender.

The court noted that the present case was a perfect example wherein pharmaceutical companies had their judgment clouded by profits and turnovers which resulted in acts that were detrimental to the public health/good.

Thus, when the Court imposed the heavy damages, it noted that had Galpha Labs been penalised heavily in its earlier acts of infringement, it would have acted as a dissuasive measure for future acts.

This order of the Court highlights the seriousness of the Judiciary with respect to the protection of Intellectual Property, and the gradual development from penalty to punitive justice.

The purpose of punitive remedies/justice is that the offender should pay for his crimes in a manner that is proportionate to the offence.

Galpha Laboratories had amassed huge profits through repeated infringement of popular brands of medical goods. Despite various courts orders, they were audacious enough to continue with the acts because the fines/penalties imposed by the courts were a mere slap on the wrist as compared to the “illegal” profits they were making by duping the general public.

The present judgment hereby comes with a hope that pharmaceutical companies would think twice about branding spurious goods under infringing trademarks. The damages imposed upon the infringer is an actual deterrent factor not just for the infringer in the present case but for other companies engaging in such acts.

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Sanjay Kumar Gupta vs Sony Pictures Network India

Colorful letters forming the word copyright

Brief Facts of the Case

The Appellants contend that the Respondents should be held liable for infringement of Copyright of their concept. Appellants run a quiz show by the name of Jeeto while the respondents are proprietors of Kaun Banega Crorepati.

The Appellants claim that they’d floated their concepts to the respondents who in turn breached their confidentiality and copied their concept for their show.

The entire claims of the Appellants rests on the argument that they have copyright over the concept of involving at-home players in the quiz show.

Issues Raised

There are, inter alia, two main issues raised by the Trial Court in the present case.

Firstly, whether the copyrights claimed by the plaintiff in the concept of "Jeeto   Unlimited"   is   an   original work for the purpose of the Copyright   Act,   1957?

Secondly, whether   the   plaintiff is entitled   to   a   decree   for infringement of his copyright   work?

Arguments by the Parties

The Appellants have based their claims on two broad arguments, i.e there was a breach of confidentiality on part of the respondents and that they (the Appellants) had copyright over the concept of Jeeto.

In support of their first argument, the Appellants put forth that they had floated the concept to the defendants who in turn had forced them to sign a waiver absolving them of any liability in case of disclosure.

In support of their argument, the Appellants pleaded that they presented this concept to the respondent who run and produce the popular game show “Kaun Banega Carorepati” (KBC). They allege that the Respondent had copied the concept which was presented by them in and hence violated the copyright of the appellants.

Further, they point out that there is certain similarity between the concept of 'Jeeto Unlimited' and KBC.

“1. Game will be played simultaneously with the contestant and the home audience.

  1. Home audience answers the same question that has been asked to the contestant
  2. Home viewer can participate by watching the television for questions and giving the answer through SMS/email
  3. Reward depends on the amount of money for which the question is being played
  4. Home Viewer will be selected through digital mode programming by the channel‟s technical team”

On the other hand, the Respondents have countered that the Appellants had no Copyright over the concept used in Jeeto Unlimited. They have also asserted that there is substantial similarity between the two shows even though certain concepts are similar.

The Respondents point out the following distinctions between the two shows:

  1. Contestants in the Respondent’s show are selected on the basis of who can answer a question the fastest. Contestants in the Appellant’s show are selected through the lottery method.
  2. The games played by the contestants and the games played by the home-viewers do not overlap in the Respondent’s show. In the Appellant’s show however, the home viewers are invited to answer the questions posed to the contestant and is used as a hint or a “lifeline” by the contestant.
  3. The Respondent’s show is a pre-recorded event where home viewers get to watch the pre-recorded episode. In the Appellant’s show, the contestants and the home viewers play the game simultaneously.
  4. The games played by the contestant and the home viewers are separate, and their rewards are different as well in case of the Respondent’s quiz show. In case of the Appellant’s quiz show, the home viewer whose correct response was chosen by the contestant is rewarded by splitting the increase of monetary amount between the contestant and the home viewer.
  5. In the Respondent’s show the contestant is provided only one opportunity to answer the question correctly. In the Appellant’s show, the contestant is negatively marked for the first wrong answer, and the game ends on the second wrong answer.

Decision of the Court

The Court was quick to dismiss the first claim based on the findings of the Trial Court. The Appellants could not produce the alleged consent/waiver form nor did they make any effort to call for its production in court. The Court also took note of the fact that media houses have a general practice of signing such forms before meetings to ensure that should any broadcast/publication have contents similar to those discussed in the meetings, they won’t be held liable. Thus, it shows that the Appellants knew of the consequences before they signed such a form or attended such a meeting.

The Court has relied on the principles laid down in the Supreme Court case of R.G. Anand vs Deluxe Films. The Apex Court, in this case, avers that there can be no copyright in an idea, principle, subject-matter, themes, plots etc.

The stated that:

“..in law what is copyrightable is not an idea, principle, subject-matter, theme, plot etc but how such aspects are brought into a form of literary work or dramatic work or artistic work or musical work or cinematographic film or sound recording or actual live shows/performers rights or broadcasting rights….”

The Court relied on the fact that one of the witness of the Appellants that was produced in Trial Court had himself stated that the concept of audience/viewer engagement has been earlier used in various television programmes.

The Court relied on Section 16 of the Copyright Act, which states that:

“No person shall be entitled to copyright or any similar right in any work, whether published or unpublished, otherwise than under and in accordance with the provisions of this Act or of any other law for the time being in force, but nothing in this section shall be construed as abrogating any right or jurisdiction to restrain a breach of trust or confidence.”

In that light, the Court found that concept is not a subject matter of copyright. It is not a copyright work as provided envisaged in section 2(y) or Section 14 or Sections 37 to 39A of the Copyright Act.  The Court stresses that a concept cannot be a subject matter of copyright because a concept must be transformed into a  form of a literary work or dramatic work or musical work or artistic work or cinematographic work or sound recording or a performer’s right or a live show for it to have any Copyright protection in that particular work.

The Court also ruled that there is no averment that appellants are first in the world who have innovated such a concept of play along audience sitting at home. The concept of a play along audience sitting at home was already in public domain.

Conclusion

The concept of a quiz show is a concept which is otherwise well known – one can argue that it is an internationally popular form of quiz shows.

Thus, the Delhi High Court, in this instance, has only reiterated what the Supreme Court had already laid down in the case of R.G. Anand vs Deluxe Films.

New ideas and concepts spring from old ones. Granting of copyright protection to ideas and concepts would render creativity obsolete. Time and again, when this issue of copyright of ideas crop up, the Courts have understood the necessity of allowing creative freedom over ideas and protection over work.

Yet, we constantly have cases where one party alleges that they have the Copyright over an “idea” or a “concept”.

While this judgment upholds the law already laid down, what is needed is for the Courts to lay down guidelines to determine how concepts differ from work. The Courts need to give the term “concept” a concrete definition which can be used as a guideline in future cases to quickly determine whether copyright should exist or not.

We hope this article was a useful read. The judgment can be downloaded here. 

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Deceptively Similar Marks: Registration Allowed If Services/Goods are Different Although Within the Same Class

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Brief Facts of the Case

Karnataka Co-Operative Milk Producers Federation Ltd. (KMF), has been producing and selling milk and milk products, since 1985, under their mark ‘NANDINI’ which had been registered under Class 29 and Class 30.

M/S. Nandhini Deluxe is in the business of running restaurants since 1989 under the name ‘NANDHINI’ and had applied for the registration of the same.

The Deputy Registrar of Trade Marks had the application submitted by the restaurant chain and allowed for the registration for their mark ‘NANDHINI’ as well. The Intellectual Property Appellate Board (IPAB), however, set aside Deputy Registrar’s order, and the High Court confirmed the IPAB’s decision on the following grounds:

  • The mark ‘NANDINI’ (KMF) had acquired a distinctive character and was a well-known mark;
  • Products sold under the infringing mark ‘NANDHINI’ (Restaurant) were of the same classes as those under ‘NANDINI’ (KMF).
  • The use of the infringing mark is different only in one alphabet but with no difference in spelling or pronunciation in the local language and would very likely to cause confusion in the minds of public if allowed to be registered for the commodities falling in the same class;

In 2015, the proprietors of ‘NANDHINI’ (Restaurant) appealed to the Supreme Court against the decision of the High Court.

Arguments by the Parties:

Proprietors of ‘NANDINI’ i.e. KMF objected to the use of the mark ‘NANDHINI’ by the Appellants (Restaurant) on the grounds that:

  • It was deceptively similar to the mark of the respondent and was likely to deceive the public or cause confusion.
  • KMF had long and sustained use by the ‘NANDINI’ and had acquired a distinctive character and was well-known to the public.
  • The public associates ‘NANDINI’ with ‘NANDHINI’ because of phonetic similarity.
  • ‘NANDHINI’ was adopted by the restaurant chain to ride on the goodwill of trade mark ‘NANDINI’ (KMF).

Proprietors of ‘NANDHINI’ Deluxe objected that:

  • It was running the business of restaurant since 1989 and KMF had started using mark ‘NANDINI’ since the year 1985 only for milk and milk products and not for other products.
  • Goods and services of ‘NANDHINI DELUXE’ were totally different from that of the KMF and, therefore, there was no likelihood of confusion or deception among the public.
  • The monopoly under a Trademark only extends to the goods which are falling in a particular class and not the entire class of goods and the trade mark which is similar in nature can be registered for the goods which are falling within the same class but are not identical to those of the previously registered mark.

Court’s Ruling:

The Hon’ble Supreme Court granted the registration of the mark ‘NANDHINI’ by the restaurant on the condition that registration will not be given to them for milk and milk products.

The court relied on the following reasoning to determine whether a similar trade mark in respect of similar goods would cause deception and confusion in the minds of the users:

  • While the goods of both parties fall under the same classes (i.e. 29 & 30), the goods of the parties differ from each other.

One (NANDINI) was concerned with the production of only milk and milk products while the other (NANDHINI) dealt in fish, meat, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, edible oils and fats, salad dressings, preserves etc. Furthermore, ‘NANDHINI’ had also relinquished its claim for milk and milk products.

  • The nature and style of the business of the appellant restaurant and the respondent federation were altogether different. One (NANDINI) was a manufacturer of dairy products while the other (NANDHINI) ran a full-scale restaurant business.
  • There’s mere phonetic similarity as far as the word marks are concerned (i.e. NANDHINI/NANDINI). However, the trade mark with logo adopted by both parties are different.

The restaurant chain uses the word ‘NANDHINI DELUXE’ which is followed by the tagline ‘the real spice of life’ and a device of a lamp accompanying these words.

On the other hand, the milk federation only uses the word ‘NANDINI’ beneath a ‘Cow’ logo and is encircled by egg shape circle.

  • There is a difference in not just the visual appearance but even in their products. The manner of business is different. All of these factors make it difficult to imagine that an ordinary man would associate the goods of the Restaurant as that of the Milk Federation.
  • The restaurant had applied the trademark ‘NANDHINI’ in respect of goods which are used in the products/services of restaurant business. Said items do not strictly belong to Class 29 or 30. Other items necessary to run their business or render their services include stationery, furniture, utensils and crockery all of which do not fall under class 29 or class 30.

To quote the SC:

“One other significant factor which is lost sight of by the IPAB as well as the High Court is that the appellant is operating a restaurant under the trademark ‘NANDHINI’ and it had applied the trademark in respect of goods like coffee, tea, cocoa, sugar, rice, rapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry, spices, bill books, visiting cards, meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces, etc. which are used in the products/services of restaurant business. The aforesaid items do not belong to Class 29 or 30. Likewise, stationery items used by the appellant in the aid of its restaurant services are relatable to Class 16. In these circumstances, there was hardly any question of confusion or deception.”

Thus, the goods that are dealt with under the name ‘NANDHINI’ aren’t strictly under class 29 & 30. The milk and milk products, which are sold by the respondent under the trade mark of ‘NANDINI’, fall under Class 29 and Class 30 as per classification under Schedule IV to the Trade Marks Rules, 2002.

  • "Nandini/Nandhini” is a generic name, representing a goddess and a cow in Hindu mythology, and it is not an invented or coined word attributed to one party.
  • Referring to the judgement in Vishnudas Trading As Vishnudas vs The Vazir Sultan Tobaccoco. Ltd. JT 1996 (6), 366 1996 SCALE (5)267, it is stated that the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods especially if he is not using the said trade mark in respect of certain goods falling under the same class. Refusal under Section 11(2)(b) cannot be made because both the parties started using the marks within a span of 4 years of each other and both have built a considerable reputation with the state boundaries for themselves over the years.

 

Thus, on all these grounds, the Supreme Court laid down that the two marks are not deceptively similar.

Conclusion:

The Supreme Court thus allowed the mark ‘NANDHINI’ to be registered and used by the restaurant based on the ground that it (device/logo) is not deceptively similar to the mark ‘NANDINI’ (device/logo) used by the respondents.

On the face of it, this decision may seem logically sound because denying registration on grounds of mere phonetic similarity, when the marks are visually poles apart and the products under them are also different, would be a hindrance to a healthy competition.

However, it would also be pertinent to note that the court seems to have overlooked the fact that in this case, ordinary person would mean any person hailing from Karnataka or one who has lived here for a considerable amount of time. To anyone, from any other part of the country, these marks would most probably be similar and confusing.

The restaurant chain operated within Bangalore and no one outside Bangalore would have plausible reason to be aware of this chain. The Milk Federation sells its products within the region of Karnataka. Hence, any one residing here for a long time would not confuse them. But, to any ordinary person from outside the city or state limits, these marks would seem to be confusing or having the same origin.

To understand this conundrum better, we can look back at the case of London Dairy v Londonderry wherein the Bombay High Court ruled that mere phonetic similarity would not amount to infringement of any sort. One mark was famous for its ice cream products. The other for its boiled confectionary. Both were sweets, but one was not confused for the other because the former had built a reputation for itself nationally while the new one was distinctly viewed by the consumers as something different. The consumers were not confused because they could differentiate between the origin of the two marks and their underlying products.

We hope this article was a useful read. 

Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License