Intellectual Property Decisions by the Delhi High Court: August 2018
This post is a review of some important intellectual property decisions by the Delhi High Court in August 2018.
The review runs in three sections: a section on rated decisions (featuring a tl;dr, a review, and a rating on scale of 1 to 5), a section of notes on unrated decisions, and a section on other cases (covering cases that reached ex parte judgment this month). Links to all cases are embedded in the titles.
This is the latest installment of a series of posts I started last year. Previous posts are available in the archives.
Rated Decisions
Dart Industries v. Polyset Plastics (August 1)
Tl;dr: Tupperware wins bottle/bottle cap design injunction for these bottles that I am convinced everyone has seen. Everyone. They are everywhere. I have, like, five in my house.
Review: Mr Justice Khanna’s deference to the submissions of the contesting parties make the first 20-odd paragraphs of this opinion a bit of a struggle. Behind these submissions, though, the judge’s own discussion gets to the point in short order: since a design infringement claim requires, in the main, that the Claimant establish the novelty and uniqueness of its design, can a contesting Defendant claim that an identical design registered by it subsequently passes the same novelty and uniqueness filter?
The answer, in short, is no. However, the conclusion that the rival designs are, in fact, the same is never fleshed out through an actual visual or written comparison. (The point is a fine one, because Mr Justice Khanna does endorse the position that visual images are an important component of such a comparison.)
This creates a second-order problem with Mr Justice Khanna communicating some uncertainty on the standard that an infringing design needs to be held to: more specifically, he alternates between the words “same” and “not substantially different”. Only the former of these, of course, meshes with the spirit of Section 22 of the Designs Act, from where the cause for a design infringement action emanates.
The second major line of defence offered by the Defendant speaks to the functionality of the bottle caps in question. If it is functional, says the Defendant, it cannot be design-protected, and if it cannot be design-protected, there cannot be infringement. This is cut off almost immediately by a smart reference to last August’s Apollo Tyres to explain the difference between functional (which a bottle cap may be) and the prohibited category of essentially functional (which this bottle cap is not).
With the key issues settled, numerous other contentions raised by the Defendant fall apart: their general claim that the Tupperware design is not new or original (unsustainable since the burden of proof to dislodge a registration is on the Defendant); their claim that their design registration gives them statutory shape and configuration of the bottle cap as opposed to a pattern which may be actionable (missing the point since Section 11 protects the Tupperware bottle as a whole); and their objection that the rival designs are in different design sub-classes (irrelevant since the relevant category under the statute is the class, not the sub-class).
The treatment of this latter set of objections is rather haphazard and retreats far too often than is ideal into long passages from decided cases to overcome what are, with respect, a fairly straightforward set of defences. This, and the nagging lack of clarity on the design infringement standard pull down what is otherwise a resourceful and encouraging opinion.
Rating: 3/5.
Turning Point v. Turning Point Institute (August 2)
Tl;dr: A brilliant and exhaustive appeals ruling (hopefully) puts to bed the ‘TURNING POINT’ trademark dispute but raises questions over whether appeals courts should take on detailed expositions at all.
Review: The long-running ‘TURNING POINT’ trademark dispute between two Delhi-based coaching institutes, arising out of cross-suits filed by the parties, turns almost entirely on the parties’ prior use claims.
After leading their respective prior use material at some length, the parties invited judgment from Mr Justice Sanghi, who ruled on the question at the first instance in August 2017, in a decision I wrote about at length on the SpicyIP blog last year (Part I here, Part II here, review here).
Mr Justice Hari Shankar’s opinion speaking for the appeals court here opts to dive back into the mire. The long summaries of the law on passing off are perhaps to be expected but the manner in which every single document produced by the parties in support of their respective prior use claims is picked up by the Court is astonishing. The Court sifts through this material in fine detail, sets out reasons for relying on or rejecting different categories of this material, and offers what is, in relation to much of this material, a de novo finding on prior use.
This would be controversial in itself but the Court goes further by variously reversing findings of fact or overruling Mr Justice Sanghi’s findings without reference. As thorough and agreeable as the factual inquiry is, judicial imprimatur not to do precisely this when confronted with cases of a similar nature — an unbroken line of Indian trademark law that can be traced at least as far back as 1990’s Wander v. Antox Supreme Court — simply does not accommodate such an approach.
As such, exercising the de novo option here is a genuinely curious one. This is especially so considering this Court is aware of (and, in fact, cites) the Wander Supreme Court to say that the only interference in such cases on appeal should be in the event that the first court’s “discretion has been shown to have been exercised arbitrarily, or capriciously or perversely, or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions.”
For all its shortcomings, Mr Justice Sanghi’s judgment does not fall within this category. The differences between him and this appeals court are on the appreciation of material and on how they influence a prior use claim — nothing more, nothing less.
In sum, a perfectly defensible and, indeed, excellent decision on merits but one which invites significant hesitation on whether appeals courts should be approaching fact-heavy trademark disputes with a clean slate mindset.
Rating: 4/5.
Mex Switchgears v. Omex Cables (August 3)
Tl;dr: A trademark injunction ruling of two halves: an extremely equipped discussion on delay let down by a deceptive similarity finding that relies too heavily on a single precedent.
Review: After Round 1 before the Delhi High Court in February 2014’s Mex Switchgears v. Max Switchgears, the protagonists return before an appeals court to claim a trademark injunction denied to them by the court of first instance.
Mex’s case for trademark infringement here rests on a deceptive similarity assessment that is 50–50 to the casual eye: ‘MEX’ against the Defendant’s ‘OMEX’ and ‘OMEX GOLD’ in the same commercial stream. The claim itself is barely mentioned by Ms Justice Mittal who labours at first over several rather rote passages about the extent of statutory rights held by a trademark proprietor, and later, over old Supreme Court case law that set out tests for deceptive similarity.
The Court finds that the decision to disqualify Mex’s interim injunction claim for excessive delay, without engaging in a deceptive similarity inquiry worth the name, was incorrect. The delay issue, which this Court is now obliged to review, predictably breaks off into factual fragments: whether the Defendant demonstrated commercial presence between its use claim and the filing of the suit, whether its use claim is verifiable at all, whether the Claimant’s business was in the Defendant’s knowledge, and eventually, whether such delay would put off the interim injunction at all.
On balance, Ms Justice Mittal finds that the delay would not block Mex’s interim injunction claim, given the unreliable nature and proof of the Defendant’s use claim visible prima facie. However, the next section of the judgment simply maps on conditions for a successful passing off claim onto the Defendant’s trademark, relying heavily on the February 2014 Mex decision. It cobbles together the Defendant’s attempts to register other nearby trademarks (‘OMEXI’, ‘QMEXI’) as evidence of mala fides. From here, a reversal of the first court’s ruling is close at hand.
In the final assessment, the delay section holds together, but recycling a previous decision in favour of the Claimant spliced with other precedent makes for an unpersuasive deceptive similarity inquiry.
Rating: 2.5/5.
SK Gupta v. Sony Pictures Networks India (August 10)
Tl;dr: There is no copyright in a general gameshow ‘concept’, and if push comes to shove on this proposition, yes, Anil Gupta v. Kunal Dasgupta may have been incorrectly decided.
Review: Mr Justice Mehta issues a fascinating judgment here in appeal of facts involving a gameshow template called ‘JEETO UNLIMITED’, which claims copyright infringement by Sony’s popular ‘KAUN BANEGA CROREPATI’ gameshow.
Two points in particular stand out.
First, the basis for Mr Justice Mehta’s agreement with the trial court is in line with the long-held view that there can be no copyright in a mere idea. However, in view of the similarities claimed by the Appellant, it is worth asking another question: whether a concept or template for a TV show or a segment of it, in its expression, suffers from the same disqualifications as to copyrightability that Mr Justice Mehta finds it to.
Second, his arguendo to this appears to be that the copyright asserted by the Claimant is so generic and broad that every gameshow committed to this sort of setup would involve ‘infringing’ this copyright. This is, to be sure, on firm footing to the extent it points out that the Claimant’s written claim is vague enough on the subject to entertain the possibility. It is also supported by the Claimant’s admission in cross-examination that the general concept of an audience play along gameshow was already in the public domain.
However, the judge goes further, and puts up his finding in antagonism with 2002’s Delhi High Court decision in Anil Gupta v. Kunal Dasgupta. He not only says that he “cannot agree” with the Anil Gupta ruling — by my reckoning, the first clear diversion from that position by a Delhi judge in over fifteen years — but he sets it against the RG Anand Supreme Court to state that Anil Gupta is most likely incorrectly decided because of it.
It is a ruling that is likely to ruffle a few feathers down the road but the judge’s insistence on the concrete concept hammered into the shape of a literary or dramatic work is hardly disagreeable.
Rating: 3.5/5.
Aashiana Rolling Mills v. Kamdhenu (August 23)
Tl;dr: Standard-issue design law ruling on standard-issue facts.
Review: This appeals decision to set aside an order of injunction on a design rights claim by Kamdhenu over a template for a ribbed steel bar/rod impresses me as one with far too many repetitions and occasional confusions. The core of the dispute — not explored by Mr Justice Bhat here until paragraph 16 of 24 — is this: the placement of the ribbing on the product is claimed by Kamdhenu to be novel and proprietary; this same placement is claimed by Aashiana to be disclosed by multiple international standards that pre-date Kamdhenu’s claim.
Reference, at the first instance, is made to a British standard (the B500C), which describes a large portion of Kamdhenu’s design claim. It is also helpfully settled by Aashiana that the angles on the ribbing pattern are limited to a narrow range by the fact that they would not serve the function of the ribbing pattern outside this range, and that the angles within range have been the subject of existing standards.
In the Court’s view, this shuts down the wiggle room available to Kamdhenu to claim novelty and uniqueness in its design or even, as Kamdhenu is compelled to argue here at a pinch, the possibility of Kamdhenu’s design being novel and unique within the restraints placed by having to conform to known standards.
These elements, missing from the decision of the first court, prompt this Court to set aside the injunction. All things considered, it appears to be, if you will pardon the pun, a standard-issue ruling on standard-issue facts.
Rating: 2.5/5.
Marico v. Kumar (August 27)
Tl;dr: Marico wins a trademark claim against ‘PARACHUTE’ copycat; doubts reappear over single colour trademarks and if selling products online equals jurisdiction everywhere.
Review: There has been an uptick in the readability of Mr Justice Manmohan’s recent judgments, and that has much to do with the depth and manner of distribution of legal material. This decision, which finds for Marico on what is ultimately a straightforward trademark claim over the ‘PARACHUTE’ coconut oil trademark and packaging, is no different.
Three points stand out in this opinion.
First, on the claim itself, the Court prioritises Marico’s complaint that the Defendant not only adopted deceptively similar product layouts and packaging, but continued to modify these features to keep pace with the tweaks Marico made to its own packaging over several years. Wrapped within this leitmotif of dishonesty are instances of individual features that have been copied by the Defendant — features that Marico had the foresight to independently secure protection for. The infringement and passing off findings, therefore, are there for the asking.
Second, the Court flattens the Defendant’s position that Marico can claim no exclusive right in the application of the colour blue to its products. It does so by correctly settling Marico’s use of this colour into the background of other independent and distinctive parts of the whole that constitute its packaging.
While this defuses the need to engage the Defendant on the issue further, Mr Justice Manmohan nevertheless claims that Marico’s application of the colour blue to its packaging could potentially be seen as an identifier of source, specific to Marico. This flows from a little-remembered January 2007 Madras High Court decision in Annamalayar Agencies, which did, indeed, point in this direction. However, with May’s decision by Mr Justice Mehta in Christian Louboutin invalidating reliance on single colour trademarks, this suggestion may have to be revisited with greater responsibility.
Finally, the Court finds that the jurisdiction requirement at the preliminary stage is satisfied on the strength of Marico’s assertion that the Hyderabad-based Defendant’s products were available on online shopping platforms. This was considered a prima facie suggestion that these websites (and, ostensibly, advertisement and sale through them at the Defendant’s option) were sufficiently interactive to fall within the Banyan Tree standard. While this does formally leave the door open to go down the messy WWE road of reading in limitless jurisdiction through online presence, it is worth squaring the Court’s assumption of jurisdiction here with statements made by the Defendant on record that it does, in fact, have commercial presence in Delhi (and other parts of India).
This slightly tenuous finding and the suggestion of single colour distinctiveness are the only drawbacks of note in an opinion that is well worth the reading time.
Rating: 3.5/5.
Unrated Decisions
Here are a few notes on unrated decisions for August:
Galderma v. Medsea Healthcare (August 1) dismissed a motion for summary judgment under Order 13A of the CPC initiated over a pharmaceutical trademark claim to permit the Defendant to answer when and why it came to use its own trademark, and to permit the Claimant to revise some of its own claims.
Louis Vuitton (August 7) decided a contempt motion in a trademark infringement case with the outcome of punishing the Defendant for perjury and interference with the working of a Court-appointed commissioner with simple imprisonment for a month and a small fine.
Also of note are two orders in the Crocs designs disputes (August 7; read more about the dispute here) which ruled on a motion seeking an exemption to belatedly file documents for trial. Meanwhile, MSD OSS v. Reliance Life Sciences (August 10) ruled on a motion seeking to amend pleadings to bring on record change of title of a patent.
Global Car Group v. Droom Technology (August 17) settled a catchphrase disparagement dispute over a TV advertisement for ‘Cars24’, an online marketplace for cars. (The dispute is exactly as pointless as you might imagine it to be.) The parties only invited judgment by Mr Justice Midha after settlement talks broke down. In the event, the judge’s solution is as hilarious as it is fair: the Defendant gives up any trappings of the presentation of the Claimant’s advertisement and, in exchange, is entitled to use the tagline ‘Don’t Be A Bakra’ with a judicial clarification that the shade thrown by the tagline will be understood to be in rem and not a snide comment targeted at the Claimant. Next.
Finally, Burger King v. Techchand Shewakramani (August 27) dismissed a Defendant’s motion challenging the jurisdiction of the Delhi High Court on the basis of a cumulative, attritional case of relevant facts. The quia timet trademark claim here comfortably survived a challenge on jurisdiction, with the Court referring pointedly to the Defendant’s intentions to imminently commence business operations in Delhi. These, found the Court, were evident from material taken off the Defendant’s own website, a news article, and material led by the Claimant that made out a case under Section 134(2) of the Trade Marks Act and Section 20 of the CPC.
Other Decisions
Grandcure Healthcare (August 2), Super Cassettes (August 6), Tata Sons (August 6), Bennett Coleman (August 8), Re/Max (August 9), A&A Dukaan Financial Services (August 13) and Radico Khaitan (August 13) were some prominent ex parte judgment winners in August.
These yielded significant damages/costs awards for Super Cassettes (Rs 4,320,000), Tata Sons (Rs. 1,000,000), Radico Khaitan (Rs. 986,580), and Grandcure Healthcare (Rs. 200,000), on reasoning ranging from formulaic to virtually non-existent.
My review of September’s cases will up in early October. As ever, I’m happy to hear feedback for the stories on this page in the comments below, or on email, Twitter or Facebook.
