Case BriefsHigh Courts

Madras High Court: While relying upon the Supreme Court decision in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90, the Single Bench of K. Kalyanasundaram, J. has observed that an injunction would normally follow in the cases of infringement of  intellectual property rights, especially when the dishonesty qua the defendants was apparent, and a mere delay would not be a ground to deny an order of interim injunction in such cases.

The plaintiffs submitted that the defendants had deliberately copied their registered bottle design, and thereby had caused design infringement and passed off their bottles as that of the plaintiffs. The defendants contended that there was no novelty in the design of the plaintiffs since the curves on the bottles and the vertical projection on the caps were functional features, and similar designs were in public domain even prior to the plaintiffs’ design registration, hence, the design registration was invalid. The defendants also submitted that they had been selling the alleged infringing products from past five years to the knowledge of the plaintiffs, therefore, as per Section 41(g) of the Specific Relief Act, the plaintiffs had acquiesced their right.

The High Court noted that it was an admitted fact that the plaintiffs’ design was registered in 2008, whereas the defendants launched the impugned design only in 2011. Moreover, it was not the case of the defendants that they were prior user of the design. The defendants had also not produced any material to substantiate their submissions that the designs of the plaintiffs were not new and the similar bottled designs had been used previously. Also, since the defendants themselves claimed to be the registered proprietor of similar designs, hence, they could not be permitted to approbate and reprobate as to the registrability of the bottle design. The Court also noted that the utility of the grip of a bottle, or the feature to facilitate the opening of the cap, could also be attained by other design options, therefore, such features could not be considered as “essentially functional”. The Court, thus, concluded that the design of the plaintiffs had been copied and adopted by the defendants, and the plaintiffs had made out a strong prima facie case for the grant of interim injunction. [Dart Industries Inc v. Cello Plastotech, 2017 SCC OnLine Mad 1851, decided on 12.05.2017]

Case BriefsSupreme Court

Supreme Court: In an appeal filed by LexisNexis against the injunction granted by the Allahabad High Court on 1.4.2014 in favour of Eastern Book Company, a Bench of Ranjan Gogoi and R.V. Ramana, JJ disposed of the appeal by a short order in the following manner:

The appellants will be at liberty to publish, sell and distribute the raw judgments of the Supreme Court of India and other Courts obtained from whichever source along with their own head-notes, editorial notes, paraphrasing, explanatory notes, etc. as laid down in Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1. [Relx India Pvt. Ltd. v. Eastern Book Company, (2017) 1 SCC 1.]

Pratibha M. Singh, Sr. Adv. and Mr. Vikas Mehta, Adv. appeared for the appellants  and K.V. Viswanathan, Sr. Adv., Anitha Shenoy, Adv., Mr. Harshavardhan Reddy, Adv. Ms. Srishti Agnihotri, Adv. Mr. Dhananjay Bhaskar Roy, Adv. Mr. Rajshekhar Rao, Adv. appeared for the Respondents.

The Supreme Court in Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1 had granted copyright protection to Supreme Court Cases (SCC) in the following manner:

This extract is taken from Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1 at pages 114-15

“61. However, the inputs put in the original text by the appellants in (i) segregating the existing paragraphs in the original text by breaking them into separate paragraphs; (ii) adding internal paragraph numbering within a judgment after providing uniform paragraph numbering to the multiple judgments; and (iii) indicating in the judgment the Judges who have dissented or concurred by introducing the phrases like “concurring”, “partly concurring”, “partly dissenting”, “dissenting”, “supplementing”, “majority expressing no opinion”, etc., have to be viewed in a different light. The task of paragraph numbering and internal referencing requires skill and judgment in great measure. The editor who inserts para numbering must know how legal argumentation and legal discourse is conducted and how a judgment of a court of law must read. Often legal arguments or conclusions are either clubbed into one paragraph in the original judgment or parts of the same argument are given in separate paragraphs. It requires judgment and the capacity for discernment for determining whether to carve out a separate paragraph from an existing paragraph in the original judgment or to club together separate paragraphs in the original judgment of the Court. Setting of paragraphs by the appellants of their own in the judgment entailed the exercise of the brain work, reading and understanding of subject of disputes, different issues involved, statutory provisions applicable and interpretation of the same and then dividing them in different paragraphs so that chain of thoughts and process of statement of facts and the application of law relevant to the topic discussed is not disturbed, would require full understanding of the entire subject of the judgment. Making paragraphs in a judgment could not be called a mechanical process. It requires careful consideration, discernment and choice and thus it can be called as a work of an author. Creation of paragraphs would obviously require extensive reading, careful study of subject and the exercise of judgment to make paragraph which has dealt with particular aspect of the case, and separating intermixing of a different subject. Creation of paragraphs by separating them from the passage would require knowledge, sound judgment and legal skill. In our opinion, this exercise and creation thereof has a flavour of minimum amount of creativity.

62. The said principle would also apply when the editor has put an input whereby different Judges’ opinion has been shown to have been dissenting or partly dissenting or concurring, etc. It also requires reading of the whole judgment and understanding the questions involved and thereafter finding out whether the Judges have disagreed or have the dissenting opinion or they are partially disagreeing and partially agreeing to the view on a particular law point or even on facts. In these inputs put in by the appellants in the judgments reported in SCC, the appellants have a copyright and nobody is permitted to utilise the same.

63. For the reasons stated in the aforesaid discussion, the appeals are partly allowed. The High Court has already granted interim relief to the appellant-plaintiffs by directing that though the respondent-defendants shall be entitled to sell their CD-ROMS with the text of the judgments of the Supreme Court along with their own headnotes, editorial notes, if any, they should not in any way copy the headnotes of the appellant-plaintiffs; and that the respondent-defendants shall also not copy the footnotes and editorial notes appearing in the journal of the appellant-plaintiffs. It is further directed by us that the respondent-defendants shall not use the paragraphs made by the appellants in their copy-edited version for internal references and their editor’s judgment regarding the opinions expressed by the Judges by using phrases like “concurring”, “partly dissenting”, etc. on the basis of reported judgments in SCC. The judgment of the High Court is modified to the extent that in addition to the interim relief already granted by the High Court, we have granted the abovementioned additional relief to the appellants.”

Upon scrutiny of the judgments in the LexisNexis database, copyright protected elements were found in the versions of judgments of the Supreme Court in LexisNexis.

Eastern Book Company sued LexisNexis and the District Judge, Lucknow confirmed the ad-interim injunction in these terms:

98. The application for temporary injunction moved by the plaintiffs is allowed and during the pendency of the Suit, the defendants, their assigns and business franchisees, licensees, distributors, agents etc. are retrained from infringing the copyrights in the literary work of the plaintiffs in their law report “Supreme Court Cases” (SCC) and from selling, distributing or otherwise making available to the public, either as CD ROms or through their websites on the Internet or through any tablet or by any other means, copies of its law reports and databases which infringe the copyrights of the plaintiffs in and to the law reports titled Supreme Court Cases (SCC).” [Eastern Book Company v. Reed Elsevier Pvt. Ltd., RS No. 134/2012 dated January 1, 2014]

This injunction was confirmed by a Division Bench of the Allahabad High Court on 1.4.2014 in these terms:

“In the light of the aforesaid judgment, we arrive at conclusion that the exercise and creation of minimum amount of creativity has to be viewed in the context of journals to journals published by the parties and in order to examine it several facts have to be considered by the trial court in the light of the evidences adduced by the parties during the course of the trial. Therefore, keeping in view the ingredients which are necessary to examine the case for the purpose of temporary injunction, we are of the view that at this stage the respondents/ plaintiffs had prima facie case in their favour to issue temporary injunction against the appellants/defendants so that skill applied by their editor in editing the journals should not be misused by the appellants/ defendants.

Thus, we are of the definite opinion that the learned trial court has correctly appreciated the application for temporary injunction filed by the respondents/ plaintiffs and allowed it which do not require interference by this Court.

However, the appellants are permitted to publish, sell and distribute through their websites and C.D.Rom/ DVD the judgments pronounced by the Hon’ble Supreme Court and other Courts but along with their head notes and editorial notes with all precautions as has been cautioned by the Hon’ble Supreme Court in Modak’s case ( supra).” [Reed Elsevier Pvt. Ltd. v. Eastern Book Company, FAFO 134 of 2014 decided on 1.4.2014]

Significantly, in furtherance of the above directions, the Supreme Court directed the expeditious disposal of the suit and vacated the bar against the contempt proceedings, pending against LexisNexis, before the District Court, Lucknow.

On an earlier date (25.10.2016) the Court had passed this order:

“The prayers made in IA Nos. 5 and 6 (filed by the appellants), in our considered view, ought not to be allowed at this stage inasmuch as the grounds in support of prayer ‘c’ of IA No. 5 on which notice has been issued have been urged before the learned trial Court and the appellate court. Therefore, consideration of the said grounds and any finding thereon to sustain the relief so as to prayer ‘c’ of I.A. No. 5 is concerned, was amount to pre-judging the appeal.

However, to avoid any prejudice and in view of the assurance given by the learned counsel  for both the sides that the matter can be disposed of within a short time frame, we order hearing of civil appeal on 23rd November, 2016. The trial court and the High Court of Allahabad will take into account the present order of this Court before deciding whether it should proceed with the contempt case(s) pending before it.” [Reed Elsevier India Pvt. Ltd. v. Eastern Book Company. 2016 SCC OnLine SC 1380, decided on 25.10.2016]

Read the Spicy IP story here.

Tribunals/Commissions/Regulatory Bodies

Competition Commission of India:   Whilst OLA Cab (of ANI Technologies) is under the scanner of the fair play watchdog and undergoing an investigation by the Director General of Investigation (“DG”) for alleged abuse of dominant position; the Commission has rejected the plea of the informant for interim relief.  The Commission on 24-04-2015 had found a prima facia case against OLA for indulging into predatory pricing to  oust other players in the relevant market of “Radio taxi services in the city of Bengaluru” and had order for investigation.

The informant   Fast Track Call Cab sought an temporary injunction against OLA to restrain from indulging in alleged practice of predatory pricing on the ground that unfair practices of OLA Cab (“opposite party”) will cause irreparable lose to the informant and adverse effect on competition in the market.   Informant contended that the OLA after having received funds of about $250 Million from Soft Bank, Japan in March, 2014 unleashed an onslaught of anti-competitive practices resulting in large scale erosion of market share of the Informant.  

The majority of the Commission (5:1); ruled that simply because the Informant has a prima faciecase, by itself will not entitle him to the grant of interim relief, unless, he satisfies that there is irreparable loss and injury to him and that the balance of convenience also lies in his favour. It found that the existence of the second element, i.e., irreparable loss to the Informant or definite apprehension of adverse effect on competition in the market has also not been satisfied. Further balance of convenience also is not lie in the informant because figures submitted by him cannot be relied upon further unless the same are verified by the DG in its investigation. For the reasons and pending investigation, the Commission was not convinced that any interim relief is required to be granted in this case.

However, one member in his dissenting note after a thorough market analysis observed that the market conditions in the present case were conducive for a credible predatory strategy. He observed that the particular urgency for an order of restraint in the present case arises from the fact that the OLA has continued to pursue its loss-entailing price-incentive scheme in the relevant market even after the order of the Commission for initiation of investigation.  He found that the market performance of OLA based on its deep pocket and predatory strategy is an imminent danger for the Informant and the competition, thus there is an urgent need to stop the Opposite Party on its tracks. Fast Track Call Cab Private Ltd v. ANI Technologies Pvt. Ltd,  2015 CCI 24, Order on 03.09.2015

High Courts

Calcutta High Court: In a question raised before the Court as to whether an importer/ distributor of the goods which is manufactured/ exported from some other country can claim the proprietorship over the trademark which is used by the manufacturer/ exporter of that goods, the bench of I.P. Mukerji J., refused to pass an interim order to restrain the defendant from using the said mark and directed the defendant to maintain accounts of their sale from the date of filing of this application till the suit is decreed.

In the instant case, both the plaintiff and the defendant are engaged in business relating to import of sewing machines, cutting machines etc. from China and selling them in the Indian market under the trademark “LIPU”. The Counsel for the plaintiff Pratap Chatterjee, claimed for a passing off injunction order to restrain defendant from using the same mark on the ground that they are using this mark from 1994 and the same is printed on the packaging of their goods as well as the invoices, challans, bills, etc. The Counsel for the defendant Jishnu Saha, relied on Registered Trade Marks of the Apollinaris Company Ltd, 1891 Vol 8 RPC 137 and contended that an importer cannot normally claim proprietorship over the mark of an exporter or manufacturer unless and until he proves that the mark has become inextricably connected with him in the eyes of the public.

The Court rejected the contention of the plaintiff that the machines were manufactured in China and the mark “LIPU” was imprinted on the machines on the instructions of the plaintiff. Court observed that the plaintiff’s as well as the defendant’s application for registration of the mark is still pending. The Court noted that “LIPU” is a region in China; the invoices were raised by the Chinese manufacturers; the manufacturing activity took place in China; the plaintiff as well as the defendants are only the retailers/ distributors of the goods manufactured in China. The Court concluded that this is a case of “reverse passing off” and therefore the brand “LIPU” belongs to the Chinese exporter and manufacturer and not to the plaintiff or the defendant.

The Court disposed of the application by refusing to pass an interim order to restrain the defendant from using the mark, as the proprietorship over the mark remains only with the manufacturer/ exporter of the goods. Sunny Sales v. Binod Khanna, 2014 SCC OnLine Cal 18505, decided on November 10, 2014