Recently, the Bombay High Court granted an ad-interim ex-parte injunction in favour of Franco Indian Pharmaceuticals Pvt. Ltd. (“Plaintiff”) restricting Juzer Mukhiya, proprietor of Franco Remedies & Anr. (“Defendants”) from using the trade marks FRANCO and FRANCO REMEDIES or any other mark deceptively similar to the Plaintiff’s trade name, in relation to medicinal and pharmaceutical preparations and/or as part of their trading/corporate name. The Plaintiff owned a trade mark registration for FRANCO-INDIAN PHARMACEUTICALS PVT LTD Device since 1959 in Class 5. It also had websites with domain names comprising of the words FRANCO-INDIAN. In July 2021, the Plaintiff came across Defendants’ capsules bearing the mark FRANCO. The Defendants were also using FRANCO-REMEDIES as a trading name and had applied for registration of the mark FRANCO-REMEDIES Device.  The court held that FRANCO is a distinctive and coined mark, which was conceived and adopted in 1959 and used by the Plaintiff as a part of its trading name. The court further held that it is well-settled that a corporate name has many features of a trade mark and the statute itself now explicitly recognizes this. Thus, the court held that the Plaintiff had “safely” made out a sufficient prima facie case and the balance of convenience is with them. Accordingly, the court passed an order in the Plaintiff’s favour. 

Recently, Arya Book Depot, being the owner of the rights in the original literary work titled “BULL’S EYE-Business Studies Mastering Business Case Studies” sued Edurev Solutions Pvt. Ltd., alleging copyright infringement. The plaintiff claimed that the first edition of the above-noted book was published in the year 2016-17 and the latest edition was published in 2021. As per the plaintiff the defendant is operating a website located at http://www.edurev.in, wherein, it has blatantly plagiarized the contents of the above-noted literary work. The plaintiff drew the attention of the court to the fact that all the chapters, diagrams, problems, solutions etc. on the defendant’s website have been copied verbatim from the plaintiff’s copyrighted literary work. The Delhi High Court held that a prima facie case had been made out and that the balance of convenience lies in the plaintiff’s favour. Accordingly, an ex parte order was passed by the Court restraining the defendant from publishing on its website or on any other platforms, the contents of the above-noted literary work till the next date of hearing.

Recently, S.S. Appliances Pvt. Ltd. & Anr. (“Plaintiffs”) sued S.N. Raju (“Defendant”), seeking to restrain the Defendant from infringing the Plaintiffs’ trademark, KENT OIL METER. The Plaintiffs were using the mark KENT OIL METER on/in relation to meters/instruments for conservation and test of oil/petroleum products and as a part of their trading name and style since 1988. The Plaintiffs also owned a registration for the mark KENT OIL METERS Design in Class 9 dating back to 1994. The Plaintiffs claimed that upon becoming aware of the Defendant’s use of mark, KENT METERS Design, in July 2020, they sent a notice to the latter demanding complete cessation of use of the infringing mark. Since Plaintiffs’ market search didn’t reveal goods bearing the Defendant’s mark, the Plaintiffs assumed that the Defendant had complied with the demands set out in the notice and had abandoned his mark. However, later the Defendant filed two applications at the Trade Marks Registry seeking registration of the infringing mark in Classes 7 and 9 and also resumed the sale of his products under the KENT METERS Design mark. Comparing the rival marks, the court opined that the Defendant’s mark is similar to the Plaintiffs’ mark and that the Plaintiffs had established a prima facie case in their favor. Accordingly, the court passed an ex parte ad interim order restraining the Defendant from manufacturing, selling, dealing etc. in identical/cognate goods/services under the mark KENT METERS or any other mark identical/deceptively similar to the Plaintiffs’ mark till the next hearing.

Recently, the well-known designer, Sabyasachi Mukherjee, moved court for an order of injunction in a design piracy suit restraining the defendants, Asiana Couture & Ors., from infringing on the plaintiff’s registered designs for lehengas. Sabyasachi claimed that its registered designs attest to novelty residing in the surface ornamentation of the garment set and that the defendants are marketing an imitation of the registered designs. The court was of the view that, prima facie, on a plain viewing, the designs of the defendants appear to be an obvious imitation of Sabyasachi’s designs and an attempt to link the products of the defendants with those of the famous clothing label. As such, the court restrained the defendants from manufacturing, applying/causing to be applied, selling, offering for sale, importing, advertising/publishing, directly or indirectly, dealing in the infringing garments or any other garments or similar article which are identical and/or obvious/fraudulent imitation of the plaintiff’s registered designs. It also directed the defendants to remove all the infringing designs and garments from all online platforms, including #Facebook, #Instagram and other third-party websites.

Recently, in a suit filed by Blue Heaven Cosmetics Pvt Ltd. (“Plaintiff”), the Delhi High Court restrained the defendants from using the Plaintiff’s BLUE HEAVEN trade marks/ copyright/ trade dress/ overall get up, etc. The Plaintiff averred to be the prior user and registered proprietor of various BLUE HEAVEN formative marks in relation to cosmetics products. The Plaintiff also claimed to have filed applications for the trade dress for products sold under the BLUE HEAVEN mark. The Plaintiff alleged that the defendant is using an exact replica of the Plaintiff’s trade dress for its products sold under the BLUE FASHION mark thus causing damage to the Plaintiff’s reputation and diluting the well-known mark of the Plaintiff.  The Plaintiff also stated that it has no objection to use of the defendant’s BLUE FASHION mark as long as it does not use the infringing trade dress/get-up. On the basis of comparison between the rival trade dress, stylization etc., the Court held that the Plaintiff had established a prima facie case and the balance of convenience was in its favour. Accordingly, the court granted an ex-parte injunction in favour of the Plaintiff, restraining the defendants from making, selling, advertising and dealing in any manner cosmetic goods and related services in the infringing trade dress/get-up. However, the Court permitted the defendant to use its BLUE FASHION mark strictly in the terms of its registration.

Recently, Reckitt Benckiser India Private Limited (“Plaintiff”) filed a suit at the Delhi High Court seeking a permanent injunction restraining Hindustan Unilever Limited (“Defendant”) from telecasting or broadcasting five advertisements for its toilet cleaner #DOMEX, which allegedly disparaged the goodwill and reputation of the Plaintiff and its products under the mark #HARPIC. The court, while examining the principles of comparative advertising, observed that any advertisement that is released must not be false, misleading, unfair or deceptive. The ‘grey areas’ in an advertisement need not necessarily be taken as serious representation of facts but only as glorifying one‘s product. However, while doing so one cannot make a statement that the product of their rival party is bad, inferior or undesirable as that would lead to denigrating or defaming the goods of the other. The court held that the first advertisement of the Defendant simply claimed that DOMEX was a better solution, and it did not denigrate, disparage or malign the product of the plaintiff. The court further opined that an advertiser must be given enough room to play around in the advertisements and a plaintiff should not be hypersensitive to object every such advertisement. However, as regards the remaining four advertisements, the court observed that the shape of the bottle that the Defendant had used in these advertisements, claiming such bottle to be an ordinary toilet cleaner without any proof or evidence of such statement or depiction, prima facie was deceptively similar to the registered mark of the Plaintiff. Thus, the court held that these advertisements seek to disparage, denigrate and malign the product of the Plaintiff and passed an order restraining the Defendant from publishing these four advertisements.

Recently, Western Digital Technologies, Inc. (“Plaintiff”) successfully enforced its rights in the Delhi High Court against entities using infringing domain names and obtained a permanent injunction in its favour. The Plaintiff claimed to have used the WESTERN DIGITAL, WD and MY PASSPORT marks on/in relation to storage devices, software, media players, etc., since the years 1997, 1999 and 2008, respectively. The Plaintiff also averred to be the owner of various domain names incorporating these marks. The Plaintiff stated that it received a consumer complaint informing it that the defendant was impersonating the Plaintiff and claiming to offer consumer support services for the Plaintiff’s products for a fee. The Plaintiff further stated that its review of the infringing website had revealed that the defendant was indeed misleading consumers into believing an association between the parties. As per the Plaintiff, subsequent to the order dated May 27, 2021, by which the Court granted interim relief to the Plaintiff, the infringing domain names were transferred to the Plaintiff by WIPO. However, despite service of summons, the defendant, who is a habitual offender, has not appeared in the proceedings. The Plaintiff prayed that the Court pass an order directing the relevant authority to, upon the Plaintiff approaching it, suspend the infringing domain names with any other domain name extension. Lastly, the Plaintiff prayed that the Court decree the matter in its favour since it was not pressing for costs and/or damages. The Court, in view of the aforesaid, decreed the suit with a permanent injunction in the Plaintiff’s favour.

Recently, the Delhi High Court granted an interim injunction to Khandelwal Edible Oils Ltd. (‘Plaintiff”) against Landsmill Agro Pvt. Ltd. (“Defendant”). The Plaintiff (the registered proprietor and user of the mark CHAKRA in respect of mustard oil and holder of copyright registrations for CHAKRA-branded labels) claimed that the Defendant is selling edible oils under the marks CHAKRA KOLHU, CHAKRIKA & CHAKRESH with a deceptively similar label. It also relied on the Defendant’s admission as to the similarity of the rival marks in a cancellation action it had filed against the Plaintiff’s registration for the CHAKRA mark. The Defendant, in its defense, argued that the word CHAKRA is common to trade as it is descriptive of the manner in which oil is extracted and that the Plaintiff cannot claim monopoly over such a word. It also averred that the CHAKRESH mark is registered in its favor since 2017. The court was of the view that the contentions regarding the descriptive nature of the CHAKRA mark is a matter of trial and that the manner of use of the word CHAKRA in the CHAKRA KOLHU mark on the label used by the Defendant is identical to that of the font, stylization of the Plaintiff’s CHAKRA mark. As such, the court restrained the Defendant from using the CHAKRA KOLHU mark. However, the court gave the Defendant an opportunity to file its reply insofar as the CHAKRIKA and CHAKRESH marks were concerned.

Recently, Hero Electric Vehicles Pvt. Ltd. successfully enforced their rights in the Delhi High Court against a defendant who was infringing upon Hero Electric’s trademarks, copyright and domain name. Hero Electric averred before the court that it owns and has used the marks HERO and HERO ELECTRIC on/in relation to electric vehicles and battery fitted electric products in more than 50 countries, including India and owns/ operates various HERO formative domain names and websites, including http://www.heroelectric.in. Hero Electric claimed that the defendant had adopted a nearly identical trade mark, HERO ELECTRO, which was being used as a corporate name and as part of the defendant’s website http://www.heroelectro.in. As per Hero Electric, the defendant was soliciting dealership enquiries for the sale of electric vehicles, under the mark HERO ELECTRO. Hero Electric also alleged that the defendant’s website was identical to Hero Electric’s in terms of the user interface, texts, pictures and layout, thereby infringing upon Hero Electric’s copyright. The Court, in view of the aforesaid, opined that Hero Electric had established a prima facie case in its favor. The Court passed an interim order restraining the defendant from using the infringing mark, domain name and website till the next date of hearing. Recently, Hero Electric Vehicles Pvt. Ltd. successfully enforced their rights in the Delhi High Court against a defendant who was infringing upon Hero Electric’s trademarks, copyright and domain name. Hero Electric averred before the court that it owns and has used the marks HERO and HERO ELECTRIC on/in relation to electric vehicles and battery fitted electric products in more than 50 countries, including India and owns/ operates various HERO formative domain names and websites, including http://www.heroelectric.in. Hero Electric claimed that the defendant had adopted a nearly identical trade mark, HERO ELECTRO, which was being used as a corporate name and as part of the defendant’s website http://www.heroelectro.in. As per Hero Electric, the defendant was soliciting dealership enquiries for the sale of electric vehicles, under the mark HERO ELECTRO. Hero Electric also alleged that the defendant’s website was identical to Hero Electric’s in terms of the user interface, texts, pictures and layout, thereby infringing upon Hero Electric’s copyright. The Court, in view of the aforesaid, opined that Hero Electric had established a prima facie case in its favor. The Court passed an interim order restraining the defendant from using the infringing mark, domain name and website till the next date of hearing.

Can a machine or Artificial Intelligence (AI) claim copyright in the work created by it? This question has, off late, garnered a lot of curiosity amongst IP enthusiasts. The Copyright Review Board of the United States Copyright Office (“CRB”) recently addressed this question while adjudicating a second request for reconsideration of refusal to register a 2D artwork created by the “Creativity Machine”. The copyright claim was initially refused by the Registration Program on the ground that a work autonomously created by a computer algorithm running on a machine lacks the human authorship necessary to support a copyright claim. The CRB referred to several judicial precedents, statutes and the compendium on the Copyright Office practice and observed that, in order to claim copyright, a work must be created by a human being. The term ‘authorship’ implies that, for a work to be copyrightable, it must owe its origin to a human being. Materials produced solely by nature, plants, or animals are not copyrightable. It emphasized that the US Supreme Court continued to articulate the nexus between the human mind and creative expression as a prerequisite for copyright protection. The claimant, Steven Thaler, argued in support of AI being an author under copyright law, because the work made for hire doctrine allowed for “non-human, artificial persons such as companies” to be authors. The CRB, however, observed that, under this doctrine, the work is created as the result of a binding legal contract—an employment agreement or a work-for-hire agreement. Since the Creativity Machine cannot enter into binding legal contracts, it fails to meet this requirement. Consequently, the CRB affirmed the Registration Program’s denial of copyright registration to a work created by a machine.