The order of naming defendants in intellectual property suits is usually determined as a matter of strategy before a suit is filed. Up until now, it has been common practice to name an innocuous defendant as the first defendant in a suit for reasons such as acquiring jurisdiction of a court, evading mention in a cause list or to conceal the filing to ensure that a main defendant does not appear in court. J. Prathiba Singh of the Delhi High Court, in a recent case of Bata India Limited vs Chawla Boot House & Anr, [CS (COMM) 110/2019], has come down heavily on this practice holding that “such a practice having been held to be impermissible by the Division Bench, the same cannot be permitted to continue in any manner”. The Delhi High Court has, in a circular dated April 5, 2019, directed the court’s Registry that, in each IP suit with multiple defendants, a plaintiff must submit undertakings at the end of the Memo of Parties stating that the defendant no. 1 is the main contesting defendant in the suit. While the Delhi High Court’s circular is a step in the right direction, it may be prudent to exercise caution in this process as the primary defendant may not always be easily ascertainable in IP suits. More often than not, infringing products are discovered through retailers and/or other third parties involved in the trading channel, and the main manufacturer is not always easily discoverable. In such cases, the main contesting defendant is revealed to the plaintiff only after the initial stages of the suit, and any concealment, may therefore, not be deliberate. Thus, the courts must exercise proper judgment while differentiating between a suit in which the proper party has been made the primary defendant and a suit in which there is an honest lack of knowledge of the primary defendant.

While it is of paramount importance for trade mark owners to enforce their trademark rights, ensuring that these owners do not cross-over the bridge to abusive enforcement has as much gravitas. Very often, threats of infringement proceedings are used by large companies as a means to intimidate smaller ones, who, for time and/or lack of ability to invest in a legal battle, may give up use of the mark, though its use as such, may not be dishonest. One such exhibit is the Warner Brothers? policing of third-party online uses of ?HARRY POTTER?. Warner Brothers purchased merchandising rights to the Harry Potter book series franchise, and went on a rampage of sending cease-and-desist notices to all internet websites that were registered using HARRY POTTER, without much assessment. Resultantly, fan-clubs were ignored and were also issued threats. Under Indian law, there is protection provided to a person from unjustified and groundless threats of action/proceedings for infringement of a trademark. Pertinently, such a person can, himself, bring a suit against the threatening party and obtain a declaration that such threats against him are unjustified. But, the question above all is what would constitute a threat? Under the relevant provision of the law, the medium of communication includes, ?by means of circulars, advertisement or otherwise?, thereby, evidently leaving a cloud over ?or otherwise?. Judicial pronouncements, have, although, included in their interpretation, cease and desist notices, public notices, etc. It is noteworthy that, although the law grants protection to those who become victims of such threats, the law does not define what would entail a baseless/ groundless legal threat. Where the judiciary is concerned, it has extended its protection to infringement threats which are unjustifiable and cannot be regarded to have been made bona fide. If you are unable to demonstrate the contrary, such pre-emptive legal proceedings can provide relief to the complainant, including, (a) a declaration that the threats are unjustifiable; (b) an injunction against the continuance of threats; or (c) damages in respect of any loss sustained by the threats. Essentially, the implication of protection under this provision is that the person threatened is entitled to come to court asking the court to adjudicate that such threats are groundless, but it does not preclude a person from instituting a suit with those allegations. To conclude, it is important that brand owners do not navigate into the peripheries of bullying through an exaggeration of the strength of their trademark and the corresponding scope of its protection. Another facet to be mindful of is that the law exempts a legal representative, acting on behalf of his/her client, from liability, thus, it is imperative that authorization of any action be done with prudence.  It is undeniable however, that legal notices do have a legitimate purpose, and most are sent in good faith, with only a small percentage emanating from overzealous protection. As such, aggressive threats are not reprimanded, but merely ought to be issued with reasonable caution. It is not too unimaginable that on obtaining a declaration that a threat is unjustifiable, the victim may start a deliberate negative campaign against a brand owner and tarnish the reputation that the owner was fiercely trying to protect. Say no to BULLYING!

Recently the Delhi High Court, in UTV Software Communication Ltd. And Ors vs. 1337X.TO And Ors, (Order dt. 10.4.2019 CS(COMM) 724/2017), dealt with ‘Dynamic Injunctions’. With this decision, a plaintiff may directly approach the Joint Registrar of the Delhi High Court to extend an existing injunction against a website to similar ‘mirror/redirect/alphanumeric’ websites that  contain the same content as the already injuncted website. The Hon’ble Court first considered ‘Rogue Websites.’ As per the Court, these are websites that “primarily or predominantly share infringing content”. The court stated that “the registrant details of these websites are unknown and any or all contact information is masked/blocked. These websites invite consumers for watching free movies/contents. Although some of these websites feebly claim to only provide links to third-party websites, and not host content on their servers, yet their entire module/interface is premised on allowing users to watch pirated releases/movies by way of links, and which account for all the content available on their sites”. Further, on the test of determining the ‘Rogue Website’ the court took help from the judgement of Eros International Media Ltd. & Anr. vs. Bharat Sanchar Nigam Limited, (Order dt. 31.08.2018,C.S. No. 346/2018), and held that, “requiring the copyright owner to identify each infringing element would place too onerous a burden on copyright owners, particularly in instances where these websites can easily change a URL which has been taken down or blocked.” The Hon’ble Court referred to the Singapore High Court’s decision in Disney Enterprise v. Ml Ltd., ((2018) SGHC 206), where, for the first time, the concept of a dynamic injunction was formulated.  In that case, the court held that a plaintiff could file an additional affidavit stating why a new website fell within the purview of an existing blocking order.  As per the Court, the Indian Code of Civil Procedure allows for dynamic injunctions. With this judgement, the Delhi High Court has provided litigants an effective remedy to avoid engaging in multiple proceedings against the same offender. 

Registration of deceptively similar marks for different goods in different classes is almost never an issue! However, what about registration of deceptively similar trade marks for different goods in the same class? In most, if not all, developed economies around the world courts and tribunals allow registration of marks that may be deceptively similar for different goods in the same class. Say, registration of mark ABC for sunglasses in Class 9 would ordinarily be allowed despite the presence, on a Trade Marks Register, of a mark ABS for software, also in Class 9.  To date the Trade Marks Registry issues refusals to register marks that may be deceptively similar to earlier marks and cover goods in the same class as an applied-for-mark, despite the different nature of the rival goods. However, after the judgment of the Supreme Court in Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd., AIR 2018 SC 3516, the law is quite clear. As per the Hon’ble Court, registration of a mark that is deceptively similar to a prior registered mark in the same class is permissible, provided that the following conditions are met: (a) there is no overlap in the goods and the manner in which the goods are traded is different; and (b) if both the marks are in use, the adoption of the subsequent mark is honest and concurrent. In Nandhini, the rival marks of the parties were as follows: The Respondent, Karnataka Co-Operative Milk Producers Federation Ltd., was using its mark for milk and milk products, whereas the Appellant, Nandhini Deluxe was using its mark for various foodstuffs besides milk and milk products.  The Hon’ble Supreme Court held that the Respondent, Nandhini Deluxe was entitled to seek registration of its mark, and such registration would not infringe the rights of the owner of the prior registered mark NANDINI Device in the same class. The Supreme Court reasoned that, inter alia, although the goods of both parties belonged to the same classes, the goods themselves were different. This difference was further fortified by the fact that, while the owner of the prior registered mark NANDINI Device was a cooperative society selling milk products, the applicant of the subsequent mark NANDHINI Device ran a chain of restaurants. In this regard, the Supreme Court relied on its previous decision in the case of Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd., AIR 1996 SC 2275 in which it held that the owner of the prior registered mark CHARMINAR cannot be allowed to enjoy monopoly over the entire class of goods, as it dealt only in specific goods belonging to that class, namely, cigarettes. Applying this principle, the Supreme Court observed that the owner of the prior registered mark NANDINI Device cannot be allowed to enjoy monopoly over the entire class of goods, as it dealt only in milk and milk products, and had no intention to expand its business to other goods belonging to that class. Furthermore, the Supreme Court noted that the owner of the prior registered mark NANDINI Device started using the mark in 1985 and the applicant of the subsequent mark NANDHINI Device started using the mark in 1989. Since the owner of the prior registered mark NANDINI Device could not show that by the year 1989, the mark had acquired distinctiveness, i.e., within four years of the adoption of the mark, it was to be presumed that the adoption of the subsequent mark NANDHINI Device by the applicant was honest and concurrent. Therefore, despite the spelling and pronunciation of the rival marks in the local language (Kannada) being the same, the Supreme Court held that the applicant of the mark NANDHINI Device was entitled to seek registration of its mark, and such registration would not infringe the rights of the owner of the prior registered mark NANDINI Device. On one hand, the Supreme Court’s decision is a relief to traders who have long been using marks that are deceptively similar to prior registered marks in the same class, but, for different goods. On the other hand, the decision has raised concerns, such as registration of a mark is no longer an assurance that a deceptively similar mark cannot be registered in the same class.

Like many other countries, an Indian trademark registration remains valid and subsisting for a period of ten (10) years from the application date.  It is pertinent to note that, in India, the registration date is the same as the application date.  Therefore, the ten (10) year renewal date is counted from the date of filing of an application.  A registration must be renewed in order for it to remain valid and subsisting.  Under the new rules governing trademark law that came into force in 2017, a registrant can file a renewal request one year prior to the actual renewal date.  So, for instance, if the ten (10) year anniversary of a registration expires on March 15, 2020, the earliest date on which a renewal request can be filed is March 15, 2019.  The procedure to renew a registration is simple. A registrant must file a renewal request at the Trade Marks Registry (“Registry”) in the form prescribed by the Trade Marks Rules, 2017.  Evidence of continued use of a mark or any use of a mark is not required, nor are any declarations/affidavits required to support a renewal request.  The Registry will not make any inquiries regarding use of a mark prior to approving a renewal request. Unlike many other jurisdictions, the law requires the Registry to serve, on a registrant, a written notice called an O-3 notice to inform the registrant of an upcoming renewal deadline.  A registration can only be removed from the Register of Trade Marks if and only if it can be proved that the Registry sent an O-3 notice to a registrant, and the registrant failed to timely file a renewal request despite service of the notice.  Therefore, the law is settled that a registration cannot be removed from the Register of Trade Marks if a registrant successfully demonstrates that it did not receive an O-3 notice from the Registry.  Furthermore, there is precedent that states that if a renewal request is filed, and there are defects in the request, the Registry must timely notify a registrant of these defects.  Non-notification cannot prejudice a registrant’s rights.  Clearly, and quite rightfully, Indian courts have repeatedly been taking the stance that trademark registrations cannot be deemed removed unless all steps have been taken to inform the registrant of such impending removal. Courts have also emphasized that haphazard functioning of the Registry cannot deprive a registrant of its rights. The Registry is duty bound to inform a registrant of approaching expiration dates and/ or any deficiencies found in the renewal application. If this is not done, then a registration can be renewed even if a large amount of time has passed since the expiration of the registration. It is also pertinent to note that, after the expiration of the initial ten (10) life of a registration, a registrant is entitled to a six (6) month grace period within which a renewal request may be filed with surcharge.  Although a registration expires at the end of the grace period, the law allows a registrant to file a restoration petition within a one (1) year period from the expiration of the registration.  The Registry has, in recent times, expedited processing of renewal requests.  Such is the processing speed, that registrations can be renewed within days of filing of renewal requests. 

Last month it was widely reported that American fashion model, Gigi Hadid, was sued by a photo agency for sharing a copyrighted photograph of herself on her Instagram account. In the US, the accepted market practice is to obtain a license for such photographs.  However, in India, such practice is not the norm.  Surprisingly, however, the recognition of the Right of Publicity, in India, although a common law remedy, is just about as strong as the United States.  This post discusses the overlap between copyright and Right of Publicity laws in India, and how it impacts celebrities’ use of their own photographs (that are copyrighted in someone else’s name) on social media. In 2007, the Indian Supreme Court ruled that India is neither a “sweat of the brow” jurisdiction (for being too low a standard), nor a “modicum of creativity” jurisdiction (for being too high a standard) – but, something in between. The fact that India is not solely a “modicum of creativity” jurisdiction, should, in fact, help the creation of a licensing culture. Ms. Hadid, for instance, would have had little scope, under Indian law, if she were to argue that the photograph posted on her Instagram account was not sufficiently original. In the US, it is often argued that there are several grounds to file Right of Publicity claims against tabloids that build businesses by taking and publishing pictures of celebrities without permission (fair use being a debatable defence in such a situation). Similarly, India offers its unique set of remedies to celebrities who find themselves in such situations, including both constitutional and common law remedies. Interestingly, courts in India, have recognized the Right of Publicity as a subset to the Right to Privacy. Although both India and the US offer celebrities a fair set of remedies to obtain injunctive relief, India does need to build on incorporating a culture of licensing copyrighted works. While copyright awareness has grown in respect of certain kinds of works such as, literary works, films and music, numerous misconceptions regarding what exactly is in the public domain and ‘free for all’ persist till date. This is especially so in respect of images that appear in a search on the search engine GOOGLE. Although, the GOOGLE search engine does presently clarify that the “images may be subject to copyright”, the adjacent “find out more” link opens to an FAQ on US copyright law page which does not help the average Indian user understand what it means if a work is copyrighted. How does a developing nation, like India, then, introduce a culture of licensing copyrighted works? Besides strong and effective enforcement measures, there is a need of spreading awareness of copyright law and to dismiss misunderstandings about public domain (i.e. not everything available on the internet is in public domain). Once all this is in place, it will likely create a habit of “erring on the side of caution” and simply obtaining a license.

The inherent nature of intellectual property is such that the overlap between the bundle of rights available to an owner in a single subject matter is unavoidable. Consequently, maintaining harmonious co-existence between these rights and setting a precedent that fits all is proving to be a difficult task for enforcement bodies. One such blurred line arises between copyright and designs law, particularly in relation to artistic works. The law governing copyright and designs in India however provides a fairly clear and simple distinction between both types of IP. A bare perusal of the Copyright Act, 1957 (“Copyright Act”) would reveal that a copyright subsists is any original work which grants the author an exclusive right over such work. The Designs Act, 2000 (“Designs Act”) defines a design as an external feature that is applied to an article and judged solely by the eye. Copyright protection in India is granted from the moment an original work is created. However, protection under the Designs Act is made available to an owner only when the design is granted registration. Therefore, copyright is often referred to as an inherent right, and a design is referred to as a statutory right. The Copyright Act even addresses the issue of dual protection with designs explicitly in Section 15. As per Section 15(1), an owner of a design will forego protection under copyright law, once the design has been granted registration. Section 15(2) states that a copyright in an unregistered design shall cease, as soon as the article to which the design has been applied, has been reproduced more than fifty times by an industrial process. This provision is often used as a defense in copyright infringement suits. For instance, in a 2016 Delhi High Court judgment[1], the defendant was able to successfully prove that no copyright subsists in a drawing of a dress because the drawing was applied to create more than fifty dresses. Further, given that the design in the dress was not registered by the plaintiff, the court denied the plaintiff from claiming design infringement as well. The plaintiff was thereby stripped off from claiming both copyright and design protection in its original design of the dress. Even though the above ruling seems straightforward in its application to the facts of the case, it is unsettling that an original artistic work can be precluded from copyright protection by virtue of being depicted in three-dimensional or two-dimensional form and being reproduced or distributed to the public (which is covered under the meaning of copyright under Section 14(c) of the Copyright Act). The court in this case made a reference to a popular 2009 judgment of the Delhi High Court[2], in which it was held that a copyright in an original artistic work, such as a painting, would subsist even if a design created from that painting is applied to an article more than fifty times, in which case only the copyright in the applied design would cease to exist. This interpretation, however, is problematic, given that the Copyright Act does not recognize a separate copyright in the ‘design’ that is applied to an article. Nonetheless, the court in the aforementioned 2016 Delhi High Court case did not even allow the plaintiff to claim copyright infringement in its original artistic work, on the ground that since the defendant was creating dresses using an industrial process, there was no infringement of the plaintiff’s copyright. Another 2017 Delhi High Court judgment[3] reached a similar conclusion. The plaintiff was denied from enforcing a claim of copyright in its industrial drawings of automatic twisted locks on the basis of them being registrable under the Designs Act. Furthermore, this judgment brought the highly contentious issue of “intention of the creator” back to the forefront, wherein the artists’ intent at the time of creation of the artistic work is deciphered, in order to determine the nature of protection available to the artistic work. One of the consistent trends that seem to have arisen out of these judgments is that copyright in a subject matter will exist until put to industrial use, at which time the subject matter will be covered under the ambit of the Designs Act. Courts have, time and again, propounded that any other interpretation would render the registration of a subject matter under the Designs Act as meaningless, thereby enunciating the importance of maintaining exclusive protection under the Designs Act separate from the Copyright Act. However, formulating an interpretation that leads to erosion of the perpetual rights of copyright owners subsisting in their original works is not a good precedent to set for the intellectual property regime in India, especially from the point of view of foreign investors, who might not see India as a viable market for commercializing copyright table subject matters. The need of the hour is to roll out a comprehensive law addressing the above-noted issues, so that the courts are not burdened with the task of navigating through vague and conflicting provisions existing in the statute. [1]Ritika Private Limited v Biba Apparels Private Limited MANU/DE/0784/2016 [2]Microfibres Inc v Girdhar& Co &Anr MANU/DE/0647/2009 [3] Holland Company LP v S.P. Industries MANU/DE/2126/2017

The rules governing trade marks in India underwent a sea of change in March 2017 with the advent of the Trade Marks Rules, 2017 (“New Rules”) that replaced the erstwhile Trade Marks Rules, 2002 (“Old Rules”). One major change brought about by the New Rules was the omission of the wording “within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request allow” from the provisions dealing with the time for filing evidence by the parties to an opposition proceeding. The deliberate omission of the above-noted wording resulted in the seemingly obvious interpretation that the applicants/ opponents can no longer seek an extension of time during the evidentiary stage of an opposition proceeding. However, the Intellectual Property Appellate Board (“IPAB”) (the tribunal akin to the US Trademark Trial and Appeal Board, where appeals from the orders passed by the Trade Marks Registry (“Registry”) lie), in Sahil Kohli v. The Registrar of Trade Marks & Anil Verma (IPAB – OA/6-8/2018/TM/DEL), has taken an interesting view point on this issue that may change the landscape of opposition proceedings filed before the Registry.  In this case, the appellant sought to challenge orders passed by the Registry ordering three oppositions abandoned on account of non-filing of evidence/ reliance letters in lieu of evidence within the two months’ statutory timeline prescribed by the Trade Marks Act, 1999 (“Act”). The IPAB noted that while the New Rules omitted the extension provision provided for in the Old Rules, the amendment was limited to the rules, and not the Act. The Act, notably, incorporates a provision empowering the Registrar of Trade Marks with the discretionary power to grant an extension of time for doing any act (not being a time expressly provided in the Act) on an application being made by the person concerned in the ‘prescribed’ manner. It is pertinent to mention here that (a) the Act does not expressly provide the timeline for filing evidence in opposition proceedings; (b) the Act states that any evidence shall be submitted in the ‘prescribed’ manner within the ‘prescribed’ time; and (c) “prescribed” is defined in the Act to mean prescribed by rules made under this Act. The IPAB, while placing emphasis on the above provision, held that an interpretation of the omission of the extension provision in the New Rules resulting in parties not being able to seek an extension of time to adduce evidence in opposition proceedings, will be oppressive to justice. This is because such an interpretation will lead to a conclusion that the rules (that are merely procedural in nature) supersede the Act. Thus, the IPAB held that, effectively, by deleting the extension provision in the New Rules, the legislature only lifted the one-month restriction imposed on Registrars to grant extensions. In other words, applicants/ opponents can seek extensions of time innumerable times. The acceptance of those requests is, needless to say, subject to the Registrar’s discretion.        While the Registrars’ discretion to grant extensions of time is limited to cases in which no express timeline is provided by the Act, it is noteworthy that the timeline for evidence submission provided in the New Rules finds it foundation in the Act itself. In other words, the Act expressly recognizes the timeline ‘prescribed by the rules’. As such, it is a matter of contemplation as to why the IPAB deemed the timeline for evidence submission prescribed by the rules as not being expressly provided by the Act! This decision comes at a time when the timeline for opposition proceedings has become significantly reduced by the Registry’s concerted efforts to reduce its decades-old backlog. While this interpretation of the IPAB is surely a welcome change for foreign applicants/ opponents who, at times, for genuine reasons, are unable to provide cogent documentary evidence within the prescribed two-month window, it has opened up the pandora’s box for parties to delay opposition proceedings by filing unwarranted extension requests. While the waters in opposition proceedings before the Registry are yet to be tested in light of this decision, it will be interesting to see if the Registry enforces this decision retrospectively or prospectively.

In 2013, India’s Supreme Court in Shreya Singhal v. Union of India, (2013) 12 SCC 73 caused many online marketplaces in the country to disregard complaints of infringement on such marketplaces.  This post discusses how the scenario might be changing. Online marketplaces in India celebrated the Supreme Court’s 2013 decision requiring them to act on complaints (including take-down requests based on IP violations) if and only if a court ordered them to do so. For example, online marketplaces would be particularly non-responsive to takedown requests where a trademark infringer did not use a mark identical to a complainant’s mark although there are elements of deceptive similarity. However, recently, brand owners have, in court, started attacking the “immunity” claimed by online market places at its very roots. The “immunity” claimed by these online market places is, essentially, based on their websites qualifying as “intermediaries” under India’s IT laws. If brand owners can show that these marketplaces are not intermediaries, they would no longer be immune. In a series of judgements in November 2018, the Delhi High Court denied online marketplaces immunity for being an intermediary. See: Christian Louboutin Sas vs Nakul Bajaj & Ors, Decision dt. 2.11.2018 in CS(COMM) 344/2018, Luxottica Group S.P.A. & Anr. v. Mify Solutions Pvt. Ltd. & Ors. Decision dt. 12.11.2018 in CS(COMM) 453/2016, Skullcandy, Inc. v. Shri Shyam Telecom & Ors., Decision dt. 12.11.2018 in CS(COMM) 979/2016 and L’Oreal v. Brandworld & Anr. Decision dt. 12.11.2018 in CS(COMM) 980/2016. In the Christian Louboutin case (on the basis of which the other three cases were decided), the Delhi High Court examined the defendant’s (an online marketplace) website and opined that, while the web site had features indicating that it was an intermediary, it also had features uncharacteristic of intermediaries. Among the twenty-one (21) “non-intermediary” factors listed by the court were that the web site provides authenticity guarantees, gives discounts to consumers, promotes its own affiliate companies, and advertises products.  These factors, as per the Court takes the web site out of the definition of an intermediary.   The Court also noted that if online marketplaces fail to diligently protect a brand owner’s IP, such failure could amount to “conspiring, aiding, abetting or inducing unlawful conduct” and would disqualify such web sites from the safe harbour exemption under India’s laws. In 2013, India’s Supreme Court in Shreya Singhal v. Union of India, (2013) 12 SCC 73 caused many online marketplaces in the country to disregard complaints of infringement on such marketplaces. This post discusses how the scenario might be changing. Online marketplaces in India celebrated the Supreme Court’s 2013 decision requiring them to act on complaints (including take-down requests based on IP violations) if and only if a court ordered them to do so. For example, online marketplaces would be particularly non-responsive to takedown requests where a trademark infringer did not use a mark identical to a complainant’s mark although there are elements of deceptive similarity. However, recently, brand owners have, in court, started attacking the “immunity” claimed by online market places at its very roots. The “immunity” claimed by these online market places is, essentially, based on their websites qualifying as “intermediaries” under India’s IT laws. If brand owners can show that these marketplaces are not intermediaries, they would no longer be immune. In a series of judgements in November 2018, the Delhi High Court denied online marketplaces immunity for being an intermediary. See: Christian Louboutin Sas vs Nakul Bajaj & Ors, Decision dt. 2.11.2018 in CS(COMM) 344/2018, Luxottica Group S.P.A. & Anr. v. Mify Solutions Pvt. Ltd. & Ors. Decision dt. 12.11.2018 in CS(COMM) 453/2016, Skullcandy, Inc. v. Shri Shyam Telecom & Ors., Decision dt. 12.11.2018 in CS(COMM) 979/2016 and L’Oreal v. Brandworld & Anr. Decision dt. 12.11.2018 in CS(COMM) 980/2016. In the Christian Louboutin case (on the basis of which the other three cases were decided), the Delhi High Court examined the defendant’s (an online marketplace) website and opined that, while the web site had features indicating that it was an intermediary, it also had features uncharacteristic of intermediaries. Among the twenty-one (21) “non-intermediary” factors listed by the court were that the web site provides authenticity guarantees, gives discounts to consumers, promotes its own affiliate companies, and advertises products. These factors, as per the Court takes the web site out of the definition of an intermediary. The Court also noted that if online marketplaces fail to diligently protect a brand owner’s IP, such failure could amount to “conspiring, aiding, abetting or inducing unlawful conduct” and would disqualify such web sites from the safe harbour exemption under India’s laws. By questioning whether an online marketplace is an intermediary on the basis of the way its website is set up, courts are now closely scrutinizing their businesses. While online marketplaces have often claimed intermediary immunity by asserting that they are entirely neutral platforms, they would now need to start acting like entirely neutral platforms as well. Notably, online marketplaces that position their own subsidiaries/affiliates in a manner that prejudices independent sellers should not be so sure of their status as “intermediaries” under India’s IT laws. It will be interesting to see how online marketplaces react to these rulings–will these marketplaces start taking IP complaints filed by brand owners more seriously, or will they appeal these rulings.

It is now possible for trademark and design infringement to be alleged in a single lawsuit. A five-judge bench of the Delhi High Court reaffirmed this no-brainer last month in Carlsberg Breweries v. Som Distilleries and Breweries (Decision dated 14.12.2018 in CS(COMM) 690/2018). However, the path to this common-sense ruling is rife with five years of legal uncertainty resulting from the court’s earlier decision on the issue in 2013 – by a three-judge bench (Mohan Lal v. Sona Paint, 2013 (55) PTC 61 (Del) (FB)). In its 2013 Mohan Lal decision, the Delhi High Court ruled that trademark infringement and design infringement, must initially, be alleged in separate lawsuits and can only, subsequently, be consolidated in a single law suit (with the court’s permission). The court’s 2013 ruling was premised on the approach that trademark infringement and design infringement allegations should, initially, be presumed to be distinct and unrelated wrongdoings (since they are governed by different statutes), and if and only if the complainant can, subsequently, show the court that trial would be expedited by a consolidated suit – consolidating the two suits into one was justifiable. However, in Carlsberg Breweries, a five-judge bench of the court called into question the court’s Mohan Lal decision by asking – Is a composite lawsuit (alleging trademark and design infringement) inadmissible owing to practice rules that identify lawsuits as per the relief claimed? The obvious reason for answering this in the negative is that in composite IP suits – the relief claimed is, generally, an injunction, whereas trademark infringement and design infringement are merely the grounds on which the claim is based. Since the claim is one (albeit on different grounds), the lawsuit must necessarily be one. Besides the above reason, another reason why the court departed from its earlier view was that the 2013 Mohan Lal decision did not discuss the implications of a practice rule that, in fact, encouraged consolidation of lawsuits to expedite trial. The Carlsberg Breweries decision offers a sigh of relief to pending IP suits where injunctions have been claimed on the basis of different kinds of IP violations. These lawsuits are no longer at risk of being rejected merely on the basis that the complainant did not, initially, file separate lawsuits for each kind of IP violation.