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23

AUG

2019

Singhania & Co.,

Solicitors & Advocates

23rd August 2019

IPR Newsletter

In the growing age of internet, e-commerce and social media, cases relating to infringement of intellectual property are becoming more rampant and laws are constantly evolving to increase the scope of protection of intellectual property rights. This issue of our newsletter contains some of the recent and reformative judgments that shall pave the road ahead for trademark and copyright laws in India.

The decisions of these judgements can be summarised as follows:

  • Adoption of the name ‘Free Dish’ constitutes infringement of the trademark ‘Dish TV’.
  • Copyright protection given to “cinematographic films” is at par with other original works.
  • Copyright cannot exist in the title of a literary work in isolation.
  • E-commerce platforms restrained from enabling sale of products of ‘direct selling’ companies without their consent.

  1. Prasar Bharti restrained from using ‘Dish’ in the trade name ‘DD Free Dish’

In this case Dish TV India Ltd. (plaintiff) had filed a suit for permanent injunction restraining Prasar Bharti (defendant) from infringing the trade mark ‘Dish TV’ by adopting the name/ mark ‘Free Dish’.[1] The plaintiff contended that the word ‘Dish’ was first appropriated by them in the year 2003 and is a key mark which is being used to offer several services such as dish+, Dish TruDH+, dish dvr etc. and also as a part of its corporate name and website. The plaintiff also argued that the defendant renamed its Free to Air DTH service ‘DD Direct+’ to ‘Free Dish’, in May 2014, to capitalize on the goodwill of the plaintiff and had mala fide intent to do so. Prasar Bharti contended that there is no similarity between ‘DD Free Dish’ & ‘Dish TV’, whether phonetic or visual, therefore the possibility of consumers being misled does not arise. Further, it was also argued that confusion will not arise as there is a difference in the services and subscriber base of the plaintiff and the defendant. The defendant also argued that the word ‘Dish’ is generic or common to the trade and no one can claim exclusive right over it because it is devoid of any distinctive character. The Delhi High Court rejected the arguments of the defendant and held it to be a prima facie case of infringement. It was also held that as the defendant was providing services without using the word ‘Dish’ till 2014, it could not be argued that ‘Dish’ was being used as an indicative of the kind or characteristic of services being rendered by the defendant. It was also observed that the word ‘Dish’ was not generic to or common to the trade of DTH service. Even though the defendant’s mark was using the word ‘DD’ to denote Doordarshan, the Court observed that it could not be said that the consumers may not get confused that there may be some business structure between the defendant and plaintiff. An interim order was passed restraining the defendant from using the mark ‘DD Free Dish’ or any other mark incorporating the word ‘Dish’ in it till the pendency of the suit. The defendant was also granted a time of three months’ time to inform its subscribers of the new name for the purpose of not causing any confusion.

  1. Copyright in the bollywood movie in ‘BAND BAJA BAARAT’ infringed by Telugu movie ‘JABARDASHT’

Yash Raj Films Pvt. Ltd. (plaintiff) filed a copyright infringement case against Sri Sai Ganesh Productions & Ors. (defendant) alleging that the Telugu movie, Jabardasht, was a blatant copy of the plaintiff’s movie, Band Baja Baaraat, and there were substantial and material similarities in terms of theme, concept, plot, character, sketches, story, script, form and expression etc. The plaintiff sought for permanent injunction restraining defendants from violating and infringing their copyrights in BBB by releasing the impugned movie and dubbing it in any other language including Tamil. Justice Manmohan of the Delhi High Court, while passing his order in favour of the plaintiff, relied on MRF Limited v. Metro Tyres Ltd.[2] where the Court held that copyright subsists in the ‘cinematographic film’ independent from other underlying works that come together to constitute it and that there is a requirement of originality to exist in ‘cinematographic films’ which can be read into Section 13(1)(b) of the Copyright Act, 1957 through Sections 13(3)(a) and 2(d) of the said Act even though it has not been explicitly mentioned. It was also held that the expression “to make a copy of the film” in Section 14(d)(i) of the said Act does not mean just to make a physical copy of the film by process of duplication. Further, as the scope of protection of films was at par with other original works, the Court would apply the test of originality laid down in the landmark case of R.G. Anand v. Deluxe Films, (1978) 4 SCC 118, to compare the ‘substance, foundation and kernel’ of the two films and see if an average viewer would get an unmistakable impression that one work was a copy of the other. In the present case, the Court found that the defendant had copied the fundamental, essential & distinctive features along with expression of BBB and had thereby infringed plaintiff’s copyright.

  1. Does copyright exist in a ‘title’ of a literary work in isolation?

A movie titled ‘Kolaiyuthir Kalam’ which roughly translates to ‘Season of Death/Murders’ starring Nayanthara was in dispute not because of its storyline but because of its title.[3] The defendants were set to release their movie titled ‘Kolaiyuthir Kalam’, which was the tile of a novel authored by a famous Tamil writer, Mr. S. Rangarajan, who had coined this term specifically for the novel. The plaintiff alleged that since the title of the novel was not an ordinary word or not used in common parlance, thus bore a distinctive character and is therefore a ‘literary work’ under Copyright Act, 1957. The plaintiff had copyright over the title by virtue of an agreement with the author, where the author had assigned copyright in the novel to the plaintiff. Thus, by using this term for their movie, the defendants had infringed the copyright of the plaintiff. The defendants argued that definition of ‘literary works’ under the said Act does not include ‘titles’ and also there are no rights that exist in the title, which is just used to identify the literary work. The Madras High Court relied on the Supreme Court case of Krishika Lulla and others v. Shyam Vithalrao Devkatta and another[4] and held that copyright does not exist in the title of a literary work and that title of a common name cannot be protected under the Copyright Act, 1957.

  1. E-commerce platforms restrained from enabling sale of products of ‘direct selling’ companies without their consent

M/s Amway India Enterprises Pvt. Ltd., M/s Modicare Ltd. and M/s Oriflame India Pvt. Ltd. (plaintiffs) filed a batch of seven suits against various e-commerce platforms, such as Flipkart, Amazon etc. and sellers on the said platforms (defendants) for restraining the defendants from selling their products on these platforms without the consent of the plaintiffs.[5] The plaintiffs contended that its original products were being purchased from open market by unauthorized means or via leakages in the plaintiff’s supply chains, and then being sold on e-commerce platforms at cheaper prices and in tampered and impaired state. It was also contended that the e-commerce platforms did not give information about the real sellers of these products which made it difficult for consumers to resolve their disputes causing reputational harm to the plaintiffs. In the present case, the Delhi High Court held that a case was made under Section 30(4) of the Trade Marks Act, 1999 and the defendants would be liable for trademark infringement as even if the re-sale was of a genuine product purchased directly from the plaintiff’s distribution network, the product was being changed or impaired after the first sale as the seal was being tampered and the return and refund policy of the plaintiff was not being passed on to the customers. The Court also found that the defendants were in violation of the Direct Selling Guidelines, 2016, as they were selling the original products on e-commerce platforms without the consent of the plaintiffs. It was also observed that e-commerce platforms were not passive non-interfering platforms but provided value added services to both the consumers and the users. Thus, e-commerce platforms to be protected under the safe harbour provision under Section 79 of the Information Technology Act, 2000, would have to comply with the requirement of carrying out due diligence.

Author: Ms. Srishti Singhania – Senior Associate and Co- Authors – Mr. Achintya Sunil and Ms. Harshita Gupta, Interns at Singhania & Co., Mumbai. In case of any queries please contact/write back to us at srishti@singhanialaw.com or mumbai@singhanialaw.com.


[1] Dish TV India Ltd. v. Prasar Bharti, 2019 SCC Online Del 9141.

[2] CS (COMM) 753/2017, Delhi High Court.

[3] Order dated 28th June 2019, O.A. No. 580 of 2019 in C.S. No. 358 of 2019, Madras High Court.

[4] Criminal Appeal No. 258 and 259 of 2013, Supreme Court of India, decided on 15th October 2015.

[5] Amway India Enterprises Pvt. Ltd. v. 1MG Technologies Pvt. Ltd. and Anr., CS(OS) 410/ 2018, Delhi High Court.

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