Our Associate, Rishikaa discusses “The Nifty Affair of NFTs and Copyright” If the last decade was all about blockchain technology and cryptocurrency, this decade has started with spotlight on another type of digital asset, namely NFTs a.k.a Non-Fungible Tokens. NFTs sent ripples through the art, legal, and technology worlds, when a graphic designer sold a digital collage named ?Everyday: The First 500 Days? for over $69 million. Non-Fungible Token is metadata or code, which is minted on a blockchain and stored in the form of a link, that represents digital work on the Internet. In economics, non-fungible means something that has unique qualities that cannot be replaced or interchanged with anything else. Tokens, on the other hand, are like certificates of ownership for virtual assets. Essentially, NFT is a digitized token that represents real-life objects, such as art, videos, music etc., and is recorded on a blockchain. Due to their characteristic of being one-of-a-kind, unlike other digital assets that are available in abundance, NFTs tend to create a digital shortage. Essentially, NFTs are like digital collectibles. Interestingly, NFTs are capable of representing almost anything, including tweets. Today NFTs are being seen as a mechanism to authenticate ownership of not only the asset they represent, but also physical assets. For instance, the luxury watch company, Breitling, issues digital certificates, that is encoded in an NFT, to authenticate its luxury watches. NFTs have opened new channels for discussion in the legal world, particularly, with respect to copyright, ownership, and moral rights of artists. Firstly, it is essential for a person who is minting an NFT, based on a copyrighted work, to seek permission from the owner of such work. This is because copyright law only grants the owner of the copyright with the rights to reproduce, distribute copies, created derivatives, etc. Generally speaking, an NFT only grants ownership of a particular copy of the work that NFT represents and does not give rights over every copy or version of the work or the underlying work itself, that the NFT represents, unless the original copyright holder transfers such rights, in the underlying work, along with the NFT. Creators can use NFTs for expanding their business opportunities as NFTs can be used for selling unique copies of their works and for tracking ownership. The idea is to track and trace digital copies using blockchain technology, which will ultimately help in anti- counterfeiting efforts. A sale of an NFT would prove both creation and copyright ownership. Creators may also use NFTs to provide certain benefits such as early access or merchandise to fans/buyers who may purchase the work distributed on an NFT blockchain network. But where does it leave the buyer of the NFT? As noted above, NFTs are like digital collectibles with very limited rights. At most, an NFT holder can display a purchased work in a limited capacity or transfer the NFT by way of sale. However, given the non-fungible nature, the NFT holder cannot produce additional copies of the work. A purchaser of an NFT can utilize the copyrighted work if he/she obtains a license from the creator or the copyright owner of the work. Such use of the copyrighted work may be extensively governed by the terms of the NFT license as has been seen in the cases of CryptoKitties license or the NBA Top Shop license. While NFTs are in vogue these days, many skeptics believe that its popularity will eventually fade away. One of the reasons for such skepticism is that no one knows how sustainable the NFT model is for protection and ownership of copyrighted work. Too many questions are yet to be answered. For example, what does an NFT represent if the original work gets destroyed, like in the case of a picture of Banksy?s artwork, burnt during live streaming, that was later attached to an NFT and sold during an auction? Would this infringe the moral rights of an artist? Another major concern that has been raised is in respect of piracy. While NFTs may help in controlling counterfeits, there are a number of risks involved with NFTs, such as forgery, false claims of ownership, uploading infringed copyrights on NFTs etc., primarily because there are no checks in place to ensure rightful creation and ownership. Having said the above, there is no doubt that NFTs have opened a new world of possibilities for a large group of people. Only time will tell if NFTs are just a fad or are here to stay.

Our Associate, Anand Kumar discusses “Exercise Diligence And Show Bonafide Before Fixing Third Party Marks: Bombay High Court “ On June 16, 2021, the Bombay High Court, in Pidilite Industries Ltd. vs. Q-Chem Sealers Pvt Ltd., ordered Q-Chem Sealers Pvt Ltd. (Defendant) to stop using the marks LWC, URP, labels bearing these marks and unique design of DR FIXIT containers. Pidilite Industries Ltd. (?Plaintiff?) is a well-known manufacturer of water proofing chemicals, construction, bending chemicals, paint chemicals, adhesives, sealants, etc. since 1969 and sells a range of such goods under various marks, including, LW+, LW, URP, DR. FIXIT. The Plaintiff alleged that the Defendant is using, without authorization, the LW, URP marks and LW/LW+ labels. The Plaintiff also alleged that the Defendant has attempted to pirate the design of the DR. FIXIT container shown below. The Court noted that the DR. FIXIT container has a visual appeal, and its distinctive shape is not functional. Further, the Court observed that container has elevated ridges or grooves on both sides. There is a unique yellow handle for the DR FIXIT products with a yellow cap. For the URP products the handle and cap are in orange. As per the Court, these colour combinations are distinctive. The Court also took note of the Plaintiff?s registrations for the marks LW+, LW and URP and the substantial sales of products sold under the marks. The Court referred to the table of comparison for the rival parties? marks, labels and designs of the containers set out below: As per the Court, even prima facie there is no meaningful distinction between the design of the Defendant?s container and the Plaintiff?s DR. FIXIT container. Accordingly, the question of the Defendant?s bonafides in adopting the above marks and the labels looms large and speaks volume about the trade mark and copyright violations. The Court was of the view that the Defendant?s container bore the mark LWC which was deceptively similar to the Plaintiff?s LW/LW+ marks. The container also bore a label that was a substantial reproduction and an impermissible, colourable imitation of the Plaintiff?s LW/LW+ labels and the artistic works in those labels. Moreover, a substantially similar blue, white and yellow colour scheme, layout and distinctive lettering was used. Then there was another product that bore mark URP/URP-SBR, which was undoubtedly deceptively similar to the Plaintiff?s URP mark. Most strikingly, the Court noted that the Defendant was using storage cans that were clearly a colourable imitation of, and deceptively similar to, the Plaintiff?s DR. FIXIT containers: an identical shape, shoulders, ridges on the side, cap and surface patterns. Based on the aforesaid analysis and comparison, the Court concluded that it is not inconceivable that the Defendant lacked bonafides. Hence, the Court held that there is a very strong prima facie case on infringement and passing-off grounds for all three forms of intellectual property that the Plaintiff seeks to protect viz., trademark, copyright and design. Accordingly, the Court granted an ad-interim order restraining the Defendant from dealing in the similar/identical goods bearing the marks and labels identical/similar to the Plaintiff?s marks and labels and the shape/design of the containers similar to the Plaintiff?s distinctive DR. FIXIT containers. Citation: Pidilite Industries Ltd vs. Q-Chem Sealers Pvt Ltd (COMMERCIAL IP SUIT (L) NO. 11236 OF 2021), decision dt. June 16, 2021 by Bombay High Court.

Our Associate, Nikita Lakhani discusses “Enforcement of Anti-Suit Injunction of Foreign Court Denied in an Anti-Anti-Suit Injunction” Recently the Delhi High Court, in Interdigital Technology Corporation & Ors. v. Xiaomi Corporation & Ors., granted an anti- anti-suit injunction, directing Xiaomi to indemnify Interdigital against any penalty imposed by the Wuhan Immediate People’s Court, where the Defendant sued InterDigital over the royalty rate-setting and license dispute of Standard Essential Patents (“SEP”). The case of the plaintiff was that the defendants had filed a suit for determination of rate according to FRAND terms for the grant of licenses of certain SEPs, held by the plaintiff and registered in their name when, the defendants manufactured cellular handsets with 3G and 4G technology which contains SEP’s as held by the Plaintiff. As such, the plaintiffs have not sought an absolute injunction, against the defendants, from using the SEPs held by the plaintiffs, but have sought for an injunction in the event the defendants are not willing to obtain licences, from the plaintiffs, for use of the said SEPs, at FRAND royalty rates. The Wuhan Court had directed Interdigital to withdraw the application in relation to its patent infringement claim before the Delhi High Court or else had to pay a penalty of RMB 1 million yuan per day. First, the court clarified that it was not sitting in appeal against the order passed by the Wuhan Court. However, the plaintiff alleged that it had the authority to injunct the impugned order dated September 23, 2020 passed by the Wuhan Court and in stating so relied on numerous prior rulings which held that if the grant of anti-suit injunction would directly interfere with proceedings in a foreign court, the Indian court must slow down. However, grant of injunction of the order by the Wuhan Court would not adversely impact the complaint filed by defendants in Wuhan. The single bench of Justice C. Hari Shankar concluded that it is impermissible for a Court in one sovereign jurisdiction to injunct the party before it from pursuing its cause against infringement of its intellectual property before another sovereign jurisdiction where such court is the only court competent to adjudicate upon the claim of infringement, unless the continuation of infringement proceedings are vexatious or oppressive to the proceedings before the former injuncting court. It was observed that an anti-enforcement injunction is imperative in this case in view of the rights of the citizen of our country to legal redressal being sacred and fundamental and cannot be sacrificed as also emphasized by Our Constitution in granting “justice, social, economic and political” to every citizen. The court also pointed that the proceedings were not transparent in this case as no copy of anti-suit injunction application, filed by the defendants in the Wuhan Court, was ever furnished by them to the plaintiff. Further, even if the notice was issued to the plaintiff, the grant of the anti-suit injunction to the defendant would not be justified. The court observed that the cause of action arose in India as the proceedings before it were of perceived infringement of six specific Indian patents. The court observed that this aspect was “completely overlooked” by the Wuhan Court while observing that the plaintiff was trying to exclude the jurisdiction of Wuhan Court by initiating proceedings before the Hon’ble Court. On the basis of the above, the Delhi High Court restrained the defendants from enforcing the order dated September 23, 2020 by the Wuhan Court against the plaintiffs. Further, the Court went on to conclude that if the Wuhan Court takes action against the plaintiff towards the deposit of RMB 1 million per day, the defendant would have to deposit the same before the Delhi High Court and the plaintiff shall be entitled, on such deposit, to withdraw the said amount, or have been transferred to the account of the plaintiffs.

Our Associate, Alvin Antony discusses “Scope of Arbitration in Matters Involving Intellectual Property Rights” Arbitration is a popular dispute resolution mechanism around the world. Intellectual Property Rights (“IPRs”) is a subject that has not typically been the subject of arbitration in the years gone by. Recently, however, the Hon’ble High Court of Delhi in Hero Electric Vehicles Private Limited and Another vs Lectro E-Mobility Private Limited and Another (2021 SCC Online Del 1058) dealt with the circumstances in which matters involving IPRs can be subjected to arbitration proceedings. The plaintiffs, Hero Electric Vehicles Private Limited and others, filed a suit to restrain the defendants, Lectro E-Mobility Private Limited and others, from using the HERO trade mark on and in relation to electric bikes with throttle. The Defendants requested the court to refer the matter to arbitration on the basis of a Family Settlement Agreement (“FSA”) and Trademark and Name Agreement (“TMNA”), which, collectively, determined the rights of the parties in relation to use of HERO mark. The Defendants claimed that the provisions of FSA and TMNA governed the usage of said mark by parties and the arbitration provisions contained in them would govern the settlement of disputes. Further, these agreements acted as a complete answer and defense to claims between the parties in relation to use of the mark. The court started its analysis by looking into the scope of Section 8 of Arbitration and Conciliation Act 1996. Referring to numerous decisions of the Supreme Court, in particular, the decision in Vidya Drolia vs Durga Trading Corporation ((2021) 2 SCC 1), the court stated the principles that should be considered while determining the question of arbitratbility. As per the court, (a) the entire subject matter should be part of arbitration agreement and cause of action cannot be bifurcated and referred; (b) Section 8 jurisdiction cannot be used to compel third parties to submit to the arbitration proceedings; (c) there is difference between arbitrability of subject matter and arbitrability of claim. The claim may be non-arbitrable due to scope of the arbitration agreement, while the subject matter is normally non-arbitrable if it is non amenable to resolution by arbitration, in law; (d) the matter is non-arbitrable when (i) when the cause of action is not related to subordinate rights in personam arising from rights in rem, (ii) when the cause of action affects third party rights or has erga omnes effect, (iv) when the cause of action is related to the sovereign and public interest functions of the State and (v) subject matter is non-arbitrable by mandatory statutory fiat; (e) Specific instances of non-arbitrable matters include grant and issue of patents and registration of trademarks as they are sovereign or government functions and has erga omnes effect and (f) the courts are only supposed to examine the matter in prima facie manner, i.e., only examine whether there is a valid arbitration agreement and whether the dispute is ex-facie non-arbitrable. In the present matter, there is a valid arbitration agreement between parties as can be observed from FSA and TMNA. Further, in the suit, the remedies are not claimed for defendants using deceptively similar mark, but, rather on the basis of right to use the mark. The essential infraction committed by defendants in this matter will be thus fall under the provisions of FSA and TMNA, and not under the provisions of Trade Marks Act. The dispute in the present case is in relation to rights of use by parties and not in relation to grant or registration of trade marks. Thus, the dispute is in relation to a right in personam that is subordinately arising out of right in rem and hence is referred to arbitration. In conclusion, the Hon’ble High Court has clarified that unless there is clear “chalk and cheese” case of non-arbitrability, which in case of IPR will be normally related to determination and grant of rights by relevant governmental authorities, matters ought to referred to arbitration proceedings if there is a valid arbitration agreement. Citation: Hero Electric Vehicles Private Limited and Another vs Lectro E-Mobility Private Limited and Another (2021 SCC Online Del 1058), Judgement dt. 02.03.21 by Delhi High Court.

Our Associate Tanvi Srivastava discusses “Delhi High Court Dismisses an Injunction Application Filed by Dr. Reddy’s Laboratories” Recently the Delhi High Court dismissed an application filed by Dr. Reddy’s Laboratories Limited (“Plaintiff”), seeking an injunction against the release of a feature film named ‘Haathi Mere Saathi’ (hereinafter “Film”) by Eros International Media Limited and Anr (“Defendants”). The Plaintiff’s application alleged that the Film disparages the Plaintiff’s registered trade mark/ brand DRL. The Plaintiff is a multinational pharmaceutical company and the registered proprietor of the word mark DRL for goods in Class 5. The Plaintiff asserted that a large segment of the population knows its business as DRL. Eros International Media Limited (Defendant No. 1) is a leading global motion movie production and distribution company that has produced and released the Film which has been directed by Prabhu Solomo (Defendant No. 2). The plot of the Film centers on the destruction of an elephant corridor and habitat by an entity named DRL so that it can build a DRL Township. The Plaintiff contended that the Defendants’ use of DRL is derogatory/ disparaging because it shows its brand, DRL in a poor light. The Plaintiff argued that the deliberate negative portrayal of DRL in the Film would seriously tarnish its impeccable reputation as an environmentally conscious company and hamper the public trust gained by it through years of Corporate Social Responsibility activities. The Plaintiff further submitted that in response to the legal notice issued by it, the Defendants have contended that DRL refers to a fictional corporate entity, named Drishti Refineries Limited. Accordingly, the Defendants should use the full name, Drishti Refineries Limited, in the Film instead of the acronym DRL. Alternatively, the acronym, DRL, should be used in conjunction with the name Drishti Refineries Limited. Use of the mark DRL by the Defendants would not only amount to infringement of the registered trade mark under Sections 29(6) and 29(8) of the Trade Marks Act, 1999 (hereinafter “the Act”), but would also amount to passing-off. On the other hand, the Defendants argued that the Plaintiff is not entitled to claim any monopoly over the English letters ‘D-R-L’ beyond its purported limited right under the Act. Use of the letters DRL is for a made-up entity in a work of fiction and that cannot possibly amount to infringement of the trade mark DRL. In cases of advertising under trade mark law, comparison is permissible as long as it is not disparaging. Thus, the use of a trade mark as a fictional term in the Film is definitely permitted, and by no means it is considered disparaging. Further, there was delay on the part of the Plaintiff in approaching the Court. As per Plaintiff’s own case, it discovered the portrayal/ use of the mark DRL in the official teaser of the movie in the last week of February 2020, which prompted it to issue a notice dated March 3, 2020, calling upon the Defendants to immediately delete the relevant scenes in the movie. Thereafter, the Plaintiff observed silence for a whole year and now, just before the release of the movie, slated for March 26, 2021, the Plaintiff has filed the present suit for injunction. As per the Defendants, anyone who approaches the Court at the eleventh hour seeking interim injunction against the release of a movie, is disentitled to such relief. The Defendants further presented before the Court a larger issue regarding the fundamental right of the Defendants, as enshrined under Article 19(1)(a) of the Constitution of India for free speech and expression. Freedom of speech certainly allows the Defendant to use the acronym/ letters DRL in creative fictional works. The Film is not a documentary, but a feature film and does not relate to pharmaceutical companies in the slightest. The Defendants argue that at most, the Plaintiff can contend that this action of the Defendants amounts to defamation of the Plaintiff. DRL has been used at several instances in the Film and it would be impracticable, if not next to impossible to edit the entire movie at such a short notice, since the movie is due to release within a week. The Court was of the opinion that the Plaintiff cannot claim monopoly over the letters D, R and L based upon registration in one class. There is no material for the Court to hold that DRL is a synonym to the Plaintiff’s corporate name. The Court found no similarity between the Plaintiff’s business and the use of the word DRL in the Film. Moreover, the Defendants have assured the Court that the movie is preceded by a disclaimer to the effect that it is a work of fiction and any resemblance to any real person is purely coincidental. As regards to the delay on the part of the Plaintiff in approaching the Court, it is noted that the cause of action arose as early as February 2020 and the present suit has been filed after nearly one year of first coming into the knowledge of the infringing action. This delay disentitles the Plaintiff of any discretionary relief of injunction. Thus, based on the above, the Court was of the opinion that the Plaintiff has failed to meet the three-pronged test for grant of injunction, and does not have a prima facie case in its favor. The balance of convenience lies in the favor of the Defendants. Therefore, the Court ruled that the present application is devoid of any merits and is dismissed accordingly. Citation: Dr. Reddy’s Laboratories Limited v. Eros International Media Limited & Anr., CS(COMM) 126/2021, decision dt. March 23, 2021 by Delhi High Court.

Our Associate, Nikita Lakhani discusses “Jewellery and Intellectual Property: A Conflict Between Copyright, Designs and Trademarks“ The problem with jewellery designs being easily replicated or copied has translated into a growing need for intellectual property protection of such designs. Here, it is pertinent to understand the difference between an artistic work under copyright law and a design under the Designs Act, 2000. Section 2(c) of the Copyright Act, 1957 (“Copyright Act”) defines an ‘artistic work’ as including, among other things, a drawing and any work of artistic craftmanship. Section 2(d) of the Designs Act, 2000 (“Designs Act”) defines ‘design’ as ‘features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye.’ It is pertinent to note that ‘design’ excludes any artistic work as defined in the Copyright Act. IP law does provide for protection of jewellery designs through both the Copyright Act and the Designs Act with a few differences. The Copyright Act protects sketches of a design, whereas the Designs Act protects the representation and pattern of article or articles. However, the Copyright Act states that if a work can be registered as a design under the Designs Act, then it cannot be granted protection under the Copyright Act. Furthermore, the Copyright Act states that if a design eligible for protection under Designs Act has not been registered, then if the product with the design is made more than 50 times the copyright protection ceases. In Pranda Jewelery v. Aarya 24k, the issue of copyright infringement in case of gold sheet articles of deities and religious symbols was examined. The Bombay High Court held that the drawings, as well as, its reproduction in gold plate three dimensional form could be granted protection under the Copyright Act. The reason being that something that is being produced is an ‘artistic work’ itself. Further, the Hon’ble Court stated that the plaintiffs hold a copyright in the reproduction of drawings in the form of gold plates. It was further explained that even if they are designs, and not artistic works, it has not been shown that there are fifty applications. However, in case of Ritika Private Limited v Biba Apparels, a piece of clothing which was reproduced fifty times was not considered to be eligible for protection as it was reproduced through an industrial process. Jewellery could also be granted protection as a shape mark in India. In order to be protected as a shape mark, the owner must demonstrate that the shape is not necessary to obtain a technical result. However, in case of three-dimensional marks, the fine line between a shape mark and design law begins to blur. Ultimately, it appears that there could not be one straightforward answer when it comes to IP protection of jewellery. However, a jewellery designer must consider the number of articles to be manufactured or sold and the publication must be made only in an event the designer does not wish to register the jewellery under Designs Act as it cannot fall into public domain before its registration.

Our Associate, Rishikaa discusses “Cutting flag themed cake – patriotism or hyper-nationalism?” A country’s national flag is among the most important insignia of that country’s identity. A national flag evokes a bundle of feelings ranging from pride and solidarity to the extent that an insult of the flag is equated with desacralization. Recently, the Madras High Court, in State v. D. Senthilkumar Crl. O.P. No. 15656 of 2020, addressed the issue of whether cutting of a cake with a tricolour theme amounts to its insult. The decision of the Hon’ble Court emanated from a criminal complaint against the attendees of a Christmas celebration where an Indian National Flag-themed cake, with a tricolor Indian map outline and an Ashok Chakra, was allegedly cut, distributed, and consumed. It was alleged that the cake’s design represented the Indian National Flag and the act of cutting it amounted to an offence under Section 2 of the Prevention of Insults to National Honour Act, 1971 (hereinafter the “Honour Act”). Section 2 of the Honour Act, and the explanations appended to it, list the acts that would be considered disrespectful to the National Flag and provide a penalty for insulting the National Flag. As per the Hon’ble Court, to constitute an offence under Section 2 of the Honour Act, it must be clearly established that there was mens reas (intention) and actus reas (action). The mens reas element would be satisfied if it is shown that there was an intention to insult the National Flag and actus reas element would be satisfied if it can be proven that there was an act of such insult. Citing extracts from the Constituent Assembly Debates, the Rig Veda, and quoting personalities such as Ralph Waldo Emerson, Nani Palkhiwala as well as Rabindranath Tagore, the Single Judge Bench of the Court observed that patriotism cannot be determined by a gross physical act. Rather, the intention behind an act is the true test of patriotism. While emphasizing the importance of nationalism in a democracy, the Court took a step further and commented on the need for rejecting hyper nationalism. It observed that excessive nationalism goes against the very spirit of India and would be an obstacle in its prosperity and past glory. The Court explained its observation with an illustration of how the National Flag is pinned to people’s clothes on the occasions of Independence Day and Republic Day but is dumped as wastepaper after the participants leave the venues of celebrations. This does not amount to insult and cannot be considered an offence under Section 2 of the Honour Act. The Court said that giving a broad meaning to the word ‘insult’ would make people uncomfortable in handling the National Flag. The Court opined that “The symbolisation of national pride is not synonymous with patriotism,…” Applying the above principles to the instant case, the Hon’ble Court stated that it is pertinent to determine the intention behind cutting a National Flag-themed cake. If the intention was to ridicule the National Flag, only then would such an act satisfy both the elements and be considered an offence. However, in the instant case, the attendees of the Christmas celebration left the premises with a feeling of pride and the purpose of using the National Flag is achieved once such a feeling is created in the minds of the participants. In view of the above, the Court ruled that cutting a cake depicting the National Flag cannot be construed as an insult to the National Flag. Consequently, such cutting does not amount to an offence under Section 2 of the Honour Act.

Our Associate, Vishesh Kumar discusses “Regulations on Online Speech: Excessive Censorship or Much Needed?” Over the past few months, there have been calls from various sections of society for censuring online platforms and putting in a more regulated framework for content on the Internet. While the Internet has historically been a bastion for free speech, the government recently bought in the Information Technology Rules, 2021 with an aim to regulate, inter alia, social media platforms and online curated content websites. Under the new rules, social media platforms have been divided into ‘Social Media Intermediaries’ and ‘Significant Social Media Intermediaries’ on the basis of the number of users. Further, Significant Social Media Intermediaries have been asked to, as a part of due diligence, appoint a Chief Compliance Officer to ensure compliance with the rules and a Resident Grievance Officer to deal with the complaints in an expedited manner. Intermediaries have further been asked to remove, within thirty-six hours of a court order or appropriate government agency, ‘objectionable content’ from its website. In addition to the above, intermediaries will also need to preserve necessary evidence of such content for a minimum of one hundred and eighty days to assist the lawful authorities. The rules define objectionable content quite broadly (which is problematic) such that it covers information ranging from those prohibited by law to those relating to public order, decency, or morality. However, no tests have been laid down to define what constitutes ‘decency’ or ‘morality’ under the rules thus vesting discretionary powers in the hands of the authority. In addition to the above, in a move that has been specifically designed to protect sexual exploitation online, intermediaries have been asked to disable any content that, prima facie appears to be non-consensual and sexual in nature, that has been transmitted with an intent to harass, threaten or abuse within twenty-four hours of receipt of the complaint. The consequence of all of the above is that such intermediaries, in addition to publishers of news content and online curated content, will now be governed by a three-level regulating mechanism. While Level 1 would be self-regulating measures of the above-noted entities such as grievance officers, Level 2 would be a self-regulated independent body that should be constituted by such entities which shall be headed by a retired judge of the Supreme Court or a High Court and include experts from field of media, broadcasting, etc. At Level 3 would be the oversight mechanism of the Ministry of Information and Broadcasting that shall consist of a Grievance Portal and an inter-department committee to hear such grievances. This Level shall also be responsible for issuing appropriate guidelines and advisories. Furthermore, in order to ensure transparency, all entities covered under the rules shall make full disclosure of all the grievances it received and how these grievances were disposed to the Ministry. Lastly, as regards Online Curated Content, all content published online shall be classified on the basis of the nature and type of content into U, U/A 7+, U/A 13+, U/A 16+ and A. Such classification shall be prominently displayed and, in a move that may seem a little difficult to execute due to the sheer population of the country, the publisher of such content shall ensure proper measures are in place to restrict the dissemination of content rated ‘A’ to minors. The rules also go on to talk about the different parameters that should be considered while classifying the content into the ratings noted above such as target audience, discrimination, imitable behaviour, language, nudity, violence, etc. However, as we speak, the Delhi High Court has already issued notice to the central government in a plea challenging the above rules on the ground that it regulates digital news media. Even if the initial hurdle is passed and the rules are widely implemented, it would be interesting to see how online curated content websites and social media websites enforce the rules in light of the obvious hurdles of the humongous existing user base which may eventually lead to a backlog of complaints/grievances. Further, what remains to be seen is whether these rules eventually pave the way for censorship of online content similar to the censorship of movies. Till then, I would recommend you re-watch your favorite foul-mouthed web series just in case the expletives are beeped out by the time the next season rolls around.

Our Associate, Alvin Antony discusses “Everyone wants to be a YOGI!” The word ‘YOGI’ has caught the attention of people from time to time. More often than not, parties who wish to provide an ‘ayurvedic’ outlook to their products tend to adopt the mark “YOGI” in some or other manner. Recently, Bombay High Court, in Yogi Ayurvedic Products Pvt. Ltd v. The Yogi & Ors. IP SUIT (L) No. 1604/2021, granted an ad-interim injunction against the defendant, The Yogi and Ors., restraining it from using the mark THE YOGI on and in relation to ayurvedic and herbal preparations. The plaintiff, Yogi Ayurvedic Products Pvt. Ltd, relied on its statutory rights in the YOGI-formative marks in various classes, including, Classes 3 and 5. The Court noted that the expression YOGI was the essential, prominent, central, leading, and memorable feature of the plaintiff’s YOGI-formative marks. In a bid to assert its common law rights, goodwill and reputation in the YOGI-formative marks, the plaintiff presented evidence of its turnover under, and advertisement expenses incurred on, and in relation to ayurvedic preparations since 1999. According to the plaintiff, the defendant had been using the mark THE YOGI as part of the domain name, THEYOGI.STORE, and was selling the goods bearing the mark THE YOGI through its e-commerce website. The defendant had also filed applications for the registration of the mark THE YOGI in Classes 3 and 5. In its observation on the strength of distinctiveness of the plaintiff’s YOGI-formative marks, the Court noted that the word YOGI has a common meaning in most Indian vernacular languages. Nonetheless, this does not, on its own, make the word YOGI descriptive of the product. The conjunction of word YOGI and the name of the goods cannot be said to be one where the word describes the nature of the goods or even its origin. According to the Court, the plaintiff’s argument that the word YOGI used in conjunction with the “ayurvedic and herbal preparations” has attained distinctiveness within the plaintiff’s market segment and, therefore, the plaintiff can claim the exclusivity in the mark YOGI in relation to these goods. The Court remarked that the plaintiff may never be able to get a restraint against the world at large from using the word YOGI in relation to goods, such as, laptops, computers, automobiles. However, the plaintiff can definitely enforce its rights in the mark YOGI within the class and the market segment that it occupies. According to the Court, there is no reason why the registration, once granted, should not be entitled to statutory protection. On the point of comparison of rival marks and goods, the Court emphasised on the universal test of comparison and remarked that the confusion should be ascertained from the point of view of consumer of imperfect recollection and average intelligence. Accordingly, the Court concluded that there was sufficient similarity between the rival marks and goods. Shedding light on the issue of passing-off, the Court made some important observations regarding ‘Classic Trinity Test’, that comprises of (a) goodwill owned by a claimant; (b) misrepresentation and (c) damage to the goodwill of the claimant. As per the Court, fraud on the part of defendant is not a mandatory element in passing-off action. The plaintiff is merely required to show the likelihood of false representation on the part of public that lead them to believe that the goods or services of the defendant are emanating from, and/or associated with the plaintiff. As regards the element of damage, the Court clarified that the plaintiff need not prove actual or special damage and a reasonable foreseeability of probable damage to the goodwill is sufficient to invoke the passing-off action. In light of the aforesaid findings and observations, the Court held that the plaintiff has made out a prima facie case and the balance of convenience also lays in its favour. Accordingly, the Court granted an ex-parte ad-interim injunction against the defendant restraining it from using the mark THE YOGI and/or any other marks similar to the plaintiff’s mark in any manner whatsoever. Citation: Yogi Ayurvedic Products Pvt. Ltd v. The Yogi & Ors. IP SUIT (L) No. 1604/2021, Order dt. 08.02.21 by Bombay High Court.

Our Associate, Tanvi Srivastava discusses “Madras High Court Sets Aside Injunction Order Against Patanjali Ayurved” Recently, the Madras High Court set aside an order of interim injunction granted to Arudra Engineers Pvt. Ltd. (“Respondent/Plaintiff) against Patanjali Ayurveda Ltd. and Divya Yog Mandir Trust (“Appellant/Defendant”) in relation to the Appellant/Defendant’s use of the mark CORONIL for tablets to prevent Covid-19 infection. In the first instance, the Respondent/Plaintiff had argued that the Appellant/Defendant’s use of the mark CORONIL for tablets is liable to be restrained under Section 29 (4) of the Trade Marks Act, 1999 (hereinafter the “Act”) because such use is without due cause and detrimental to the reputation of the Respondent/Plaintiff’s registered trade marks. In the appeal, counsel for the Appellant/Defendant contended that the rival goods of the respective parties were dissimilar and covered in two different classes of Nice Classification viz. Class 1 and 5, respectively. While the Respondent/Plaintiff’s product was a chemical agent that was used to sanitise and clean heavy industrial machinery with minimum corrosion, the Appellant/Defendant was selling medicinal tablet which served as an immunity booster to prevent Covid-19 infection. Counsel for the Appellant/Defendant further contended that owing to the dissimilarity of the rival goods, the Respondent/Plaintiff must satisfy all the essentials of the Section 29 (4) of the Act in order to make out a case for grant of injunctions. As per the Appellant/Defendant, the rival marks were not similar since the Respondent/Plaintiff had registration for the composite mark (shown below) (comprising of the three elements, namely, (a) droplet symbol with capital letter “A” inscribed therein, (b) the name ‘CORONIL’ and (c) alpha numerals, namely, “92 B” and “213 SPL” across a black background) and not on the individual components. On the other hand, the Appellant/Defendant were using the word mark CORONIL. According to the court, the first question that required consideration was whether Section 29 (4) of the Act could have been invoked by the Respondent/Plaintiff in this case or not. The court observed that the Respondent/Plaintiff had neither applied for nor registered the word “CORONIL” as a word mark even though it was an invented word and a prima facie distinctive word. Instead, the Respondent/Plaintiff had registered the composite mark, consisting of a device element, word “CORONIL” and alpha numerals, namely, “92 B” and “213 SPL”. Counsel for the Respondent/Plaintiff contended that the Respondent/Plaintiff has disclaimed rights in the alpha numerals, namely, “92 B” and “213 SPL” before the Registry. Therefore, the Respondent/Plaintiff has exclusive monopoly over the remaining word, namely, CORONIL. It follows that the Respondent/Plaintiff is entitled to invoke their statutory rights under the Act. However, refuting the contentions of the counsel for the Respondent/Plaintiff, the court observed that the Respondent/Plaintiff cannot claim exclusive rights and monopoly on any part of the composite mark unless each element and/or the part of the composite mark is subject of separate application/registration as per Section 17 of the Act. According to the court, protection is only afforded to the entire trade mark as registered, and not to mere parts of the trade mark. In the instant case, registration has been obtained by the Respondent/Plaintiff over the label with the words and alpha numeral CORONIL 92B and CORONIL 213 SPL as a composite mark and not as a word for “CORONIL” as envisaged under Section 15 of the Act. Emphasizing the settled position of law, the court observed that when each part of a label mark is capable of being individually registered, it cannot be dissected and split up into its component parts for a grant of injunction. It further clarified that the position would have been different if the Respondent/Plaintiff had obtained a registration for the word “CORONIL” or any other word which was phonetically similar or identical with the aforesaid word. Consequently, based on the aforesaid findings and observation, the court held that the Respondent/Plaintiff had failed to establish a prima facie case for the purpose of grant of interim relief under Section 29(4) of the Act and, set aside the order passed by the learned single judge. Citation: Patanjali Ayurveda Ltd. & Anr. v. Arudra Engineers Pvt. Ltd., O.S.A No. 169 of 2020, decision dt. February 2, 2021 by Madras High Court.