Lacoste & Anr. v. Crocodile International Pte Ltd & Anr., CS(COMM) 1550/2016, Judgment dt. August 14, 2024 The Delhi High Court has, in a suit for injunction filed by Lacoste & Anr. (“Plaintiffs”), restrained Crocodile International Pte Ltd. & Anr. (“Defendants”) from using its Crocodile Device mark owing to its deceptive similarity to the Plaintiffs’ registered Crocodile Device mark. The Plaintiffs contended that they are the prior registrants and users of the Crocodile Device mark in India. The Plaintiffs and Defendants had signed a co-existence agreement in the year 1983, as per which, the Defendants had specifically agreed to not use the standalone Crocodile Device mark, and instead always use it with the word CROCODILE. Accordingly, the Defendants’ use of the deceptively similar Crocodile Device mark, amounts to trade mark and copyright infringement and passing off of the Plaintiff’s rights. The Defendants, on the other hand, countered the Plaintiff’s contention by placing reliance on the 1983 co-existence agreement and a 1985 letter addressed by the Plaintiff to co-exist, which allowed the Defendants to use their Crocodile Device mark in countries, including Korea, India, Bangladesh and Pakistan. The Defendants also contended that the suit suffers from delay and laches by at least 3 years. The court, after hearing to extensive arguments, ruled in favour of the Plaintiff, stating that the Defendants failed to produce any evidence of the co-existence agreement enabling use of the standalone Crocodile Device mark by the Defendants in India. The court also held that the Plaintiff has made out a case for trademark infringement, however, did not find a case of copyright infringement since the court was of the opinion that it is originality in the depiction and not the novelty of concept, that is safeguarded by copyright law. Addressing the issue of delay, the court said that the alleged delay of 3 years is not considered excessive, especially in the context of trademark and copyright disputes which often involve complex considerations and necessitate thorough investigations before litigation. The court further appointed a local commissioner to visit the Defendants’ premises to determine their profits, and thereafter calculate the damages to be awarded to the Plaintiff, in addition to awarding actual costs.

The fiasco miring the release of the Kangana Ranaut starrer film Emergency (“Film”) recently met with another roadblock, this time at the hands of the Bombay High Court, as the court refused to direct the Central Board of Film Certification (“CBFC”) to release the CBFC clearance certificate (“Certificate”) to the Film’s producers, viz., Zee Entertainment Enterprises Ltd. (“Zee”). Instead, the court opted to defer passing any directions for the time being. Zee approached the Bombay HC, seeking a writ of mandamus to be issued to the CBFC for releasing and handing over of the Certificate so as to proceed with the Film’s release. Zee alleged that the CBFC was illegally refusing to hand over the same despite having cleared the Film for release. It contended that producers had carried out the necessary cuts and modifications, as per CBFC’s suggestions, whereafter, the CBFC cleared and certified the Film as UA for exhibition. Zee also produced emails sent by the CBFC to the producers which indicated that the CBFC had, in fact, asked Zee to collect the certified CD of the Film and the Certificate from the CBFC office. CBFC, on the other hand, contended that a certificate could not be deemed as issued until it is signed by the Chairperson of the CBFC. CBFC also contended that, contemporaneously with the current proceedings, the Madhya Pradesh High Court was also seized of a petition opposing the release of the Film, where, the CBFC had, in fact, been directed to consider the objections of the organizations who had objected to the Film’s release, before certifying the Film for public release. In view of these directions by the MP HC, CBFC argued that Bombay HC should defer issuing any directions against it for now. The Bombay HC expressed disagreement with the first leg of CBFC’s submissions and remarked that accepting such submissions would, in effect, empower the Chairperson to unilaterally refuse Certification to any film, even when it may be in compliance with the CBFC criteria. As regards the second limb of CBFC’s submissions, it was observed that the MP HC seemed to have mistakenly proceeded under the impression that the Film was not yet cleared by the CBFC, and that the MP HC was not properly apprised of the entire scenario surrounding the Film’s certification by the CBFC. Notwithstanding the above, the Bombay HC refused to pass any directions, highlighting that directing CBFC to release the Certificate would amount to a direction to violate the MP HC order. As such, in the interest of judicial propriety, the court directed the CBFC to consider the petitioners’ objections before the MP HC, as well as of any other persons/groups who are objecting to the Film, in an expeditious manner, and to complete the exercise by September 18th. The matter is listed again before the court on September 19th. Zee Entertainment Enterprises Ltd. v. Central Board of Film Certification & Anr. [W.P. (L) NO. 27429 OF 2024, Bombay High Court] Click here to view the judgement copy.

In a recent ruling pronounced on September 11, 2024, the US District Court for the Northern District of Georgia has restrained former US president and the present Republican candidate Donald J. Trump, and his campaign organization (“Defendants/Trump”), from using the song “Hold On, I’m Coming” in their campaign events/rallies, in response to a copyright infringement lawsuit filed by Isaac Hayes Enterprises, LLC (the “Plaintiff”), the song’s co-writer. The Plaintiff filed the lawsuit with a motion for preliminary injunction claiming that the song, in which the Plaintiff owns a copyright interest, and which became a hit in 1966 by the Miami-based soul duo Sam and Dave, has been regularly performed at Trump’s campaign events since 2020, without a valid license. Plaintiff also asserted that Trump continued unauthorizedly performing the song at campaign events even after he was notified by Broadcast Music, Inc., from whom Trump had obtained licenses for performing music at rallies/events, by an email that the song had been excluded from the Defendants’ license. The Defendants, on the other hand, claimed that the use at the rallies/events was under a valid license and that the use in the videos posted by Trump on social media constituted fair use. The Defendants relied on a copy of the music license from BMI to perform music at Trump’s events. Further, the Defendants disputed Plaintiff’s ownership over the copyright in the song. The court examined the license and observed that the license specifically provided that any work(s) could be excluded from the scope of the license if BMI were to receive a notice by the songwriter of such work(s) objecting to the use by the licensee. In view of this, the court observed that, as BMI had emailed to the Defendants duly informing that the song had been “excluded from the Agreement” forthwith pursuant to receiving the Plaintiff’s objection, the continued performance of the song at Trump’s rallies amounts to copyright infringement. The court also found that, given the consistency with which the Plaintiff’s song was being performed at Trump’s events, which are also being frequently aired on TV and other media, the risk of association of the Plaintiff with Trump’s campaign was imminent and cannot be said to be remediable through mere damages, necessitating an injunction in Plaintiff’s favour. However, the court refused to grant injunction on videos of Trump’s campaign which already exist in various media. The Defendants’ argument of their right of political speech being inhibited by an injunction was also rejected by the court, and it held that balance of equities and public interest would both be served by granting an injunction in favour of the Plaintiff, since it was already established that any use of the song by the Defendant would be, in any case, without a valid license. Isaac Hayes Enterprises, LLC, et al., v. Donald John Trump, individually, et al., [CIVIL ACTION FILE NO. 1:24-CV-3639-TWT].

Recently, the Delhi High Court has restrained Super Cassettes Industries Limited (“Defendant”) from using the film title “Tu Hi Aashiqui”/“Tu Hi Aashiqui Hai”,  based on Vishesh Films Private Limited’s (“Plaintiff”) rights in the mark “Aashiqui”. The Plaintiff and the Defendant had, in 1990 and 2011, entered into agreements to co-produce films for the Aashiqui franchise. It is the Plaintiff’s case that, the Plaintiff and the Defendant, in September 2022, had jointly announced the production of the third instalment of the Aashiqui franchise, i.e., Aashiqui 3. Thereafter, on December 29, 2023 the Defendant went ahead to apply for the registration of the mark “Tu Hi Aashiqui”. Therefore, the Plaintiff has alleged that the Defendant cannot be permitted to adopt the name, and create an adaptation of the Aashiqui franchise, without the Plaintiff’s express consent. The Defendant, on the other hand, has argued that the Plaintiff unilaterally owns trade mark registrations for the word “Aashiqui”, without the Defendant’s name included in the registrations. Further, as per the Defendant, the term “Aashiqui” is generic, has been used in various film titles and that the rival marks are dissimilar when looked at as a whole. The Defendant even claims that the Plaintiff has, in its response to Examination Report, differentiated its mark with other Aashiqui marks. Therefore, it is estopped from taking action against the Defendant.   Firstly, the court, while analysing generic terms, stated that the term “Aashiqui” does not describe the goods/ services it is being used on and in relation to and merely suggests the theme/ genre of the films produced by the Plaintiff. The court stated that for a film title to function as a trade mark, one needs to consider the, (i) level of recognition, (ii) secondary meaning, and (iii) goodwill acquired through extensive use and public recognition, and the title “Aashiqui” fulfils all these criteria based on the evidence submitted by the Plaintiff. Secondly, the court was of the view that the marks “Aashiqui” and “Tu Hi Aashiqui” are deceptively similar and the prior business relationship between the Plaintiff and the Defendant accentuates the association of “Tu Hi Aashiqui” with the Aashiqui franchise. Thirdly, as regards estoppel, the court was of the view that the statement made by the Plaintiff was in context of other third-party marks and not the Defendant’s mark. Therefore, based on this, the Plaintiff is not estopped from taking action against other parties with similar marks. In view of the above, the court passed an interim injunction in favour of the Plaintiff, retraining the Defendant from using the title “Tu Hi Aashiqui”/“Tu Hi Aashiqui Hai” and/or any other mark/ title similar to the Plaintiff’s mark “Aashiqui” in relation to the proposed film. It is pertinent to note that Division Bench dismissed an appeal filed by the Defendant against this judgment, and refused to interfere with the interim injunction as it was not patently erroneous. Vishesh Films Pvt. Ltd. v. Super Cassettes Industries Ltd., CS(COMM) 68/2024, judgment dated September 2, 2024 and Super Cassettes Industries Ltd. v. Vishesh Films Pvt. Ltd., FAO(OS)(COMM) 218/2024, order dated September 25, 2024.

Delay in filing the rectification petition not a reason for a wrongful registration to remain in the Register of Trade Marks: Delhi High Court In a recent judgment, the Delhi High Court directed the cancellation of a registration granted for the MOLTY COIR MATTRESS Device mark in favour of Jay Kay Coir Foam Pvt. Ltd. (“Respondent”), despite a delay of eight (8) years in filing the rectification petition by Master Enterprises Pvt. Ltd. (“Petitioner”). The Petitioner, a company based out of Pakistan, and a part of the Master Group of Companies, claimed to have used the MOLTY trade mark on and in relation to synthetic foam and insulating materials for mattresses, since 1963. The Petitioner also contended that the MOLTY trade mark had attained popularity not only in Pakistan, but also internationally, including India, where it had been used since at least 1997. The Respondent contended to have adopted the trade mark MOLTY prior to the Petitioner, in 1995. It argued that the rectification petition was time-barred as the trade mark was entered in the Trade Marks Register in 2005, while the rectification petition was filed in 2013 The court observed that even though the Petitioner was not physically present in India, it had established a transborder reputation in India for the MOLTY trade mark. It further noted that the Respondent had failed to provide any documents since 1995, despite claiming prior use, and thus could not claim any benefit of being an honest and concurrent user of the MOLTY trade mark. The Respondent had also failed to provide any reason for the adoption of the trade mark MOLTY for identical goods to those of the Plaintiff. Accordingly, the court held that any delay in filing the rectification petition cannot be a valid ground for the Respondent’s registration to remain on the Trade Marks Register, and directed the cancellation of the Respondent’s registration for the MOLTY COIR MATTRESS Device mark. Master Enterprises Pvt. Ltd. v. Jay Kay Coir Foam Pvt. Ltd. And Anr. [C.O. (COMM.IPD-TM) 599/2022], judgment dated October 4, 2024 Click here to know more.

Recently, the Division Bench of the Delhi High Court upheld the interim injunction granted in favor of Himalaya Wellness Company (“Himalaya”), restraining Wipro Enterprises Private Limited (“Wipro”) from passing off its female hygiene and menstrual health products under the EVECARE mark. The single judge had observed that since Himalaya has been using the EVECARE mark for several decades, it has acquired significant goodwill and reputation. Moreover, since an identical mark will be used for ‘hush products’ pertaining to menstrual and reproductive health of women, buyers may exercise a lower level of scrutiny, thus, increasing the likelihood of confusion. A summary of the single judge’s decision can be found here. During the appeal, Wipro argued that since it was selling a cleansing cosmetic wash, it was distinct from Himalaya’s tablets and syrups sold under EVERCARE mark. Wipro further argued, that prior to adoption of the EVECARE mark, it had conducted searches for similar marks in Class 3, however, it did not come across Himalaya’s registration for the EVECARE mark as it is registered in Class 5. The court agreed with the Single Judge’s observations that the rival goods are allied and cognate, since both fall into the category of ‘hush products’ as they pertain to female reproductive hygiene. Further, the court reiterated that classification of goods and services is not a criterion while deciding the question of similarity of goods and services. It further observed that during the trial, Wipro would be able to establish whether it has adopted the EVECARE mark in good faith, or to take advantage of Himalaya’s goodwill in the EVECARE mark. However, at a prima facie stage, Wipro being a junior user of an identical mark, could not provide any justifiable explanation. Therefore, the court held that in order to prevent confusion amongst the public, it should not interfere with the the single judge’s order restraining Wipro from passing off its goods as those of Himalaya’s. Wipro Enterprises Pvt. Ltd. v. Himalaya Wellness Company and Ors., FAO(OS)(COMM) 145/2023, judgment dated October 1, 2024 Click here to read the judgment copy.

Recently, the Hon’ble Delhi High Court has, in a suit for injunction filed by ITC Limited (“Plaintiff”), restrained Arpita Agro Products Pvt Ltd & Ors. (“Defendants”) from using the mark POWERNYM. The brief facts of the case is that, the Defendants, assigned its rights in the marks NIMYLE and JOR-POWR, in Classes 5 and 3, respectively, to the Plaintiff in 2018. The Plaintiff, thereafter, in 2023, learned of the Defendants’ adoption of the mark POWERNYM in Classes 3 and 5. The Plaintiff challenged this subsequent adoption of the mark POWERNYM by the Defendants on the ground that it is derived from and deceptively similar to the marks NIMYLE and JOR-POWR, both of which, the Defendants have already assigned to the Plaintiff. The Defendants, on the other hand, argued that the mark POWERNYM, including the packaging, composition and branding of the products offered under the mark POWERNYM are distinct. The Court, however, ruled that, given the history between the rival parties, the Defendants seems to have adopted the mark POWRNYM with the intention of portraying the mark POWRNYM as a variant of the Plaintiff’s NIMYLE and JOR-POWR marks. Moreover, the shape, style and getup of the bottle adopted by the Defendants is also similar to that of the Plaintiff’s products under its NIMYLE and JOR-POWR marks. The Court therefore restrained the Defendants from using the mark POWRNYM or any mark deceptively similar to or derived from the NIMYLE and JOR-POWR mark or NIM family of marks, till the pendency of the suit. ITC Limited vs. Arpita Agro Products Pvt Ltd & Ors. [CS (COMM) 698 of 2023], Order dated October 8, 2024

Nepal’s Draft Copyright Act, 2024: A Game-Changer for IP Owners Nepal is all scheduled to make a significant leap in the protection of intellectual property rights with the Draft Copyright Act, 2024. The proposed legislation introduces an Intellectual Property Police unit, a dedicated force to combat IP theft and ensure more stringent enforcement. This initiative is a crucial response to the growing need for safeguarding the rights of creators, inventors, and businesses against counterfeiting and infringement. Key highlights of the draft law include: For our international clients having IP interests in Nepal, these developments are crucial. Stronger enforcement mechanisms not only protect IP investments but also create a more secure business environment, paving the way for innovation and growth. Read more about the Policy dialogue that took place before the Ministry of Culture, Tourism, and Civil Aviation of Nepal over here – https://pri.gov.np/events/a-public-policy-dialogue-was-held-to-generate-feedback-on-the-draft-of-the-copyright-act-2081/ Stay tuned for more updates as we continue to monitor the progress of this legislation.

Recently, the Delhi High Court, granted an ex-parte ad-interim injunction in favour of MM Styles Private Limited (“Plaintiff”) restraining Masaba Couture & Ors. (“Defendants”) from using the Plaintiff’s registered trademark as well as copyright in its artistic works, including photographs/images, garments, dress style, etc. The Plaintiff is engaged in the business of manufacturing, selling/retailing designer garments, jewellery, cosmetics, and other luxury products, designed and conceptualised by famous Bollywood designer, Mr. Manish Malhotra. As per the Plaintiff, the Defendants appear to be operating in collusion, and are copying images from the Plaintiff’s website and social media handles. The Defendant were also found soliciting orders for reproduction of the styles/outfits denoted in the copied images, claiming to customise the exact same outfit for customers. The Plaintiff, accordingly, sent legal notices to some of the Defendants through Instagram, which they acknowledged, and removed the infringing pages. However, the Defendants continued uploading new infringing images. As per the Plaintiff, it is evident from a comparison the Plaintiff’s work and the images on the Defendants’ social media pages that the Defendants have strained every nerve to (i) infringe the Plaintiff’s copyright in the proprietary images present on the Plaintiff’s website and social media handles, (ii) infringe the copyright in the Plaintiff’s artistic works, i.e., the outfits as designed and created by the Plaintiff, and (iii) pass off themselves as being associated with the Plaintiff. It was also submitted that the infringing pictures that have been reproduced by the Defendants on their Instagram accounts/handles also infringe the personality rights of the various celebrities whose images have been so used. The court satisfied that the Plaintiff had met the requirements of establishing infringement of copyright, trade mark, passing off, restrained the Defendants from (i) infringing the Plaintiff’s copyright in its photographs/images as uploaded on platforms and unauthorized reproduction of the same on Defendants’ social media platforms, (ii) infringing the copyright in its artistic works/garments/dress style and its unauthorized reproduction, and (iii) infringing the Plaintiff’s registrations, in relation to services rendered online or in any manner, whatsoever. The Defendants were also directed to takedown their URLs on their respective online platforms. MM Styles Private Limited v. Masaba Couture & Ors., CS COMM 893/2024, Order dt. October 9, 2024 Click here to read the judgement copy

Bombay High Court Quashes Summons in Copyright Infringement Case Recently, the Bombay High Court quashed and set aside a Magistrate’s order that issued summons to the directors of the Petitioner No. 1, Cosmos Premises Pvt. Ltd. (“Cosmos”), and the general manager of one of its restaurants, in relation to a copyright infringement complaint filed by the Respondent No. 1, Novex Communication Pvt. Ltd. (“Novex”), alleging that the songs assigned to Novex were unauthorizedly played at an event at one of Cosmos’ restaurants. The Petitioners asserted that the order passed by the Magistrate suffers from non-application of mind and cannot sustain since (a) Cosmos’ restaurant is not a separate legal entity and cannot be made an accused in the complaint, and (b) there were no specific allegations against the accused persons in the complaint, as required under relevant legal provisions. Novex, on the other hand, asserted that copyright law provides for the prosecution of both the company and the directors/responsible officers. It also stated that the order does not affect either party’s rights, and that the accused persons would have the opportunity to demonstrate that they are not involved in the day-to-day operations of the company to avoid any liability. The court concurred with Cosmos’ assertions that the restaurant cannot be considered a separate legal entity in the eyes of law and this itself shows non-application of mind by the Magistrate. The court further noted that under copyright law, it is necessary that (a) the complainant implead the company through the responsible officer who conducts the business of such company, and (b) the complaint contain allegations regarding the commission of the offence with consent or connivance or negligence of other directors, managers, secretaries, or other officers. The court observed that while the complaint shows that the accused nos. 1(a) and 1(b) are the directors of Cosmos and the accused no. 2 is the manager of the restaurant, there are no specific arguments in the complaint that these people are responsible for the day-to-day affairs of Cosmos. In light of the above, the court held that the Magistrate’s order deserves to be set aside since the complaint and the order are silent about the roles of the accused and how they are liable to be prosecuted, as required under law. Cosmos Premises Pvt. Ltd. & Anr. v. Novex Communications Pvt. Ltd. & Anr. [Criminal Writ Petition No. 8 of 2024] Judgements dated October 21, 2024 Click here to read more