Our Associate, Amay Jain discusses “Copyright Infringement and Passing off: Bombay High Court’s ruling in ITC v. Godfrey Philips” Recently, in ITC Limited v. Godfrey Philips (India) Limited[1], the Hon’ble Bombay High Court granted an interim injunction in favor of ITC Limited (“the Plaintiff”) in a suit for trade mark and copyright infringement, and passing-off. The Plaintiff claimed statutory and common law rights in its trademarks, including the mark FLAKE and other marks used on and in relation to its goods, namely cigarettes. The Plaintiff also claimed copyright in the original artistic work featured on the packaging of its cigarettes, consisting of a unique boomerang design with arcs of gold and red color. Aggrieved by Godfrey Philips (India) Limited’s (“the Defendant”) adoption of a similar packaging for its cigarettes, the Plaintiff filed the suit. The Defendant, on the other hand, contended that use of the word FLAKE in relation to tobacco and tobacco products is descriptive. As per the Defendant, FLAKE is a term that denotes the kind and quality of tobacco used in different tobacco products. The Defendant also stated that the Plaintiff had not been able to secure a single word mark registration for the word mark FLAKE. The Plaintiff argued that the mark FLAKE is not descriptive in relation to cigarettes. Further, the Plaintiff brought to the Court’s notice that the Defendant, despite opposing the Plaintiff’s trademark application for the FLAKE REFINED TASTE PACK label, had not disputed the Plaintiff’s proprietary rights in the boomerang design. Thus, the Plaintiff submitted that the Defendant was aware of the Plaintiff’s adoption and use of the FLAKE REFINED TASTE Pack and the boomerang device. The Plaintiff also argued that the Defendant’s departure from its earlier mark and packaging for its goods, which had been peacefully coexisting with the Plaintiff’s packaging, and adoption of the new packaging, deceptively similar to the Plaintiff’s packaging, was inexplicable. Furthermore, it was contended that since the Defendant had obtained trademark registrations for the mark SUN FLAKE it was estopped from alleging that the word(s) FLAKE and/or FLAKE PREMIUM are descriptive. The Defendant countered that the Plaintiff, itself, had used the word FLAKE in a descriptive manner in relation to tobacco related products describing some of its other products as flake tobacco. Further, to counter the Plaintiff as regards alleged approbate-reprobate action by Defendant with respect to descriptiveness of the mark FLAKE, the Defendant submitted that it had not applied for trademark registration of the mark FLAKE per se but for FLAKE-formative marks. As regards infringement of copyright, the Defendant submitted that the general get-up, placement of material and the material itself are totally different. The Court held that the test to be applied for copyright infringement is that of substantial copying, i.e. the degree of similarity which would lead one to say that the alleged infringing copy is a reproduction of the original having adopted its essential features and substance. Further, it held that, in assessing copyright infringement, small/trivial differences introduced ought to be ignored since every intelligent copyist will always introduce a few changes to set up a defense against infringement of copyright. The infringing copy does not have to be exact in every microscopic detail. In view of the above, and considering various similarities in the above-shown rival packaging, it was held that various elements of the Defendant’s packaging appeared to be a substantial copy of those of the Plaintiff’s packaging. Given the above, it was held that the Plaintiff was entitled to an injunction with respect to infringement of copyright. Further, it was held that, given the enormous goodwill and reputation of the Plaintiff’s FLAKE range of cigarettes and deceptive similarity of the impugned packaging, the Court found that the Plaintiff had also made out a prima facie case for an injunction against passing-off the products of the Defendant as that of the Plaintiff. Considering that the suit was at the interim stage and the Plaintiff had already made out a case for its rights to be adequately protected, the Court held that it would not consider whether or not the word FLAKE is descriptive. Therefore, an ad interim injunction was granted in favor of the Plaintiff with respect to copyright infringement and passing off. [1] COMM IP Suit No. 106 of 2020, Bombay HC, Order dt. July 27, 2020

Our Associate, Parth Agrawal discusses “Super Shine Industries restrained from using trademark and trade dress similar to Reckitt Benckiser’s mark and trade dress” Reckitt Benckiser India Pvt. Ltd, (“Reckitt Benckiser”) a subsidiary of the Reckitt Benckiser Group plc, one of the global leaders in health, hygiene and home products, owns various brands including COLIN and HARPIC. Recently, Reckitt Benckiser approached the High Court of Delhi seeking an injunction against M/s. Super Shine Industries (“Super Shine Industries”). Reckitt Benckiser pleaded that the Super Shine Industries has been infringing upon its registered trademark COLIN and imitating its trade dresses comprising of artwork in the label and packaging of its products. It also argued that Super Shine Industries is not only infringing its registered trademark and trade dress but is also passing off its goods as if they emanate from Reckitt Benckiser. Super Shine Industries claimed that its trademark is “SUPER SHINE” and that it is not in the business of manufacturing and selling glass and toilet lavatory cleaners. It went on to state that the screenshots from its website relied by Reckitt Benckiser are old and the trade dresses in question are not in use presently. Reckitt Benckiser contended that, even if the infringing mark and trade dresses are not in use presently, Super Shine Industries has made huge sales from the infringing packaging and therefore, sought rendition of accounts to calculate damages. At the interim stage, the court noted that, Reckitt Benckiser has made prima facie case in its favour and the balance of convenience also appears in its favour. The court, also noted that, if an injunction is not granted, it will jeopardize the statutory and commercial interests of Reckitt Benckiser, and granted an interim injunction until further orders. It is important to note that the court disregarded Super Shine Industries’ plea that the infringing mark and trade dresses were not currently in use and granted the interim injunction. Courts in India have become more receptive to the idea of granting damage, be it punitive or compensatory, in cases of IP infringement. The concept of awarding damages becomes important as it not only acts as a deterrence on the infringer but also helps in compensating the claimant for its loss. It would be interesting to see if the court, pursuant to the trial, directs Super Shine Industries to furnish its books of accounts and requires it to pay damages to Reckitt Benckiser.

Our Associate, Caroline Mathews discusses “Merck Obtains Ex-Parte Ad-Interim injunction” Recently, Merck Sharp & Dohme Corporation (“Plaintiff”), filed a suit against Kepnic Pharmaceutical (“Defendant”) for infringement of its drug Sitagliptin. The Plaintiff, the registered owner of the patent resulting in the formulation of Sitagliptin, sold the product under the brand name JANUMET. Additionally, the Plaintiff contended that it had filed numerous lawsuits filed before the court in which its claim to the patent was upheld and it was also granted a certificate of validity. A representation of the Plaintiff’s product is shown below: n June 2020, the Plaintiff became aware of the manufacture and sale of the KEPSIMET-branded products with the formulation of Sitagliptin through a patient. As per the Plaintiff, the KEPSIMET drug was being manufactured and sold by the Defendant who had already procured a license for the manufacture of the drug. Aggrieved by this, the Plaintiff moved to court seeking a permanent injunction along with an application for the grant of an interim injunction. The court took into consideration the Plaintiff’s patent resulting in the formulation of Sitagliptin, the Plaintiff’s numerous lawsuits in which its claim to the patent for the drug Sitagliptin was upheld and the Plaintiff’s suit wherein it was granted a certificate of validity by this court. Based on this, the court concluded that the Plaintiff’s has made a prima facie case and granted an ex-parte ad interim injunction. Citation: Merck Sharp & Dohme Corp. & Anr. v. Kepnic Pharmaceutical, CS(COMM) 271/2020, Order dated July 23, 2020

Our Associate, Abhilasha Rathore discusses “Export of a patented product in commercial quantities by a non-patentee amounts to infringement of patent rights” Recently, the Hon’ble Delhi High Court, in Bayer Intellectual Property GmbH & anr. v.Titan Laboratories Pvt. Ltd., reemphasized the need for protecting the interests of a patent holder. Bayer Intellectual Property GmbH (“Plaintiff”) was the owner of a valid and subsisting patent that covers and claims the compound RIVAROXABAN. The Plaintiff’s patent for the product RIVAROXABAN was registered in several countries worldwide, including in India. The Plaintiff was importing RIVAROXABAN through an Indian company under the trade mark XARELTO. The Plaintiff alleged that Titan Laboratories Pvt. Ltd (“Defendant”) had not launched the product RIVAROXABAN in India, but was exporting it from India albeit under another brand name MEZOSER-S. Moreover, the Defendant had also listed RIVAROXABAN tablet on its website as one of its anticoagulant products. The Plaintiff alleged that these acts amounted to infringement of the patent owned by Plaintiff in the product RIVAROXABAN. The High Court held that the Defendant was exporting the product RIVAROXABAN in finished form and in commercial quantities, and that such export would not be protected by the provision of the law on patents that states circumstances in which unauthorized use of a patented product would not amount to patent infringement. Use by the Defendant during the course of export would be considered as use in India. Accordingly, the court held that a prima facie case was made out by the Plaintiff and that the balance of convenience was in favour of the Plaintiff. Therefore, the court granted an ex-parte ad interim injunction against the Defendant for use of the RIVAROXABAN product. As per the law governing patents in India, a non-patentee in specified circumstances, can be permitted to use, make, construct or import a patented invention. One such permissible purpose is when such acts are solely for uses reasonably related to the development and submission of information required under any law for the time being in force and regulating the manufacture, construction, use, sale or import of any product in India, or any other country. Therefore, as long as a non-patentee uses the patented product for this limited purpose, he cannot be held liable for infringing the rights of the patent holder.

Our Associate, Vishesh Kumar discusses “Balancing commercial and research interests in a patent – The Delhi High Court’s judgment in Pfizer Inc and Ors. v. Shivalik Rasayan Ltd” Recently the Delhi High Court, in Pfizer Inc and Ors. v. Shivalik Rasayan Ltd.., granted an ad-interim injunction in favour of the plaintiffs restraining the defendant from making commercial use of the plaintiff’s drugs, namely Palbociclib, Sunitinib and Axitinib. The plaintiffs, a multinational pharmaceutical giant, filed a suit against the defendant praying for an injunction and damages for infringement of patents for the drugs Palbociclib and Sunitinib. As far as position regarding Axitinib is concerned, the plaintiffs contended that the patent had expired. Consequently, the plaintiffs were only claiming damages for actions of the defendant. In support of its contentions, the plaintiffs filed documentary evidence, including screenshots from the defendant’s website. The defendant contended that it had not made any commercial use of the patents. Use by the defendant was solely for research purposes. The plaintiffs, refuting the above argument, contended that, as per the website of the defendant, approximately 250kgs of Palbociclib was exported out of the country. Such a huge quantity could not be strictly for research purposes. It was further argued that, assuming that the defendant did actually export the Active Pharmaceutical Ingredient (API) for research purposes, it would have to follow the regime laid down by the division bench of the Delhi High Court in Bayer Corporation. In this case, the Delhi High Court on laid down the following factors to determine whether use was reasonable and strictly for research purposes (1) The patent granted; (2) The nature of the product or elements sought to be exported; (3) The details of the party or party importing the product; (4) The quantity sought to be exported; (5) Other particulars with respect to the end use of the product, to establish that it is solely for research and development of information to regulatory authorities in the other country; (6) All particulars regarding the relevant regulations, covering the kind and scope of inquiry, including the quantities of the product (i.e., the patented product or compound, API or fine chemical needed); (7) If the regulations are in a language other than English, an authentic English translation; (8) Appropriate interim order, including undertaking by way of affidavit to compensate the plaintiff in the event the suit was to be decreed and the extent of such monetary compensation; (9) If necessary, verification through the Indian mission (and its trade division) abroad regarding the authentication of the third party and/or its facilities abroad; (10) If it is held by the court that the exporter is not involved in sale or export of any patented product, but a generic article, unprotected by patent law, when denying relief, suitable restitutionary relief should be awarded to the defendants in monetary terms, to preclude litigation that prevents trade or competition. In view of the above, the Delhi High Court, restrained the defendant from making any commercial use of the APIs concerning the drugs of the plaintiffs. The Court held this to be a reasonable order since the defendant had already taken the stand that its use was not for commercial purposes. Further, the Court held that if the defendant does wish to export the APIs for research purposes, it would need to follow the regime set forth in Bayer Corporation. The judgment of the Delhi High Court not only follows the prior precedent, but is also an attempt by the Court to strike a balance between the commercial rights vested in the holder of a patent and the conditions contained in the Indian Patent Act which allow use of the patent for experiment or research. This is clearly in line with the intent of Indian patent law that intends to vest exclusive rights in a patent holder without compromising on further research and development on the subject matter of such patents. Citation – PFIZER INC AND ORS v. SHIVALIK RASAYAN LIMITED – CS(COMM) 257/2020

Our Associate, Sandeep Gupta discusses “Delhi High Court Injuncts User of Three-Letter Mark” Recently in two separate suits for infringement of trade mark and passing-off filed by USV Private Limited, the Delhi High Court granted ex-parte ad-interim injunctions against unrelated parties, Akme Biotec and Paksons Pharmaceutical Pvt. Ltd. USV alleged that it is the registered proprietor of trade marks M.V.I., M.V.I. AA, M.V.I., VI-SYNERAL and VISYNERAL for multivitamin infusions. It contended that Paksons was using Multi Vitamin Infusion and Akme Biotec was using M.V.A., both for identical goods, namely, multivitamin infusions. Therefore, as per USV, the defendants were, severally, liable for infringement and the tort of passing-off. The rival marks are shown below: Plaintiff’s Product Paksons’ Use Akme’s Use It was USV’s contention that, in Paksons’ case, the use of Multi Vitamin Infusion with the emphasis on the first alphabet of each word and the enlargement of the letters M, V and I would cause consumers to mistakenly believe that Paksons’ goods emanated from USV. In the case of Akme Biotec, the Plaintiff contended that the mark M.V.A. would ride on the goodwill and reputation generated by its registered trade marks. In both cases, the Court ruled that a prima facie case has been made out and balance of convenience also lies in favour of USV. Accordingly, ex-parte ad-interim injunctions were granted restraining the defendants and others from using the above-noted marks or any other marks deceptively similar to the USV’s marks. USV Private Limited v. Akme Biotec, [CS(COMM) 219/2020] and USV Private Limited v. Paksons Pharmaceutical Pvt. Ltd., [CS (COMM) 220/2020] order dt. 3.7.20

Our Associate, Aishwarya Pande discusses “An Un ‘Fair’ Battle Over GLOW & HANDSOME” Two of India’s cosmetics giants, Hindustan Unilever Limited (“HUL”) and Emami Limited (“Emami”), are engaged in a trade mark tussle over the names of their men’s cream brands, GLOW & HANDSOME and EMAMI GLOW & HANDSOME. Emami took objection over HUL’s announcement regarding the rebranding of its men’s fairness cream brand from MEN’S FAIR & LOVELY to GLOW & HANDSOME. Emami issued statements in various newspapers, inter alia, threatening to initiate a legal action against HUL for violating Emami’s rights in its mark EMAMI GLOW AND HANDSOME. A comparison of the rival marks is shown below: HUL’s Mark EMAMI’s Mark Consequently, HUL approached the Bombay High Court seeking an injunction against what it called Emami’s groundless threats in respect of the HUL’s use of its above-noted mark. HUL prayed for a limited relief that Emami should be required to give a seven (7) days prior notice to HUL before initiating any proceeding against HUL’s use of the GLOW & HANDSOME mark. HUL contended that it is the prior adopter of the mark GLOW & HANDSOME and had also filed a trade mark application for the aforesaid mark in September 2018. This application was refused by the Trade Marks Registry. However, an appeal against the decision of the Learned Registrar is pending before the Intellectual Property Appellate Board. Further, on June 25, 2020, HUL filed another application for the mark GLOW & HANDSOME Design (shown above) in Classes 3 and 5. Moreover, HUL stated that it has advertised its product bearing the GLOW & HANDSOME mark across the country through print and social media. On the other hand, Emami has filed a trade mark application for the mark EMAMI GLOW & HANDSOME Design on June 25, 2020, but has not used the mark till date. Under the circumstances, the Court came to a conclusion that HUL is a prior adopter of the mark GLOW & HANDSOME and has advertised it across the country. On this basis, the Court held that grant of a limited relief, as sought by HUL, is justified. No harm or prejudice will be caused to Emami by grant of such relief to HUL. As regards the statements issued by Emami against HUL’s use of the GLOW & HANDSOME mark, the Court stated these statements amounted to threats. However, whether these were unfair/groundless or not will have to be decided after hearing both sides. Accordingly, the Court directed Emami to give a seven (7) days prior notice to HUL before initiating any proceedings in any court or claiming any interim or ad-interim reliefs against the HUL’s use of the trade mark GLOW & HANDSOME.

Our Associate, Caroline Mathews discusses “NOT PLAYING “NISE” The Hon’ble Delhi High Court in Dr. Reddy’s Laboratories Limited v. Pureca Laboratories Private Limited, granted an ad-interim injunction to Dr. Reddy’s against the defendant, Pureca Laboratories (“Pureca”) use of the mark PURE NISE-P on and in relation to tablets for a combination drug of Nimesulide with Paracetamol. Dr. Reddy’s, one of India’s largest pharmaceutical companies, alleged that it is the owner of several NISE and NISE formative trade mark registrations in Class 5, dating back to the year 1998. Further, Dr. Reddy’s has used these marks on and in relation to the drug Nimesulide since as early as 1995. Pureca, a Delhi based pharmaceutical manufacturer, was manufacturing and supplying tablets for a combination drug of Nimesulide with Paracetamol under the name PURE NISE-P. A comparison of the packaging of the rival products is shown below. Pureca’s PURE NISE-P Tablet Dr. Reddy’s NISE Tablet Dr. Reddy’s alleged that Pureca’s unauthorized use of the mark NISE-P on and in relation to the drug Nimusulide not only infringed upon its rights in its registered NISE marks, but Pureca was also passing off its goods as that of Dr. Reddy’s. On the other hand, Pureca contended that its mark PURE NISE-P, taken as a whole, is distinguishable from NISE. The Court compared the packaging of the rival goods and rejected the argument put forth by the Pureca. The Court held that the word PURE was written very innocuously on the packaging of Pureca’s goods and NISE-P was written in bold letters. The Court concluded that owing to the near identity of the marks and the goods, Dr. Reddy’s Laboratories had made out a prima facie case for the grant of an ad-interim injunction. Pureca Laboratories was therefore barred from using the PURE NISE-P mark until the next hearing. Citation: Dr. Reddy’s Laboratories Limited v. Pureca Laboratories Private Limited, CS(COMM) 221/2020, Order dated July 3, 2020 by the Delhi High Court.

Our Associate, Parth Agrawal discusses “ISKCON declared as well-known trade mark by Bombay High Court” A well-known brand is not something which is built over night but is the result of a proprietor’s relentless investment in its brand to build a reputation and goodwill in their mark. These investments in the marks not only include the investment in publicizing or advertising the marks but also include the pro-active actions taken by proprietors to protect their marks from being unauthorizedly used by third party. As a result of such investment and actions, the marks which enjoys unquestionable reputation in the market are awarded the status of “well-known marks”. So to say, the protection is to be granted to such marks, not only in respect of goods and services in which they are used, but also in respect of unrelated goods and services, in order to safeguard the mark from third party who desires to take undue advantage of such immense goodwill and reputation. Recently, in International Society for Krishna Consciousness (ISKCON) vs. Iskcon Appaeral Pvt. Ltd. & Anr., the plaintiff filed a suit for permanent injunction restraining the defendants from infringing the plaintiff’s registered trademarks, passing off and sought a decree of declaration that the plaintiff’s trade mark ISKCON as a ‘well-known trade mark’ in India. Earlier this year, the Bombay High Court granted ad-interim injunction restraining the defendant from using the mark ISKCON. The defendants in the recent hearing stated that they have changed the name of the company to Alcis Sports Pvt Ltd. and submitted an undertaking stating that the they will not use the trade mark ISKCON by itself or as a part of the trade mark or in any manner whatsoever including the impugned expression “formerly known as ISKCON”. The Bombay High Court, noted that, the mark ISKCON was derived from the plaintiff’s name, i.e. I from International, S from Society, K from Krishna and Con from Consciousness and is a coined mark which deserves highest degree of protection. Further, noting the documents placed on record by the plaintiff, the court observed that, the mark ISKCON has been in continuous use in India since at least 1971. The court also noted that the plaintiff has been vigilant in taking proactive steps in initiating proceedings before various forums against the misuse of its trade mark ISKCON. The court held that, the documents evidently show that the trade mark ISKCON has acquired immense and long-standing reputation and goodwill throughout India and it is associated with the plaintiff and none else. Given this, the court held, that the trade mark ISKCON satisfies the requirements and tests of a well-known mark and consequently declared the ISKCON mark to be a well-known mark in India. It is pertinent to note that, in recent time, neither Indian courts nor the Trade Mark Registry, or the Intellectual Property Appellate Board are shying away in declaring marks that satisfy the requirements to be well-known marks. Recently, Intellectual Property Appellate Board declared the sporting brand YONEK to be well-known. Further, the mark PULSE was also declared as well-known by Delhi High Court. This is certainly a welcome development wherein marks which deserve the highest degree of protections are being awarded well-known status.

Our Associate, Roohan Kathuria discusses “Jurisdiction of civil court in matters involving insolvency of party” The Hon’ble Delhi High Court, in an order dated June 26, 2020, dismissed GE Power India Ltd.’s (“Plaintiff”) suit against NHPC Ltd. (“Defendant”), alleging infringement of copyright in six (6) architectural drawings and violation of its rights in related confidential data. In this case, the Plaintiff, through its predecessor-in-interest, Alstom India Ltd. (“Alstom”), entered into a contract with Lanco Infratech Limited (“LIL”) for designing, manufacturing, testing, delivering and commissioning of facilities for a hydro-electric project. In the contract, the Plaintiff had granted to LIL a conditional and limited licence in respect of its drawings and data. The project was awarded to Lanco Teesta Hydropower Limited (“LTHPL”), a Special Vehicle Company that is part of the same group of companies as LIL. The drawings and documents submitted by Alstom to LIL were used in the project, subject to the copyright vesting with Alstom. Subsequently, LIL went into liquidation and insolvency proceeding were initiated against it. Thereafter, owing to the NCLT’s decision, the Defendant acquired the project and issued an open tender while publishing, and disclosing to third-parties, the copyrighted drawings, and in pre-bid meetings, expressed its intention to hand over all drawings to the successful bidder. The Plaintiff contended that the Defendant could not have used the drawings and data and publicized them without a license from the Plaintiff or without explicit permission of the Plaintiff. Reliance was placed on the judgement in Astrazeneca UK Ltd. & Anr. vs. Orchid Chemicals. The Plaintiff further contended that the Defendant’s publication of the drawings and the data was causing irreparable harm to the Plaintiff and the Defendant was liable to remove the drawings from its webpage. Further, it was contended that the Defendant’s website and the Central Public Procurement Portal (“CPPP”), on which the drawings were uploaded was more than an interactive website and permitted submission of bids online through the portal. Moreover, two companies have accessed the website from Delhi and have raised queries before submitting their bids. The Defendant, on the other hand, contended the Hon’ble Court had no territorial jurisdiction to try the suit as neither the Plaintiff nor the Defendant reside or work for gain within the Court’s territorial jurisdiction. The Defendant also claimed that the website was not targeted to the consumers only in Delhi. Further, it was contended that the present suit is not maintainable as the dispute arises out of, or in relation to, the insolvency resolution process and can be decided only by the NCLT. Moreover, the Plaintiff has failed to plead how the copyright owned by Alstom vested in the Plaintiff. The Defendant took the plea of fair dealing. The Court, while rejecting the plea of the Defendant regarding territorial jurisdiction, held that since the copyrighted drawings were fed into the computer of CPPP in Delhi and reproduced as an open tender, the cause of action has arisen in Delhi. Therefore, there exists the infringement of copyright vested in the Plaintiff’s drawings. The Court, however, held that it did not have jurisdiction to try this matter because the Insolvency and Bankruptcy Code (“IBC”) lay a bar on the jurisdiction of a civil court in respect of any matter in which the NCLT and NCLAT have jurisdiction. The Court held that jurisdiction vested in NCLT is of wide ambit and any question of law or fact in relation to the insolvency resolution has to be determined by the NCLT. Reliance was placed by the Hon’ble Judge on the judgment of Swiss Ribbons Pvt. Ltd. Vs. Union of India. Lastly, the court held that, since the Plaintiff’s drawings and confidential data was given to LIL, it could not have, without any written permission of the Plaintiff, passed on the said data to LTHPL or to the Defendant. Therefore, the suit could not be decided without making LIL and LTHPL parties to the suit. Citation: GE Power India Ltd. v. NHPC Limited- CS(COMM) 140/2020. Order dt. 26.6.2020