Intellectual Property Decisions by the Delhi High Court: August 2017
What follows is a series of short reviews of some important intellectual property law decisions by the Delhi High Court in the month of August 2017.
Each review is in three parts — a tl;dr, a review of the key findings in the case, and a rating on scale of 1 to 5 (5 being the highest).
The rating scale is mainly for a bit of fun, but is also intended to function as a barometer for the quality and relevance of the cases. In rating cases, I take into account a mix of factors, including clarity and coherence, originality, contribution and significance to the field, application of the law to the facts, the reasoning for and appropriateness of the relief granted. Links to all cases are embedded in the titles.
Here we go.
Neetu Singh v. Rajiv Saumitra (August 4, 2017)
Tl;dr: A Section 17(c) based defence to copyright infringement by an ex-employer requires factual proof that the copyrighted work was generated during the course of employment.
Review: Messy prior relationships between the parties aside, two legal questions arise here — who has first ownership of the books under Section 17 and 17(c) of the Copyright Act and whether the Defendants’ use amounts to infringement under Section 52.
The judge’s response to the first question turns on the absence of evidence by the Defendants to demonstrate that the book was written by the Plaintiff in the Defendants’ employment. This is a line that is tough on the Defendants, given how little it usually takes to activate a presumption of employment in the case of a director of a company, which is the position the Plaintiff formerly occupied.
The judge’s answer to the second question picks up on the Rameshwari Photocopy case to simply return a finding that the Defendants’ use was pointedly commercial, competitive, for profit and therefore outside the educational use exception. The first finding may not hold up on appeal.
Turning Point Institute v. Turning Point (August 11, 2017)
Tl;dr: An interim injunction on a passing off claim decided entirely in reference to exhaustive evidence of prior use, ruling against the junior user despite it being previously judicially recognized as a well-known trademark.
Review: One of the more significant trademark decisions of the month, and one on which I wrote a comment for the SpicyIP blog, which can be found here.
Apollo Tyres v. Pioneer Trading (August 17, 2017)
Tl;dr: Tyre tread patterns are permissible subject matter for trademarks; the functionality ban on the registrability of trademark shapes, for tyres at least, applies to the presence of treads and not to tread patterns.
Review: Three findings of note here by Mr Justice Sanghi, confirming in the interim the ex parte injunction granted to the Plaintiffs in September 2015.
First, tyre treads qualify as shapes and therefore are within the definition of ‘trademark’ under Section 2(1)(zb) of the Trade Marks Act. While intuitively these are protectable as designs, a 2013 Delhi appeals decision in Mohan Lal makes clear that a claimant’s failure to do so does not shut out a claim in passing off. (I wrote about Mohan Lal this past May here.) The judge confirms that tyre treads as protectable as designs or trademarks, and that choice lies with the claimant. (A Madras decision in MRF Tyres recognizing tyre treads as possible subjects for trademark protection as far back as 1990 which was cited by the Plaintiffs in this case also received a sideways nod of approval here.)
This is significant. It suggests a view that tyre treads and shapes of this nature can be the subjects of trademark applications and registrations, and registrants can sue for infringement on par with other categories of trademarks.
Second, hidden in the middle of Indian and foreign precedent on protecting shapes as trademarks generally, there is a reference to an EC decision in Lego Juris. The judge uses the Article 7 of the 1994 EC Trademark Regulation from that case as a proxy for Sections 9(3)(a) and (b), which prohibit registration of functional or necessary shapes of products. Grabbing a formulation from Lego Juris, he gets around Section 9(3) by reducing the law to only prohibiting “purely functional shape”. In this instance, he finds that “purely functional shape” would be the presence of the tread itself (for greater tyre grip), and not the pattern of the tread.
Third, the judgment commits to tagging trademark protection to tyre treads to their role as source identifiers. This is a controversial claim that really ought to have been examined deeper, given it has the consequence of asserting that consumers distinguish between tyre brands based on what the tyres themselves look like. The judge concludes that industry advertisements demonstrate that the tread of the tyre is “prominently displayed” along with the name of the brand in several cases but that is, disappointingly, as deep as he digs in this 69-page opinion.
“The same function,” he says at para 109, “can be performed by any other tyre with a different tread pattern”. That’s really the location of the disagreement with this decision, if there is to be one. My sense is that there needs to be more to overcoming the Section 9(3) objection than is on offer here.
Kelwyn Door Cares India v. Janson Enterprises (August 23, 2017)
Tl;dr: A straightforward finding that suppression of material facts disentitles a claimant from an interim injunction meets a promising rule of thumb formulation on the potentially derailing question of whether delay defeats an interim injunction in trademark infringement cases.
Review: The Plaintiffs’ case was that this the Defendants’ trademarks ‘Klazmax’ / ‘Klazvyn’ in relation to similar hardware products were sufficiently inspired by their trademarks ‘Closma’ / ‘Kelwyn’ to be is similar in a suggestive sense. It was certainly good enough to secure them an ex parte interim injunction upon filing — an order under challenge here.
However, it all comes undone under a range of concealment-related objections that Ms Justice Gupta does well to capture with economy — the Defendants’ registration wasn’t brought to the court’s notice, the registrant himself wasn’t impleaded as a Defendant, the Defendants’ use since 2012 had been prima facie unimpeded.
The latter reveal, in particular, becomes the pivot for a useful discussion on delay. Given that there is precedent on both sides of the aisle on the question of whether delay defeats injunctions in such cases, the judge helpfully frames the question as a simple one of whether the Plaintiffs prima facie offer valid and reasonable reasons for delay. On facts, she concludes that they do not, and that their conduct is relevant to determining this. It is as direct and uncluttered approach to this question as has been seen in this court’s judgments recently.
What follows, however, is five paragraphs of needless recantation of cases that goes back to the point on suppression. It offers support for a proposition that was never in doubt — suppression of material facts disentitles a claimant from an interim injunction.
Advance Rayon Publishers v. Bombay Rayon Fashions (August 23, 2017)
Tl;dr: Appellate courts shouldn’t hold mini-trials on interim applications; ‘Vogue’ (the publication) and ‘Linen Vogue’/’Linen Vogue La Classe’ (as a fashion/apparel brand) are unlikely to cause confusion if permitted to continue in the same market.
Review: The key hook to the facts here is that, even permitting for the transcendental reputation of a brand like ‘Vogue’ and whatever cross-class protection it may be entitled to, there is a fair distance to travel to reach ‘Linen Vogue La Classe’, the trade name in use by the Defendants. Further, while there appears, at first glance, to be little doubt that the Defendants’ use — attached to fashion and apparel — is potentially subversive of the Plaintiffs’ business, it’s harder than it initially seems to reason out why that is.
The sensible way to frame this is to say that the Defendants’ use is certainly within the allied products wheelhouse of the Plaintiffs’ business, which, give or take, involves writing and publishing material about the same industry. The finding in this case that these are not allied products is defended on two grounds — first, that common trade channels and consumers alone do not inevitably prompt confusion and second, that, even permitting for some consumer attachment, this falls into a grey area between ‘reminding’ a consumer of the Plaintiffs’ product and generating an ‘association’ with it, the latter being the trigger for infringement under Section 29(2). This is intuitive, it’s clever, and it’s hard to complain against.
The conclusion that the Defendants’ use of their trade name on catalogues and publications is not objectionable since it isn’t commercial use is harder to sustain. It’s possible to contend, though, given the tenor of the approach here, that such interference with the Plaintiffs’ commercial stream doesn’t amount to infringement even if it does strictly amount to use.
Where the Plaintiffs’ case fails, I think, is at the yardstick of properly applied appellate court limitations. I mean this in the sense that there’s a case to be made that, presented the same facts, an original side judge would, on balance, rule for the Plaintiffs. That an order from an appellate court merely recognizes it to be one of two arguable positions and therefore not worth reversing an injunction order for in the absence of evidence isn’t bad law even if it is hard luck.
The resurrection of the 2001 Supreme Court decision in Anand Prasad Agarwalla to support the view that an appellate court should not hold a mini-trial at the interim stage is the other observation of relevance, especially at a time when the Supreme Court appears to be making noises (once again) in that direction. It remains a wide open question, though, since Anand Prasad Agarwalla isn’t nearly as conclusive on shutting out elaborate interim hearings as Mr Justice Mehta seems to believe here.
These were accompanied by awards for costs of the proceedings in Nokia, Puma, SAP and Wockhardt. Two decrees in this set by Mr Justice Khanna — Biocodex and Optimus Pharma — were accompanied by punitive damages awards of Rs. 200,000 and Rs. 300,000 respectively, along with 12% interest and costs of the suit in both cases, though with no reasoning as to quantum. The L’Oreal claim for damages decided by Ms Justice Gupta, meanwhile, failed for the reason that the Plaintiffs led no evidence on damages — a position that has been on loop with a section of this High Court since at least the start of the year in Montblanc.
Two trademark settlements to report as well — Fab India (the “Fab India” trademark), Kiran Shoes (the “Goldstar” trademark for footwear products, including an undertaking in damages worth Rs. 190,000).
And finally, there was news of a fairly by-the-numbers summary judgment on copyright infringement in Bharati Bhawan, and another straightforward decision sorting out overlapping claims for impleading a Defendant and amending a claim in order to do so in Triumphant Institute of Management Education.
For anyone who made it all the way to the end, congratulations, and thank you! I’m happy to hear from you either in the comments below or on email.