In times of the coronavirus pandemic, while the world strives to restore a semblance of normalcy, the field of intellectual property continued to witness some interesting updates in the country. The courts swiftly normalized digital conferencing modes to adjudicate dispute matters and pass noteworthy decisions to enforce as well as rationally defend intellectual property rights of different brands. This newsletter brings to you the key intellectual property related updates in India for the third quarter of the year.
The Delhi High Court continued with its trend of passing dynamic injunction orders against rogue websites indulging in online violation of trademarks and copyrights, and provided reliefs to Indian brands viz. Amul, Aaj Tak and Snapdeal and international brand Disney.
In recent times, owing to the Black Lives Matter movement, colour-based discrimination and its impact on society has become a focal point of all discussions. In this backdrop, an interesting case came before the Bombay High Court, where at the heart of the matter was a trademark tussle between the international giant Hindustan Unilever Limited and an Indian cosmetic player Emami over a newly minted brand "Glow and Handsome" for men's fairness cream.
In another interesting case relating to the famous beer brand "Budweiser", the Delhi High Court (the "Court") had the opportunity of analysing as to what extent a satirical video would lead to unfair competition, commercial disparagement, dilution and tarnishment of the goodwill and reputation of brand 'Budweiser' along with trademark infringement. The Court also in another case against Fox Star Studios revisited the principles surrounding copyright protection in theme/plot of a cinematographic film as laid down in landmark judgment of RG Anand v. Delux Films. The Court also examined the trend of filing injunction petitions at the eleventh hour in this case. In another significant case, the Court went on to modify its already-passed interim injunction order under the provisions of the Code of Civil Procedure, 1908, upon becoming aware of the plaintiff's limited use of their brand, which fact was hidden by them initially in their pleadings.
On the regulatory side, the Indian Performing Right Society, which is a copyright society under the Indian Copyright Act, 1957, refined its processes and functions for enhancing transparency for its members and licensees, by providing clarity on its monetisation policy, entering into licensing agreements and strategic deals with various market players in India and globally and digitization of its portals.
The above-mentioned update and notable cases are discussed below.
NOTABLE CASE LAWS
Dynamic Injunction Orders By The Delhi High Court
In the past months, the High Court of Delhi (the "Court") was on a spree of passing dynamic injunction orders against rogue websites. On July 20, 2020, July 27, 2020, August 28, 2020 and September 24, 2020, different benches of the Court passed dynamic injunction orders in four separate suits which were instituted by Snapdeal Pvt. Ltd. ("Snapdeal"), Disney Enterprises Inc. ("Disney"), Gujarat Cooperative Milk Marketing Federation Ltd. ("Amul") and Living Media India Ltd. ("Aaj Tak") respectively against numerous rogue websites breaching their trademarks and copyrights. The suits filed by Aaj Tak, Amul and Snapdeal were filed against such rogue websites which were engaged in infringement of the respective registered trademarks of Aaj Tak, Amul and Snapdeal.1 Disney had sought injunction against such rogue websites which were engaged in providing illegal and unauthorised distribution, broadcasting, rebroadcasting, transmission and streaming of Disney's copyrighted content.2
These orders are in consonance with the parameters laid down in UTV Software Communication Ltd. & Ors. vs. 1337x.to & Ors., 20193 for passing dynamic injunction orders. In all four orders, the plaintiffs have been permitted to approach the Court for subsequent impleadment of mirror/redirect/alphanumeric websites which provide access to the defendant websites, by filing an application under Order I Rule 10 of the Code of Civil Procedure, 1908.
In all four cases, it was contended by the respective plaintiffs that such illegal activities of the defendants' websites have a direct impact on the plaintiffs' business and constituted an infringement of the exclusive trademark and copyright rights conferred upon them.
Snapdeal had filed the suit against such websites which were infringing its registered trademark "Snapdeal" by offering fraudulent prize schemes, lotteries and lucky draws under it. Similarly, Amul and Aaj Tak had filed separate suits against such rogue websites which were using the registered trademarks 'Amul' and 'Aaj Tak' of the respective plaintiffs as part of their websites/domain names.
The suit filed by Disney was slightly different from the suits filed by Snapdeal, Amul and Aaj Tak as Disney's grievance was against such rogue websites which were enabling the down-streaming of their creative works protected by the copyright law, which includes films and other entertainment programmes, without requisite licenses.
In all four suits, the Domain Name Registrars ("DNRs"), Department of Telecom ("DOT") and the concerned ministry of the Union of India i.e. MEITY were also arrayed as parties so that orders passed by the Court can be implemented effectively.
Findings of the Court:
In the four cases filed before the Court, different benches of the Court have rightly granted dynamic injunctions in favor of the plaintiffs by placing reliance on the evidence placed on record by the plaintiffs. The Court has also rightly applied the principles laid down in UTV (supra) to these cases while granting dynamic injunctions. Such dynamic injunction orders not only save precious judicial time but also help the courts to dynamically monitor such egregious illegality by rogue websites and, if necessary, pass interim orders to restrain similar rogue websites. Moreover, by granting a dynamic injunction, the Court has left the door open for the plaintiffs to easily approach the Court in case the defendants create mirror/redirect/alphanumeric websites in future. The practice adopted by the Court in cases involving rogue websites is laudable and is a positive development in the direction of the enforcement of intellectual property rights, digitally
1 Snapdeal Pvt. Ltd. vs. Snapdelalucky-draw.org.in & Ors. CS(COMM) 264/2020; order dated 20.07.2020; Gujarat Cooperative Milk Marketing Federation Ltd. Vs. Amul Franchise.In & Ors CS(COMM) 350 of 2020; order dated 28.08.2020 and Living Media Limited & Anr. vs. www.news-aajtak.co.in& Ors; order dated 24.09.2020
2 Disney Enterprises Inc. & Ors vs. Kimcartoon. To & Ors. CS(COMM) 275/2020; order dated 27.07.2020
3 (78) PTC 375 (Del)
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