Our Associate, Sandeep Gupta discusses “Eli Lilly v. Natco Pharma” Recently the Delhi High Court, in Eli Lilly and Company & Anr. v. Natco Pharma Limited & Anr., granted an ad-interim injunction in favour of the plaintiffs restraining the defendants from making commercial use of the plaintiff’s patented drug Abemaciclib. The plaintiffs alleged that defendants projected and listed itself as a seller/ supplier from India “offering a wide range of Abemaciclib” on the third-party business listing website TradeIndia. As per the plaintiffs such use infringes the claim specification of its patented drug Abemaciclib, which was granted on May 19, 2018. The plaintiffs further contended that they were granted approval by the US FDA in 2017, and by India’s Central Drug Standard Control Organization in 2019 for import and marketing of the Abemaciclib drug. The counsel for the defendants, appearing on advance notice, argued that neither the defendants nor its employees had put up the e-commerce listing. Counsel further stated that on receipt of the notice for the present lawsuit, the defendants had requested the e-commerce website to takedown the advertisement. The defendants further argued that they are only at the stage of research and development which is protected under Indian patent law. Lastly, the defendants stated that they are willing to provide the plaintiffs with an undertaking stating that as and when the defendants intend to launch the Abemaciclib drug, they will give prior notice to the plaintiffs so that they can approach the court for appropriate relief. In light of this, counsel contended that no injunction should be granted in favour of the plaintiffs at this stage. The plaintiffs countered the arguments of the defendants by informing the court that the defendants were a habitual offender and had provided similar undertakings in other matters also. However, the plaintiffs contended that, the defendants have a habit of dumping large quantities of the infringing medicines in the market and subsequently claiming that the product is now out of their hands. Such conduct, on the part of the defendants, has caused irreparable loss to patent holders. The Delhi High Court observed that, despite the defendants offering an undertaking, the plaintiffs have made out a prima facie case in their favour. As per the court, since the plaintiffs have made out a prima facie case, an ad-interim injunction cannot be denied solely on the ground that the defendants are offering to provide undertakings. The court further held that not only is a prima facie case made out, the balance of convenience lies in favour of the plaintiffs, who would suffer irreparable loss if an ad-interim injunction is not granted. Based on the above, the court granted an ad-interim injunction in favour of plaintiffs restraining the defendants from manufacturing and selling the Abemaciclib drug. However, the court also stated that the defendants’ use of the patented Abemaciclib drug for purposes of research and development would not constitute infringement of the plaintiff’s patent since such use is allowed under Indian patent law.

Our Associate, Amay Jain discusses “Counterfeit Face Masks : The Pandemic’s Present to trademark and Copyright Litigation Regimes” In wake of the COVID-19 pandemic, the demand for face masks has risen exponentially. Consequently, the business of face masks has assumed great commercial significance as more and more traders look to capitalize on this opportunity to venture into the face mask business and earn profits. However, this booming business of face masks is not bereft of instances of unauthorized use of trademarks and/or copyrightable logos on face masks. In the last few weeks, the Delhi High Court has witnessed suits involving such facts and circumstances. For instance, on June 9, 2020, in Tommy Hilfiger Europe B.V. v. M/s Taqua Textiles & Ors.,[1] the well-known apparel brand, Tommy Hilfiger, obtained an ex-parte ad-interim injunction against a local party selling face masks bearing its marks including the TOMMY HILFIGER & Flag Design (shown below). Here, we also note that such instances of unauthorized use of trademarks and/or logos/brand names are not limited to the clothing and apparel industry. Rather, it seems that trademarks, brands and logos from other industries are also being subject to unauthorized use on face masks by third-party manufacturers of face masks. In one such case, namely Delhi Public School Society v. Manish Tripathi[2], on June 30, 2020, the Delhi High Court, in a suit filed by Delhi Public School Society (a private school society that has schools worldwide), awarded an interim injunction. The suit was filed against a local party who was using the plaintiff’s DELHI PUBLIC SCHOOL crest logo (shown below) on face masks. The plaintiff contended that it owns a copyright registration for its crest logo. It also owned trademark registrations for the crest logo and the DELHI PUBLIC SCHOOL word mark covering educational services in Class 41. Given the plaintiff’s copyright and trademark rights, the Delhi High Court held that a prima facie case had been made out and that the plaintiff would suffer irreparable harm if the defendant was not restrained from using the crest logo on/ in relation to face masks. The court, in its decision, took into account the copyright registration owned by the plaintiff for its crest logo and passed an interim order in the plaintiff’s favour. In view of the above, we note that unauthorized use of a well-known brand name even if the said brand has not been, in the past, engaged in the business of face masks, may amount to infringement of trademark and/or copyright. The fate of these cases, however, will depend upon peculiar facts and circumstances in each case, including, inter alia, (a) the reputation of the plaintiff’s mark; (b) whether the mark featured defendant’s goods is deceptively similar to the plaintiff’s mark; (c) whether use of such mark on defendant’s goods is likely to cause confusion among consumers. While there may be uncertainty about the outcomes of such cases depending on facts of each case, it will, certainly, be interesting to see how the Indian judiciary tackles such cases in near future. [1] CS (COMM) 160/2020, Delhi High Court [2] CS (COMM) 207/2020, Delhi High Court

Our Associate, Anand Kumar discusses “Magical Combat Of Noodles” Recently, in ITC Limited vs Nestle India Limited (C.S.No.231 of 2013), the Madras High Court denied a permanent injunction to ITC Limited (“Plaintiff”). In this case, the Plaintiff sought to restrain Nestle India Limited (“Defendant”) from using the mark MAGICAL MASALA in respect of noodles. The Plaintiff alleged that MAGICAL MASALA is similar to its mark MAGIC MASALA that is also used on and in relation to noodles. The Defendant contented that the mark MAGIC MASALA is a descriptive and/or laudatory mark in respect of noodles. In the absence of secondary significance, the Plaintiff cannot claim exclusive common law rights in the mark for the purpose of a passing-off action. Also, MAGIC MASALA was contended to common to trade and, therefore, the Plaintiff cannot monopolise the terms ‘MAGIC’ and ‘MASALA’ and restrain others from using these terms. The court observed that there are two broad categories of marks, one, which are inherently distinctive and capable of being protected and others which acquire distinctiveness through secondary meaning. The court also referred to McCarthy on Trademarks and Unfair Competition, 3rd Edition that provides the complete spectrum of distinctiveness of marks arrayed in an ascending order roughly reflecting their eligibility to function as trademarks and the degree of protection afforded to them viz. generic, descriptive, suggestive, arbitrary and fanciful. Further, the court observed that the thumb rule is that words or expressions which are not distinctive are inherently weak and are, therefore, incapable of being registered or protected. However, the court also clarified and re-emphasised settled law that such weak marks may also become distinctive on account of their long and uninterrupted use over a period of time, as a result of which they may get a secondary meaning and the consumer may begin to associate them with the goods of a single proprietor. In the instant case, the court observed that the Plaintiff has been using the word MAGIC to name the flavour in a sachet as Magic. While concurring with the view presented by the Plaintiff that there is no flavour known to the world which is called magic, the court observed that the use of the mark MAGIC MASALA in respect of a sachet of masala is not descriptive. However, at the same time, the court also took note of the fact that Plaintiff has used the expression MAGIC MASALA in a laudatory manner to praise the “masala” in a sachet. It is settled law that a laudatory epithet cannot be given monopoly or protection. Being so, the court observed that the word MAGIC is a laudatory word which cannot be monopolised. As regards the expression MAGIC MASALA being common to trade, the court noted that goods bearing the mark MAGIC are not merely subsisting on the records of the Trade Marks Registry, but MAGIC is commonly used in the food and cosmetic industry cutting across different segments of goods. Also, the court observed that the expression “Masala” signifies a mixture of ground spices used in Indian cooking and, therefore, it is a generic word for a mix of different spices. Consequently, none of these expressions be monopolized and appropriated in favor of the Plaintiff in exclusion of others, including, Defendants. Given the aforesaid findings, the court concluded that even though there is a phonetic similarity between the word “Magic” used by the Plaintiff and the word “Magical” used by the Defendant, nonetheless they are incapable of being monopolised as they are not only laudatory but also common to the trade. As regards the common law remedy of passing-off claimed by Plaintiff as an unregistered proprietor of the trade mark MAGIC MASALA, the court emphasised that the Plaintiff must pass the trinity-test laid down by Hon’ble Apex court. The test requires the Plaintiff to clearly establish before the court that it enjoys the goodwill in the mark, the use of the mark by the Defendants amounts to misrepresentation and, consequently, such misrepresentation causes damage to the Plaintiff’s business. The court held that on comparing the wrappers (shown below) and/or trade dress of the rival goods of the Plaintiff and Defendant, there is no visual or ocular similarity. This is because of the difference in the overall colour scheme (red and yellow colors v. red, yellow and green colors), layout, style and the get-up of the two wrappers of the rival goods. Also, the trade mark SUNFEAST YIPEE! is written on the Plaintiff’s packaging, whereas the Defendant’s packaging has the mark MAGGI. Defendant’s Packaging Plaintiff’s Packaging Also, under the law there is no scope to dissect the Plaintiff’s MAGIC MASALA label to conclude that the Defendant has copied the Plaintiff’s sub-brand MAGIC MASALA as it was never conceived as brand or trademark by the Plaintiff. Therefore, it cannot be said that there is a misrepresentation by the Defendant. Finally, considering the overall colour scheme, layout, style and the get-up of the wrappers of the rival goods and composite marks, the court held that there is no scope to infer passing-off. Accordingly, the Plaintiff is not entitled to relief. Citation: ITC Limited vs Nestle India Limited (C.S.No.231 of 2013), decision dt. June 10, 2020 by Madras High Court.

Our Associate, Madhurima Gadre discusses “US Supreme Court Holds That Booking.com Is Not A Generic Mark” Recently, in an 8-1 ruling, the US Supreme Court held that BOOKING.COM is not a generic mark and is capable of acquiring a trade mark registration. Booking.com B.V., an enterprise that operates a travel reservation website, sought federal registration of four (4) marks including the term BOOKING.COM. The U. S. Patent and Trademark Office (“USPTO”) refused registration of the marks by concluding that BOOKING.COM is generic for online hotel reservation services. As per the USPTO, the term BOOKING is generic and .COM is merely an identifier for use on the Internet, and as such, the mark BOOKING.COM is also generic and not entitled to registration. In other words, the mark BOOKING.COM is incapable of acquiring secondary meaning as a trade mark. Booking.com B.V. filed an appeal against the decision at the Trademark Trial and Appeal Board (“TTAB”), which upheld the USPTO’s decision. Booking.com B.V. appealed and the appellate court held that BOOKING.COM is not generic. The USPTO appealed. The Court of Appeals found no error in the District Court’s assessment of how consumers perceive the term BOOKING.COM. As such, the Court of Appeals rejected the USPTO’s contention that, as a rule, combining a generic term like BOOKING with .COM yields a generic composite. The USPTO filed an appeal at the US Supreme Court. After hearing remote and live streamed oral arguments for the first time in history, Justice Ginsburg, on behalf of the US Supreme Court, wrote the 8-1 majority opinion. The court held that although BOOKING is a generic term for hotel reservation services, adding the .COM element rendered it a compound term that needs to be considered as a whole. The court noted that if BOOKING.COM were generic, one may expect Travelocity, another such service, to be a BOOKING.COM provider. The court repeatedly looked into consumer perception that BOOKING.COM identifies a particular source of travel reservation services and stated that “because ‘Booking.com’ is not a generic name to consumers, it is not generic”. The court also drew attention to the USPTO’s inconsistent application of its rule that a generic term paired with “.com” is generic and cannot function as a trade mark, given that ART.COM is registered as a trade mark for online retail store services offering art prints, original art and the like. Further, it noted that DATING.COM is also registered for dating services. The court clarified that determination of a mark as generic depends on consumer perception, i.e., whether the public will assume the “generic.com” term is the name of a class of goods or services, or as a term capable of distinguishing among members of this class. In the latter situation, a term may be descriptive rather than generic, and even a descriptive term can gain significance as a trade mark if the public comes to associate it with a single source of the goods or services. The US Supreme Court’s ruling is certainly encouraging to businesses operating under any “generic.com” brands, as they can now seek registration of such “generic.com” marks if they can demonstrate that consumers do not perceive the mark as generic.

Our Associate, Madhurima Gadre discusses “Recent Changes in Product Packaging and Listing Requirements in India” The ongoing COVID-19 pandemic has gravely affected countries across the world, including India. In an effort to boost India’s struggling economy in light of the pandemic, the Hon’ble Prime Minister recently, in a speech, stressed on the importance of “Aatmanirbhar Bharat (self-reliant India)” and urged the public to go “Vocal for Local”.[1] One of the key challenges in attaining this goal has been enabling consumers to distinguish between products of Indian and foreign origin. In a recently issued press release, the Ministry of Commerce and Industry stated that the Government e-Marketplace (GeM) has made it mandatory for sellers to enter the country of origin while registering all new products on GeM. Further, the sellers who have already uploaded their products before the introduction of this new feature on GeM, are being regularly reminded to update the country of origin, along with a warning that their products shall be removed from GeM if they fail to make the update. In addition, GeM has also enabled a provision for indication of the percentage of local content in products. With these changes, the country of origin as well as the local content percentage is visible in the marketplace for all the items.[2] Furthermore, an e-commerce website, namely, www.shopclues.com, went a step further and added a separate Aatmanirbhar cum “Made In India” section in order to enable consumers to exclusively view and choose between products of Indian origin.[3] In this regard, it is pertinent to mention the Legal Metrology (Packaged Commodities) Rules, 2011, which regulate pre-packaged commodities and, inter alia, mandate certain labelling requirements prior to sale of such commodities in India. These rules underwent substantial amendments in 2017. One such amendment directs that the name of the country of origin or manufacture or assembly in case of imported products shall be mentioned on the package.[4] Before the amendment in 2017, in case of imported commodities, only the name and address of the importer was required to be mentioned. Although the amended rules apply to e-commerce websites, a Public Interest Litigation (PIL) has recently been filed in the Delhi High Court seeking a direction that e-commerce websites display a “Made In India” option separately and conspicuously for consumers. The PIL states that while some e-commerce websites are mentioning the products’ country of origin, the same is being done in a discreet manner which is not easily searchable by the consumers at large. A Division Bench of the Delhi High Court has, last week, issued notices to the Ministry of Commerce and Industry as well as to various e-commerce websites, such as Amazon, Flipkart and Snapdeal, seeking their stand on the PIL by July 22, 2020.[5] It remains to be seen how the above-noted e-commerce websites react to the PIL and whether they create a separate “Made In India” section in order to enable consumers to make informed decisions, including supporting local businesses or refraining to buy products originating from any specific country! [1] Excerpts of the speech available at https://www.youtube.com/watch?v=dPMpu8yxm4A and https://www.youtube.com/watch?v=0xmx92Q_kQ4 [2] Copy of the press release available at https://pib.gov.in/PressReleasePage.aspx?PRID=1633511 [3] The Aatmanirbhar cum Made In India section can be accessed at https://www.shopclues.com/shopclues-sale-2.html [4] Copy of the Legal Metrology (Packaged Commodities) Amendment Rules, 2017 available at http://metrologycentreindia.com/codes/pc2017.pdf [5] Copy of the notice available at http://delhihighcourt.nic.in/dhcqrydisp_o.asp?pn=86372&yr=2020

Our Senior Associate, Shruhita Amit discusses “Google’s Recent Policy Change for Tackling Counterfeiters” Google recently updated its Legal Trouble Shooter Form to facilitate the removal of webpages featuring counterfeit goods from its organic (non-advertisement) search results. This is in line with the approach that it has taken for some other types of take-down requests/notices such as, requests made under the Digital Millennium Copyright Act (DMCA). In the background of a constant battle against online counterfeiters, this is a welcome change for trade mark owners. While the Google Ads policy has, for a long time, barred advertisement of counterfeit goods, no similar recourse was available against problematic web pages appearing in Google’s search results. In fact, previously, Google refused to remove organic search results without a court order. As a result, links to webpages selling counterfeit goods, continued to feature in the search results. In 2019, Incopro, an online IP and brand protection software provider, conducted a Study across five sectors[1] which revealed some pertinent statistics regarding counterfeits featuring in organic search results. As per this study, up to 60% results returned by search engines are for websites which feature counterfeit goods or otherwise infringe intellectual property. The study further revealed that almost 50% of the web traffic on these harmful websites is directed from organic search results and more than 25% of these websites appear within the first three search results. Google has now added ‘Counterfeit: sale of counterfeit goods’ as a ground for removal of content from its search results. It defines counterfeit goods as those which “contain a trademark or logo that is identical to or substantially indistinguishable from the trademark of another. They mimic the brand features of the product in an attempt to pass themselves off as a genuine product of the brand owner.”[2] For removing a webpage featuring counterfeit goods, the complainant has to manually file a complaint using the available form, pursuant to which a Google employee will review the impugned webpages and decide whether to remove them. However, the submission process has a few limitations. Most importantly, only specific webpages can be reported instead of the entire websites. It is pertinent to note here that many of these websites are dedicated to selling fake goods and have no legitimate purpose. As such, it would better to remove the entire website rather than individual web pages. Further, this protection is currently limited to only counterfeit goods, and does not extend to other forms of trademark infringement. Also, a request under this new policy can only be made by either a trade mark owner or his/her agent. As such, a non-aggrieved party cannot make a request in public interest. In conclusion, while this new policy is a step forward towards protecting the rights/interests of trade mark owners as well as consumers (who may unwittingly click on links featuring counterfeit goods), there is a lot more that Google can do to effectively protect the rights/interests these parties. For instance, it can remove the above-noted limitations, inter alia, as regards the subject matter of the complaint (web pages v. complete websites) or the persons competent to file removal requests (person aggrieved v. anyone). Further, Google can use the manually filed removal requests to the develop algorithms and systems that identify and remove links to sites that consistently sell counterfeits. We do hope that, with time, we move towards a more effective brand protection regime, with search engines, such as, Google assuming greater responsibility as regards the content they feature, including, in their organic search results. [1] Pharmaceuticals (focusing on antibiotics), Automotive (focusing in airbags), Children’s Products (focusing on teethers for babies), Safety Equipment (focusing on cycle helmets) and White goods (focusing on water filters) [2]https://support.google.com/legal/troubleshooter/1114905#ts=9814647%2C1115655%2C9814950%2C9921908

Our Associate, Anand Kumar discusses “Intermediaries’ Liability In Defamation Tussle “ On June 2, 2020, the Delhi High Court, in Sasikala Pushpa v. Facebook India & Ors., decided an important question concerning the role and liability of intermediaries in the context of defamation. The court clarified that intermediaries defined under the Information Technology Act, 2000 (“IT Act”) cannot be held liable for posts or pictures uploaded by third-parties on online platforms of such intermediaries. Sasikala Pushpa (“Plaintiff”) filed a suit seeking permanent injunction against the Facebook Inc., Google LLC, Youtube LLC & Ors. (“Defendants”) from publishing, broadcasting, distributing or disseminating defamatory material, including, photographs/video/audio messages that were uploaded on the Defendants’ platforms by third-parties. As per the Plaintiff, these acts caused a grave and irreversible violation of Plaintiff’s rights, including her fundamental right to maintain dignity, right to live with dignity, right to preserve reputation, all facets of right to life under Article 21 of the Constitution of India. The case of the Plaintiff is that she is a sitting Member of Rajya Sabha from All India Anna Dravida Munnetra Kazhagam (AIADMK) party and had held many other public offices in past. The Plaintiff has been continuously receiving threats of distribution of photographs and video on social media defaming and embarrassing the Plaintiff by making baseless/false allegations. On September 25, 2016, the Plaintiff started receiving phone calls from her friends, acquaintances and family members, regarding photographs of the Plaintiff with a man that had been uploaded on social media. According to Plaintiff the photographs did not exist, and had been morphed, fabricated, concocted and forged. She further contented that the content of the photographs was defamatory and obscene. On the question of whether the content of the photographs was defamatory and obscene, the court observed that photographs may fall in the genre of those taken without the knowledge of the Plaintiff. However, none of them can be classified as obscene or showing the Plaintiff and the man in photograph in any scandalizing situation. Rather the court noted that the Plaintiff and the man in photograph appear to be posing for the photograph. The court reiterated the law laid down in Precision Steels Vs. Reeta Salwan (2013) 205 DLT 695, that it is not required to put a suit to trial, at the cost of other deserving suits, if on the pleadings, it finds that the Plaintiff has not laid any foundation for succeeding. In the instant case the court observed that the Plaintiff’s claim, on a reading of the plaint, is found to be half-hearted, vague and without the requisite particulars. The court noted that the Plaintiff only vaguely pleaded that the photographs were defamatory, and tarnished her image and reputation, without disclosing the reasoning for such conclusion. Further, the court noted that the Plaintiff’s claim of defamation, in the amended pleadings and during the hearing, was premised on the following grounds, namely, (a) that the photographs were defamatory because they showed the Plaintiff with a politician belonging to a rival political party and (b) that the Plaintiff, who was an elected representative, was shown in the company of a man other than her husband. However, the court observed that there was no pleading to such effect in the plaint. Accordingly, the court held that issues cannot be framed on present subject matter of suit. Further the court stressed on non-joinder of necessary parties as a pertinent reason for not putting the suit on trial. According to court, the Plaintiff did not implead the alleged forger/fabricator or the person who had morphed the photographs nor she had sought any direction against Defendants or against any other portal for disclosing the identity of such person. It was also noted that the Plaintiff did not implead the subject man in the photograph as necessary party to verify the fact if the photographs were morphed, fabricated or not in as much as it is that man only who was best in a position to comment on the genuineness of the photographs. Therefore, the court remarked that the Plaintiff cannot fight a proxy battle and her failure/refusal to implead the said man as Defendant to the suit gives rise to an adverse inference drawn against the Plaintiff that the photographs showing her with the said man are not morphed, forged and/or fabricated. The court then examined whether the Defendants qualify as an ‘intermediaries’, and are entitled to protection under the safe harbour provision within meaning of Section 79 (read with Section 2 (1) (w)) of the IT Act). In other words, whether the Defendants, in the instant case, are liable for dissemination and circulation of alleged photographs and whether the Defendants are under obligation to remove it. As per the court, an intermediary is not entitled to the protection under the safe harbour provision only if, upon receiving actual knowledge from a court order or on being notified by the appropriate Government or its agency, the intermediary fails to expeditiously remove or disable access to such material. It follows that just because any information on the internet is offensive or causes inconvenience, danger etc. to the Plaintiff, it does not entitle the Plaintiff to call upon the intermediary to remove that information/content or to disable access thereto. Also, the intermediary is not liable to do so. The court held that the Plaintiff must make out a case of the information/content being actionable in law before putting the intermediary under an obligation for removal of such impugned information/content. The intermediary is not liable merely because the information/content may be an irritant. Lastly, on the question of photographs being violative of the privacy of the Plaintiff the court observed that the right claimed by the Plaintiff qua her meeting at her residence has to be balanced with the right of the public to know the identity of the person who the Plaintiff meets and hobnobs with. This question becomes more important when the Plaintiff, being a politician and representative of the people, meets with persons

Our Associate, Anand Kumar discusses “Intermediaries’ Liability In Defamation Tussle “ On June 2, 2020, the Delhi High Court, in Sasikala Pushpa v. Facebook India & Ors., decided an important question concerning the role and liability of intermediaries in the context of defamation. The court clarified that intermediaries defined under the Information Technology Act, 2000 (“IT Act”) cannot be held liable for posts or pictures uploaded by third-parties on online platforms of such intermediaries. Sasikala Pushpa (“Plaintiff”) filed a suit seeking permanent injunction against the Facebook Inc., Google LLC, Youtube LLC & Ors. (“Defendants”) from publishing, broadcasting, distributing or disseminating defamatory material, including, photographs/video/audio messages that were uploaded on the Defendants’ platforms by third-parties. As per the Plaintiff, these acts caused a grave and irreversible violation of Plaintiff’s rights, including her fundamental right to maintain dignity, right to live with dignity, right to preserve reputation, all facets of right to life under Article 21 of the Constitution of India. The case of the Plaintiff is that she is a sitting Member of Rajya Sabha from All India Anna Dravida Munnetra Kazhagam (AIADMK) party and had held many other public offices in past. The Plaintiff has been continuously receiving threats of distribution of photographs and video on social media defaming and embarrassing the Plaintiff by making baseless/false allegations. On September 25, 2016, the Plaintiff started receiving phone calls from her friends, acquaintances and family members, regarding photographs of the Plaintiff with a man that had been uploaded on social media. According to Plaintiff the photographs did not exist, and had been morphed, fabricated, concocted and forged. She further contented that the content of the photographs was defamatory and obscene. On the question of whether the content of the photographs was defamatory and obscene, the court observed that photographs may fall in the genre of those taken without the knowledge of the Plaintiff. However, none of them can be classified as obscene or showing the Plaintiff and the man in photograph in any scandalizing situation. Rather the court noted that the Plaintiff and the man in photograph appear to be posing for the photograph. The court reiterated the law laid down in Precision Steels Vs. Reeta Salwan (2013) 205 DLT 695, that it is not required to put a suit to trial, at the cost of other deserving suits, if on the pleadings, it finds that the Plaintiff has not laid any foundation for succeeding. In the instant case the court observed that the Plaintiff’s claim, on a reading of the plaint, is found to be half-hearted, vague and without the requisite particulars. The court noted that the Plaintiff only vaguely pleaded that the photographs were defamatory, and tarnished her image and reputation, without disclosing the reasoning for such conclusion. Further, the court noted that the Plaintiff’s claim of defamation, in the amended pleadings and during the hearing, was premised on the following grounds, namely, (a) that the photographs were defamatory because they showed the Plaintiff with a politician belonging to a rival political party and (b) that the Plaintiff, who was an elected representative, was shown in the company of a man other than her husband. However, the court observed that there was no pleading to such effect in the plaint. Accordingly, the court held that issues cannot be framed on present subject matter of suit. Further the court stressed on non-joinder of necessary parties as a pertinent reason for not putting the suit on trial. According to court, the Plaintiff did not implead the alleged forger/fabricator or the person who had morphed the photographs nor she had sought any direction against Defendants or against any other portal for disclosing the identity of such person. It was also noted that the Plaintiff did not implead the subject man in the photograph as necessary party to verify the fact if the photographs were morphed, fabricated or not in as much as it is that man only who was best in a position to comment on the genuineness of the photographs. Therefore, the court remarked that the Plaintiff cannot fight a proxy battle and her failure/refusal to implead the said man as Defendant to the suit gives rise to an adverse inference drawn against the Plaintiff that the photographs showing her with the said man are not morphed, forged and/or fabricated. The court then examined whether the Defendants qualify as an ‘intermediaries’, and are entitled to protection under the safe harbour provision within meaning of Section 79 (read with Section 2 (1) (w)) of the IT Act). In other words, whether the Defendants, in the instant case, are liable for dissemination and circulation of alleged photographs and whether the Defendants are under obligation to remove it. As per the court, an intermediary is not entitled to the protection under the safe harbour provision only if, upon receiving actual knowledge from a court order or on being notified by the appropriate Government or its agency, the intermediary fails to expeditiously remove or disable access to such material. It follows that just because any information on the internet is offensive or causes inconvenience, danger etc. to the Plaintiff, it does not entitle the Plaintiff to call upon the intermediary to remove that information/content or to disable access thereto. Also, the intermediary is not liable to do so. The court held that the Plaintiff must make out a case of the information/content being actionable in law before putting the intermediary under an obligation for removal of such impugned information/content. The intermediary is not liable merely because the information/content may be an irritant. Lastly, on the question of photographs being violative of the privacy of the Plaintiff the court observed that the right claimed by the Plaintiff qua her meeting at her residence has to be balanced with the right of the public to know the identity of the person who the Plaintiff meets and hobnobs with. This question becomes more important when the Plaintiff, being a politician and representative of the people, meets with persons

Our Associate, Madhurima Gadre discusses “Defense of Prior Use of the Mark is not Established if the Use is Intermittent and not Voluminous” The Delhi High Court, in a dispute between two Indian mattress companies, namely, Peps Industries Pvt. Ltd. and Kurlon Limited, has clarified the manner of use of the mark necessary to establish the defence of prior use under the Trade Marks Act, 1999 (“Act”). The plaintiff, Peps Industries Pvt. Ltd., sought a decree of permanent injunction against use of the plaintiff’s registered mark NO TURN by the defendant, Kurlon Limited. As per the plaintiff, it owns a 2008 trade mark registration for the mark NO TURN covering, inter alia, mattresses in Class 20. Further, the plaintiff has been using the mark NO TURN continuously and extensively for eleven (11) years. In August 2018, the plaintiff became aware that the defendant had adopted the mark NO TURN for similar goods. During correspondence between the parties, the defendant stated that it is the prior user of the mark NO TURN in India. Subsequently, the defendant filed an application to register the mark NO TURN claiming use since October 8, 2007 as well as a cancellation action against the plaintiff’s registration. The defendant, relying on the decisions of S. Syed Mohideen v. P. SulochanaBai, (2016) 2 SCC 683, and Intercity Hotel GMBH v. Hotel Intercity Delhi & Ors., 2019 SCC OnLine Del 7644, contended that its use of the NO TURN mark precedes the filing date of the plaintiff’s application, which was filed on a proposed to be used basis. Further, the defendant claimed that it uses the mark NO TURN alongside its reputed brand KURLON. Consequently, there can be no consumer confusion. The defendant submitted invoices showing use of the NO TURN mark, but the dates on these invoices were intermittent. The court observed that the defendant is the prior user of the mark NO TURN. However, since such use was intermittent and not voluminous, it is not sufficient to establish the defence of prior use under Section 34 of the Act. The court reiterated that rights of registered owner of the trade mark, though exclusive, are not absolute. Such right is not higher in comparison to the right of a party using an identical trade mark or a resembling trade mark in relation to same/ similar goods and services, provided that such a party has been continuously using the said trade mark prior to use of the trade mark by the registered owner. The use has to be continuous, and not isolated or disjointed. There must be commercially continuous use of the trade mark in relation to the same/ similar goods or services. A defendant seeking to set up a defence of prior use under Section 34 of the Act also has to prove the volume of sales. Based on the above, the court held that the defendant’s prior use would not help it. However, as per the court, the plaintiff was not entitled to the relief of injunction as the mark NO TURN is descriptive because it describes the quality of mattresses which do not need to be turned around. The plaintiff did not place any material on record to show that, on the date of application or even on the date of registration, the plaintiff’s mark NO TURN had acquired the distinctiveness to achieve the status of a well-known mark. Peps Industries Pvt. Ltd. v. Kurlon Limited, Delhi High Court decision dt. March 16, 2020 in CS(COMM) 174/2019

Our Associate Aishwarya Pande discusses “Long Arm Jurisdiction in India” The recent decision of the Delhi High Court in the case of HT Media Ltd & Anr. v. Brainlink Ltd. & Ors. [CS(COMM)119/2020] [Read here: https://sc-ip.in/2020/05/15/anti-suit-injunctions/] has raised a question whether the Hon’ble Court might have exceeded its jurisdiction in passing an anti-suit injunction. It is well-settled that long arm jurisdiction allows a court to obtain personal jurisdiction over a non-resident defendant if that defendant has a sufficient connection with the forum state. Given that there is no codified law in this respect, courts have held that they can exercise long arm jurisdiction if compelling circumstances exist and where grant of such an injunction is imperative to meet the ends of justice. A leading precedent is Modi Entertainment Network v. WSG Cricket Pte Ltd [2007 (35) PTC 177 Del] (“Modi Entertainment Case”). In this case, the Supreme Court held that, while exercising its discretion to grant an anti-suit injunction against a non-resident defendant, the personal amenability of such a defendant to the court’s jurisdiction must be considered. In addition, the Supreme Court stated that, where the proceedings initiated in a foreign court are oppressive or vexatious, an exercise of the court’s personal jurisdiction is justified. In the case of (India TV) Independent News Service Pvt. Ltd. v. India Broadcast Live LLC & Ors., [2007 (35) PTC 177 Del], while examining the issue of passing off of a domain name, the Delhi High Court considered it appropriate to exercise its jurisdiction over a foreign defendant on the ground that the damage caused to the plaintiff’s goodwill and reputation will be a consequence of the fact that the defendant’s website is accessible in India and the defendant’s services could be availed in India. Applying the above principles to the facts of the HT Media case, it does not appear that the Delhi High Court exceeded its jurisdiction in granting the anti-suit injunction in favor of the plaintiff. The Court opined that the grant of anti-suit injunction in this case was warranted because the damage caused to the plaintiff’s reputation in India was a direct consequence of defendant’s cybersquatting activity, and the suit filed by the defendant before the US District Court was vexatious and caused unnecessary hardship to the plaintiff. Having said that, it would be interesting to see the defense entered by the defendant in the upcoming trial.