Our Associate & Mgr TMP, Ajaya Kumar V. discusses “No Prima Facie Case When The Plaintiff By Way Of Agreement Has Granted A Free License To Defendant Regarding Contents Of The Website” Recently, Sirona Hygiene Private Limited (“Sirona Hygiene”), an award-winning and widely popular company known for its unique products catering to women’s personal hygiene, approached the Hon’ble Delhi High Court, for violation of its copyright in its web pages. Allegedly, Sirona Hygiene has been registered as a seller on the e-commerce platforms Flipkart and Amazon since the year 2015. In furtherance of its association with the e-commerce platforms, Sirona Hygiene was granted specific numbers, namely, Flipkart Serial Numbers (“FSN”) and Amazon Standard Identification Numbers (“ASIN”). FSN and ASIN are unique numbers allotted by Flipkart and Amazon, respectively in order for sellers and consumers to identify and search for a particular product sold online by a particular seller. At the time of registration as a seller with Flipkart and Amazon, Sirona Hygiene created web pages corresponding to the FSN and ASIN numbers pertaining to its goods. Sirona Hygiene claims to have a copyright over these web pages. Sirona Hygiene was aggrieved that Flipkart/Amazon allowed other third-parties selling identical goods to use the web pages created by Sirona Hygiene by permitting them to tag other sellers with the FSN/ASIN numbers which had been allotted to Sirona Hygiene. Counsel representing Flipkart/Amazon denied all the contentions and to support their case brought to the notice of the court agreements which were entered between Flipkart/Amazon and Sirona Hygiene. As per the agreement Sirona Hygiene executed with Flipkart, it had agreed to grant a royalty free license to Flipkart in respect of the contents of the web pages. Further, as per the terms of the agreement and Flipkart’s seller policy, courts in Bangalore, were granted an exclusive jurisdiction to try any dispute which arose between Sirona Hygiene and Flipkart. Accordingly, Flipkart argued that the Delhi High Court did not have the requisite jurisdiction to hear the case against Flipkart. Similarly, as per the terms of the agreement executed between Sirona Hygiene and Amazon, Sirona Hygiene had agreed to provide Amazon a royalty free license in respect of its copyright in the web pages. Further, it was also argued that, as per the ASIN creation policy, third parties selling identical goods would be tagged with the ASIN number created by Sirona Hygiene or any other sellers registered on Amazon. Considering the nature of the agreements between Sirona Hygiene and Flipkart/Amazon, the court did not find any ground necessitating the grant of an ad interim injunction in favor of Sirona Hygiene. It would be interesting to see how in the light of the agreements executed between Sirona Hygiene and Flipkart/Amazon, Sirona Hygiene would contest the matter alleging the violation of its copyright in its web pages. Citation: Sirona Hygiene Pvt. Ltd. v. Flipkart Internet Pvt. Ltd. & Ors. – CS(COMM) 368/2020. Order dt. 9.9.2020

Our Associate, Madhurima Gadre discusses “Owner of the Popular SIGNATURE Whisky secures an Injunction against Use of a Similar Mark for Pan Masala” Recently, the Delhi High Court granted an ad-interim injunction in favor of United Spirits Limited (?Plaintiff?), owner of SIGNATURE-formative marks in respect of various alcoholic and non-alcoholic beverages, restraining Som Fragrances Pvt. Ltd. (?Defendant?) from using the mark SIGGNATURE in a similar stylization and color combination in respect of pan masala. The parties had previously reached a settlement, whereby the Defendant executed undertakings accepting the Plaintiff?s rights in its SIGNATURE-formative marks and agreeing to adopt a new label. As per these undertakings, if the Plaintiff ever finds the Defendant in breach of undertakings, the former would be at liberty to take recourse in the court of law and seek damages. Earlier this year, the Plaintiff came across two hoardings of the Defendant showing its pan masala products bearing the old label, which the Defendant had agreed to discontinue pursuant to the undertakings. Subsequently, the Plaintiff also came across the Defendant?s pan masala products, which featured the old label, available in the marketplace. Moreover, the Defendant?s website located at www.dbsiggnature.com also displayed these pan masala products featuring the old label. Accordingly, the Plaintiff filed the present suit on account of the Defendant?s breach of undertakings. The court noted that the Plaintiff had made out a prima facie case in its favor, and in case no ad-interim injunction is granted, the Plaintiff would suffer an irreparable loss. Further, the balance of convenience also lies in favor of the Plaintiff and against the Defendant, and hence, the court granted the ad-interim injunction until the next date of hearing. United Spirits Limited v. Som Fragrances Pvt. Ltd. & Ors., Delhi High Court decision of 7.10.2020 in CS (COMM) 420/2020

Our Associate, Parth Agrawal discusses “New .INDRP Rules – A Step in the Right Direction?” India has announced many changes to the rules governing proceedings under the .IN Dispute Resolution Policy (“INDRP”) administered by the Internet Exchange of India (“NIXI”). These changes came into effect on September 16, 2020. Some of the most pertinent changes in the INDRP are discussed below: This is certainly a much needed and reformative amendment towards digitalization. While this may be a welcome step to ensure impartiality of the INDRP proceedings, law firms which have lawyers who also act as INDRP arbitrators will now require these lawyers to give up their roles as INDRP arbitrators, else the firms will be barred from taking up INDRP matters. This is because the new code explicitly states that arbitrators are “barred from directly or indirectly engaging, soliciting, advising or providing any assistance to any parties in any INDRP domain dispute complaint”. With Indian courts allowing e-filing of suits, it is certainly a welcome development on the part of NIXI to amend the INDRP to meet the new normal. However, it will need to be seen how these new amendments are practically applied and how they affect the INDRP process.

Our Associate, Vishesh Kumar discusses “AAJ TAK – Sabse Tez in catching trademark infringers too” Recently the Delhi High Court, in Living Media Ltd. & Anr. v. WWW.NEWS-AAJTAK.CO.IN & Ors., granted an ad-interim injunction in favour of the plaintiff restraining the defendants from infringing the ‘AAJ TAK’ trademark. The plaintiff, one of India’s leading news networks, filed the present suit against the defendants to restrain infringement of its AAJ TAK word, design and composite marks. Living Media presented evidence of its turnover and advertisement expenses incurred by it to establish its extensive and continuous use. Further, Living Media also evidenced its registrations for its marks to establish its statutory rights. As per Living Media, the defendants have been using the mark “AAJ TAK” as part of their websites/domain names. In support of the above contention, Living Media also presented documentary evidence of the infringement. Living Media even went a step ahead and arrayed the domain name registrars (DNR’s) of the defendants’ websites as parties to the suit. In light of the contentions and evidence put forward by Living Media, the Delhi High Court held that Living Media has been able to establish a prima facie case in its favour. The Court also stated that the balance of convenience was also in Living Media’s favour given the fact that it had used the aforesaid trademarks extensively for its business. Given this, the Court directed the DNR’s to block/suspend the websites/domain names pertaining to defendants. Further, the court also directed the defendants to take down uploads from their social media platforms containing the infringing trademarks. Living Media was also granted liberty to serve a copy of this order to said social media platforms. Lastly, Living Media’s counsel contended that various such ‘rogue’ websites keep cropping up which infringe its statutory rights thus causing disruption to its business. Accordingly, the Court granted Living Media liberty to file an application seeking similar orders against such ‘rogue’ websites/entities at a future stage, if required. It is important to note that, over the years, the Delhi High Court has been amenable to granting leave to an aggrieved party for seeking future orders against ‘rogue’ websites. This is a welcome step in restraining intellectual property infringement since most ‘rogue’ websites hide behind a cloak of secrecy and are quick to come up with proxy websites when their domain name is blocked.

Our Associate, Vishesh Kumar discusses “No free ride on EXIDE – The Delhi High Court’s decision in Exide Industries Ltd. v. Krishna International & Ors” Recently the Delhi High Court, in Exide Industries Ltd. v. Krishna International & Ors., granted an ex-parte ad-interim injunction in favour of the plaintiff restraining the defendants from infringing the ‘EXIDE’ trademark. The plaintiff, one of India’s largest battery manufacturing and selling company, filed the present matter against the defendants to restrain the defendants from infringing upon the plaintiff’s EXIDE mark. The plaintiff contended that the EXIDE mark had been adopted by its predecessor in the year 1920 with respect to automotive batteries and has been in extensive use ever since. The plaintiff also provided documentary evidence of its registrations in Classes 9 and 11, its expenditure on sales and promotional activities as well as its revenue figures to evidence its extensive use. Further, the plaintiff claimed that such is the popularity of the EXIDE mark that the plaintiff decided to change its name to Exide Industries Ltd. As per the plaintiff, the defendants, who have been averred as related entities by the plaintiff, are using the EXIDE mark for the manufacture and sale of bulbs, power banks, coolants, engine oils, etc. The plaintiff further claimed that the defendants are selling the infringing products in a packaging identical to that of the plaintiff. In light of the above, the Delhi High Court held that the plaintiff had established a prima facie case and the balance of convenience was in its favour. Further, the Court stated that the plaintiff would suffer an irreparable loss in case no ex-parte ad-interim injunction is granted in its favour. Accordingly, the Court restrained defendants from using the EXIDE mark or infringing upon the plaintiff’s rights in any manner. It is important to note here that while goods of the plaintiff and defendant were not identical, the Delhi High Court gave due credence to the identical mark and packaging along with the fact that the plaintiff had been extensively using the EXIDE mark for decades and had invested substantial financial resources for the advertisement and promotion of the mark. Such decisions will act as a deterrent to businesses trying to piggyback upon the goodwill and reputation built by a prior user.

Our Associate, Madhurima Gadre discusses “AMUL Bids Farewell to Fraudulent Websites” Recently, the Delhi High Court restrained domain name registrars such as GoDaddy, Big Rock and Freenom from selling, and offering for sale, domain names including the term AMUL, with or without a prefix or suffix, in a suit filed by Gujarat Cooperative Milk Marketing Federation Ltd. (“GCMMF”). GCMMF claimed that it has received several complaints regarding fraudulent websites, which are using the well-known mark AMUL in their domain names, offering jobs, dealerships and distributorships, and asking for money to be deposited by individuals seeking these offers. The owners of the domain names resolving to such websites are thereby deceiving the public by creating an impression that their services are offered by GCMMF or its authorized representatives. GCMMF further claimed that it had previously made representations before the above-noted domain name registrars. However, despite these representations, the registrars continued to make available domain names including the term AMUL, with or without a prefix or suffix, leading to creation of more fraudulent websites. The court concluded that GCMMF had made a prima facie case in its favour. In doing so, the court rejected the contention of one of the domain name registrars that it is not aware of any technology which can ensure that the objectionable domain names are not made available for sale. The court noted that this contention was not acceptable since the domain name registrars must be operating its filters in this regard. It further observed that, if an ex-parte ad-interim injunction was not granted, GCMMF as well as the common public would suffer an irreparable loss. As such, the court granted an injunction restraining the above-noted domain name registrars from selling, and offering for sale, domain names including the term AMUL, with or without a prefix or suffix. It also directed the Department of Telecommunications, Ministry of Information Technology and National Internet Exchange of India to block access to the fraudulent websites and directed various banks to disclose details of the entities operating the fraudulent websites. Gujarat Cooperative Milk Marketing Federation Ltd. & Anr. v. AMUL FRANCHISE.IN & Ors., Delhi High Court decision dt. 28.8.2020 in CS(COMM) 350/2020

Our Associate, Anand Kumar discusses “Rules of Procedure Are Hand Maiden To The Ends Of Justice: IPAB” “The Rules of Limitation are not meant to destroy the rights of parties but to ensure that the parties do not resort to dilatory tactics” observed the Intellectual Property Appellate Board (IPAB), in an appeal preferred by the Pioneer Electronic Corporation (“Appellant”). The Appellant filed the appeal against an order of the Deputy Registrar of Trade Marks (“Registrar) dismissing the Applicant’s Interlocutory Petition (IP) on the ground that under the Trade Marks Rules, 2002 (Rules), [1] the appellant cannot be granted an extension of more than one (1) months time to file the evidence in support of application. The Appellant alleged that it has used the mark PIONEER since the year 1956. With an intent to protect its rights in the mark, it filed an application for registration in Class 9. The application was opposed by M/s. Suse Electronics. The Appellant failed to file evidence in support of its application within the statutory two (2) months of stipulated time period. Rather it requested an extension of time by one (1) month. Further, the Appellant filed an additional request for the extension of time by another one (1) month along with an IP. The Registrar, after more than ten (10) years, dismissed the IP and refused to take the evidence filed by the Appellant on record on the ground that, as per Rule 51 of the Rules, there cannot be an extension of more than one month’s time in aggregate and, therefore, any further request for extension of time should not be allowed. The IPAB observed that the Registrar had misconstrued the Trade Marks Act, 1999 (“Act”) and Rules. In order to appreciate the true purport of the law and intent of the legislature, the IPAB referred to Section 131 of the Act, which deals with discretionary power of the Registrar for ‘extension of time’ in all cases where the stipulated fixed time period has not been expressly provided under the Act. Though Rule 51 of the Rules provided for two (2) months’ time period with an additional one (1) months’ time period in aggregate for filing of the evidence in support of the application, there is no such definite period of time under Section 21 (4) of the Act. Thus, the IPAB clarified that the relevant provisions dealing with the ‘extension of time’ be read and construed harmoniously than in isolation. It further stated that the restriction of one months’ time prescribed under the Rules is directory in nature than mandatory. Stressing upon the intention of the legislature vis-a-vis Rule-51, the IPAB drew a distinction between the definite time period stipulated for filing of the Notice of Opposition/Counter Statement and non-definite time stipulated for filing of evidence in support of opposition and/or application, as the case may be, under Section 21 of the Act. Based on this distinction, the IPAB deduced that the intention of the legislature was not to limit the time to file evidence, but to give the Registrar discretionary powers to take on record the relevant evidence. The IPAB reiterated the law laid down by the Gujarat High Court in Wyeth Holding Corp. and Another v. Controller General of Patent, Design and Trade Marks & Others [2007 (34) PTC 1], that the time period for submission of evidence in support of opposition provided under the Rules is ‘directory’ and not mandatory. As regards the true meaning of the word “shall”, the IPAB observed that the Apex Court and various High Courts have held that the word “shall” ought to be construed, not in accordance with the language in which it is clothed, but, in the context in which it is used and the purpose it seeks to serve. The word ”shall” prima facie means mandatory, but the Court may ascertain the real intention of the legislature by carefully attending to the whole scope of the statute. Therefore, IPAB held that mere use of the word “shall” in Rule 51 is neither enough to treat the rule as mandatory, nor to assume that it overrides the mandate and spirit of Section 131 of the Act. Further, the IPAB observed that the rules of procedure are hand maiden to the ends of justice and should not be permitted to effect substantial justice. The Rules cannot limit the discretionary powers vested on the Registrar by the Act. It is a settled principle of law that where a rule, formulated under the Act, is contradictory to the Act itself, the Act shall prevail. Moreover, it is law of the land that if a refusal to condone delay results in grave miscarriage of justice, it would be a ground to condone delay. Based on the aforesaid principle of law, interpretation of statute and precedents, the IPAB noted that the delay of mere four (4) weeks on the part of the Appellant to file the evidence in support of application was warranted owing to the fact that the Appellant is a multi-national corporation having offices in different international jurisdictions. Consequently, the IPAB allowed the appeal and set aside the impugned order of the Registrar. Further, it also imposed a cost of twenty-five thousand rupees (Rs 25,000) on M/s. Suse Electronics for intentionally delaying the proceedings by raising false pleas. [1] Trade Marks Rules, 2002 has been repealed Citation: Pioneer Electronic Corporation vs M/s. Suse Electronics & Ors. – OA/52/2018/TM/DEL, order dt. June 18, 2020 by Intellectual Property Appellate Board.

Our Associate, Sandeep Gupta discusses “Astrazeneca AB & Anr. Vs. Micro labs limited” Recently, in a patent infringement suit filed by AstraZeneca AB & Anr., the Hon’ble Delhi High Court granted an ex-parte ad-interim injunction restraining the Defendant, Micro Labs Ltd., from making commercial use of the Dapagliflozin drug. The case of the plaintiffs is that they the owners of the patent IN 205147 (in short, ‘IN 147’), which according to the plaintiffs is the genus patent, and IN 235625 (in short, ‘IN 625’) is the species patent for the drug molecule Dapagliflozin. Plaintiffs sell the said drug under the brand name “FORXIGA”. The grievance of the plaintiffs is that the defendant filed an Abbreviated New Drug Application (ANDA) before the US Foods and Drugs Administration seeking tentative approval to market a generic version of the plaintiffs’ drug comprising Dapagliflozin under the brand name “FARXIGA,” The defendant was granted a tentative approval from the U.S.F.D.A. on its application in respect of the generic version. The plaintiffs were also informed (on an RTI) that the defendant has been granted approval to manufacture and sell Dapagliflozin. The plaintiffs alleged that their online research revealed that the defendant had manufactured and discovered publications concerning the manufacture and development of the drug Dapagliflozin. The plaintiffs further alleged that the defendant was also approaching medical practitioners to market the impugned drug. The plaintiffs submitted that the defendant has commenced manufacturing, selling, exporting, and listing the impugned/ infringing drug on online portals introducing as the supplier of this infringing drug in/from India. The plaintiffs further state that till the filing of the suit, no pre-grant or post-grant opposition was filed by the defendant, however, when a copy of the plaint was served on the defendant it filed for revocation of one of the plaintiffs’ patents. The counsel of the defendant, on instructions from its client, submitted that the defendant would not be manufacturing, marketing or selling the drug Dapagliflozin till the validity of one of the plaintiffs’ patents, i.e., 2nd October 2020. The defendant’s counsel further submitted that it has not listed the drug Dapagliflozin till date on any online portal. The Hon’ble High Court held that the plaintiffs have prima facie made out a case in their favour and in case no ex-parte ad-interim injunction is granted, the plaintiffs would suffer an irreparable loss. The balance of convenience also lies in favour of the plaintiffs. Consequently, an ex-parte ad-interim injunction was granted in favour of the plaintiffs. Citation – ASTRAZENECA AB & ANR. VS. MICRO LABS LIMITED – CS(COMM) 346/2020

Our Associate, Caroline Mathews discusses “Delhi High Court grants Disney dynamic injunction to block 118 rogue websites” On July 27th, the Hon’ble Delhi High Court granted Disney Enterprises (“Disney”) a dynamic injunction against several web sites that were downstreaming Disney films and entertainment programs without licenses. Disney contended that these websites were blatantly infringing upon its copyrights. Additionally, Disney impleaded various Internet Service Providers (“ISPs”), the Department of Telecommunications (“DoT”) and the Ministry of Electronics and Information Technology (“MEITY”) as defendants in order to ensure that such websites are blocked. The court held that such rogue websites were engaged in digital piracy and were causing irreparable damage to Disney’s commercial interest and statutory rights. The court restrained the rogue websites from hosting, streaming, reproducing, distributing any Disney-owned content and directed the ISPs, DoT and MEITY to block access to such rogue websites. Additionally, the court granted Disney the liberty to file any necessary applications to array other rogue websites discovered after the instant order, in order to ensure that Disney’s original content created was protected. It is assuring to note that the Delhi High Court is taking a strict stand against rogue websites to actively tackle online piracy. In the last year, the Delhi High Court has granted several dynamic injunctions since UTV Software Communications, Disney’s subsidiary, obtained India’s first dynamic injunction against online piracy in April 2019. These orders provide proprietors of valuable intellectual property an effective remedy to avoid engaging in multiple proceedings and curb the growing menace of online piracy. Citation: Disney Enterprises v. KimCartoon.to & Ors, CS(COMM) 275/2020, Order dated July 27, 2020

Our Associate, Aishwarya Pande discusses “Battle Over GLOW & HANDSOME: The ‘Un’fair Saga Continues” On July 6, 2020, a single judge of the Bombay High Court had granted ad-interim relief to Hindustan Unilever Limited (“HUL”) by directing Emami Limited (“Emami”) to give seven (7) days’ prior notice to HUL before initiating legal proceedings against HUL’s use of the mark GLOW & HANDSOME. [Read here] On July 16, 2020, Emami appealed against the decision of the single judge. Dismissing the appeal, a division bench refused to interfere with the order of the single judge and directed him to take up the matter for further arguments on July 27th. Aggrieved, Emami moved an application before the single judge, seeking to set aside the order of July 6, 2020. Emami argued that, as per the Trade Marks Act, 1999 (“Act”), a suit for groundless threats of legal proceedings cannot be initiated by a party if the party making threats has filed an infringement suit against the first party. Since Emami had already initiated a suit for infringement against HUL before the Calcutta High Court, the single judge’s order runs contrary to the Act. HUL agreed with Emami’s submission that the single judge’s order was in contravention to the Act. However, HUL argued that the order of the single judge requiring Emami to give a give seven (7) days prior notice would apply only to proceedings initiated in a civil court and not all proceedings, and only in relation to the mark GLOW & HANDSOME. As such, HUL requested the court to substitute its earlier order with a direction that Emami shall give at-least 5 (five) days’ notice to HUL before applying for any ad-interim/ interim relief in any other proceedings that Emami may choose to initiate against HUL in a civil court in relation to the GLOW & HANDSOME mark. The court agreed with HUL’s submissions and directed Emami to give five (5) days’ notice to HUL before moving to any civil court in any other proceedings against HUL’s use of the GLOW & HANDSOME mark. Emami contended that a similar order be passed against HUL, precluding it from initiating any legal proceedings in any civil court against Emami without giving a five (5) days’ notice. HUL argued that such an order would be unnecessary, given that HUL has not till date filed any legal proceeding against Emami. The court agreed and stated that in the event that Emami wishes to seek such relief, it should be done in the proceeding initiated by Emami against HUL before the Calcutta High Court.