A power of attorney, also known as a letter of attorney, is a formal authorisation to represent or act on behalf of someone in private, commercial, or legal matters. The scope of the powers vested with a person after attaining a power of attorney was discussed in the latest judgment of Anil Kumar and Anr (Petitioner) v. Amit (Respondent) by the Delhi High Court on 17th November, 2021. The present dispute was a land related matter which involved various parties; however, the decision of the court with regards to a power of attorney holder is the highlight of the case.

Mr. Amarjeet Singh Sahni (hereby referred to as “Mr. Sahni”), was acting as the Petitioner's power of attorney holder and had validated the plaint which was to be submitted to the Court, on behalf of the Petitioner. Mr. Sahani was also representing the petitioner as his advocate in the current matter. It was made evident by the court that advocates acting as both power of attorney holders for their clients (thus acting as the Client itself) and advocates in the issue are in violation of the Advocates Act of 1961. Any advocate representing a client may only perform one role: that is, an advocate in the proceedings. He or she cannot operate as a power of attorney holder, check pleadings, submit applications or other papers, or give testimony on his or her client's behalf. The courts also ordered that all the Trial Courts must ensure that this component is strictly adhered to. Several court rulings have clarified this legal situation such as;

In Baker Oil Tools (India) Pvt. Ltd. & Ors. v. Baker Hughes Ltd. & Ors., 2011 (47) PTC 296 (Del), the Court held:

“Thus as is manifest from the said rule, it would be a professional misconduct if a lawyer were to don two hats at the same time. However not only that, the partnership firms have a hurdle for acting in the said two capacities even under The Partnership Act, as every partner in a partnership firm is an agent of another and if one were to be acting as an advocate for a client, the rest would also be in the same capacity by virtue of agency and the same would be the situation in case of an advocate acting as a client. However, it cannot be forgotten by any who has ever been graced with the honor of wearing the robe that the lawyer is first an officer of the court and his prime duty is to assist the court in the administration of justice. Law is not a trade and briefs no merchandise and so the avarice of commercial gains should not malign this profession. Hence there can be no divergent view on the legal proposition that an Advocate cannot act in the dual capacity, that of a constituted attorney and an advocate.”

As a result, because of the above mentioned explanation, the Court directed Mr. Sahni to continue to possess the power of attorney of the petitioner and dissolve himself from the position of counsel for the petitioner, as holding both the positions may result to professional misconduct.

SaNOtize Research and Development Corp (hereby referred to as “SaNotize”) is a pharmaceutical company, based in Canada. Lupin Limited (hereby referred to as “Lupin”), situated in Mumbai, India, is an Indian multinational pharmaceutical corporation.

SaNOtize developed a product for treating a variety of disorders utilising various formulations. One of them was a patented approach for using a particular delivery system for administering to a patient, a specific formulation and a calibrated dose of Nitric Oxide. This is known as SaNOtize's Nitric Oxide Releasing Solution, or NORS. The term NORS is registered as a trademark by SaNOtize. The packaging and structure of NORS is also protected under copyright.

CHAIN OF EVENTS IN THE CASE:

SaNOtize produced an allopathic component of Nitric Oxide which could be used to treat different ailments. Its method of usage of the product was a nasal spray.

Lupin approached SaNOtize to manufacture and distribute the product NORS in India. It signed a confidentiality agreement with Lupin with respect to the manufacturing and distribution of the product NORS in India in May, 2021. The confidentiality agreement was regarding any disclosure or personal use of confidential information shared by SaNOtize.

However, Lupin itself was involved in manufacturing an Ayurvedic product combining “Bijora Nimbu (citrus lemon), Fr. Satva and Samudra Lavana with an added preservative” which resulted in production of nitric oxide. Its method of delivery of the formulation was in the form of a nasal spray. The product was named “NOXGUARD”. Lupin got “NOXGUARD” registered at the Trade Marks Registry in July, 2021. It obtained authorization for the use of NOXGUARD from the Drug Controller General of India (DCGI), in April, 2021, and signed a confidentiality agreement regarding the production and distribution of NORS in India with SaNOtize in May, 2021. In the case of SaNOtize Research and Development Corp v. Lupin Ltd. (hereby referred to as ‘the case’), SaNOtize filed a suit for breach of confidentiality agreement against Lupin.

It was observed by the Court that while signing of the confidentiality agreement, Lupin did not disclose any information about it producing a similar product. Even though, NOXGUARD produced by Lupin was Ayurvedic, the nasal delivery system was similar to that of SaNOtize.

In the present case, SaNOtize asserted that it has no monopoly on the usage of Nitric Oxide for any purpose. However, the issue present was whether Lupin’s non-disclosure of the information of its production of a similar product, vitiates the intention behind the confidentiality agreement signed between both the parties.

The Court observed that Lupin had access to SaNOtize's files, which would have made Lupin, a party to the trade secrets of SaNOtize’s NORS. In July 2021, Lupin had submitted to the Trade Marks Registry a trademark registration application for NOXGUARD, which got advertised. However, it did not inform SaNOtize about it.

There are specific elements that must be present in every instance of violation of a confidentiality agreement. To begin with, it must be shown that the information is genuinely proprietary, meaning that it is protected by secrecy. Secondly, it must be shown that the receiving party had access to the information. Thirdly, the purpose of the agreement is to keep the mentioned information discreet and be used only for the ‘stated purpose'. Therefore, in the present case, the Court observed that Lupin had received the confidential information and trade secret related to the product “NORS” which would give them scope to plagiarize the information when manufacturing and selling NOXGUARD.

As stated earlier, SaNOtize did not claim any monopoly over the nitric oxide element, but it stated that neither any permission was sought, and nor any intimation was given by Lupin about the similar “Ayurvedic” product which was in the making at the time of signing the confidentiality agreement. Also, in the disclosures provided by SaNOtize, it was observed by the Court that certain images were provided to Lupin which would have completely disclosed the packaging and structure of the intended product. This would have made Lupin liable for copyright infringement.

Therefore, due to the above mentioned reasons, the decision of time limited injunction was granted in favour of the SaNOtize and the following was quoted by the Court:

“I believe these reasons are sufficient to grant a time-limited injunction in terms of prayer clause (a)(iv) of the Interim Application, which reads thus:

“(a) That, pending the hearing and final disposal of the present Suit, this Hon’ble Court be pleased to issue orders and temporary injunctions (prohibitory or mandatory, as the case may be)—

(b) Restraining Lupins No. 1 and 2, and (as the case may be) their directors, employees, contractors, agents, business partners and affiliates from in any manner manufacturing, marketing, selling, offering for sale or otherwise dealing in or with the impugned Product, NOXGUARD;”

CONCLUSION:

Therefore, not informing SaNOtize of the production of a similar product by Lupin while signing a confidentiality agreement, could prove to be a cause for breach of the confidentiality agreement. Even though the variants of the product are different, the method of use (nasal spray) and similarity of name are enough reasons to confuse the public and also violate the confidentiality agreement between the two parties.

Reckitt Benckiser India Private Limited, (“RB”) an internationally renowned company involved in the manufacture of the famous toilet cleaner “HARPIC”, is the registered proprietor of the word mark ‘HARPIC’ in class 3 bearing registration No. 347055 dated 15.03.1979. RB has also filed applications for registration of the unique and distinctive bottle shape of its HARPIC branded products in India in classes 1 and 3 and the applications for their trademark registration are pending before the Trade Marks Registry.

Hindustan Unilever Limited (“HUL”), a consumer goods company, introduced its toilet cleaner ‘DOMEX’ in India in 1997. In 2015 – 2016, it came up with a unique technology which helps in making the hard surfaces such as that of a toilet bowl, hydrophobic by using a chemical compound called Silane. Due to the novelty of the said technology in its product ‘Domex FreshGuard’, it contains patented technology for Hard Surface Treatment Composition under Patent No. 368377.

HUL launched five advertisements including a television commercial ("TVC"), print advertisement and YouTube videos which as a general theme implied that the use of HARPIC leads to bad odour and that HUL’s product is of superior quality.

The present case, before the Hon’ble Delhi High Court, deals with a suit filed by RB against HUL for injunction under Order 39 Rules 1 and 2 of the Civil Procedure Code, to restrict and prevent the HUL from denigrating and disparaging the goodwill and reputation of the RB’s trademark ‘HARPIC’ and restrain it from broadcasting the impugned advertisements which defame and vilify the plaintiff’s product.

The TVC showed a child questioning his mother who was buying HARPIC and casting a shadow on the efficiency of the product. HUL’s toilet cleaner was then shown as an alternative to the same. It was contended by RB that the TVC makes false assertions which clearly ridicule the use of RB’s product and nudges consumers to shift their preference to Domex instead. HUL claimed that the statements made in its TVC were completely true and there was no disparagement of RB’s product.

The third advertisement directly made a comparison between the two products which was alleged to be defamatory. With regards to the second, fourth and fifth advertisement, the use of the clearly identifiable Harpic bottle and the implication that it’s an ‘ordinary toilet cleaner’ was disputed by RB. HUL denied the claim and stated that there was no reference to RB’s product and it was a rough rendering of a generic shape of a toilet cleaner bottle.

FINDINGS

The Court relied on a catena of judgments and clarified that the general legal stance is that in comparative advertisements, one must not make misleading or false assertions which defame the goods of the competitor and make them seem inferior. However, the Court conceded that within the ambit of the grey area, comparison of goods and establishing superiority is permissible and the overall effect and intent of the advertisement need to be assessed.

It was held that a holistic look of the TVC shows that it does not intend to denigrate RB’s product but only seeks to show that the defendant’s product, DOMEX is a better solution on account of its patented technology. It was reiterated that a plaintiff must not be hypersensitive as commercial speech, a part of Article 19 of the Constitution of India, gives certain room to the advertiser to play around in the advertisements.

The Court also held that the second, third, fourth and fifth advertisements, prima facie disparaged the product of the plaintiff, and the defendant was restrained from publishing the same on all forums until the references to RB’s product or the bottle which is deceptively similar to the registered mark of RB, were removed.

The famous case of Burj Al Arab¹ has taken a new turn recently. Jumeirah Beach Resort LLC (Jumeirah) filed a case against Designarch Consultants Pvt. Ltd. (Designarch) for imposition of injunction against infringement of trademark and copyright. Designarch is the registered proprietor of the trademarks “BURJNOIDA” and in Class 37 in India. Designarch also obtained copyright registrations over the drawings of its building plans for the BURJNOIDA tower. Jumeirah has no trademark registration in Class 37, but has registered its mark “Burj Al Arab” and device in other classes such as 35, 36, 39, 41, 42.

Earlier, when Designarch had filed a suit against Jumeirah (covered in our article here.) for the same contending marks, the Court was in support of Designarch and was convinced that Designarch had made out a prima facie case in its favor and granted an injunction against Jumeirah restraining it from extending any threat to Designarch in relation to its registered marks/ logos or the design of the building, until the next date of hearing.

In the present case filed by Jumeirah, it contended that Burj Al Arab has been providing service in India since 2009. It was contended by Jumeirah that the BURJ marks have been extensively, continuously, and uninterruptedly used by it globally. Designarch’s impugned marks are identical/deceptively similar (phonetically, structurally and visually) to Jumeirah’s prior and famous BURJ marks. It was claimed by Jumeirah that Designarch copied its BURJ marks and logo. It was argued that a significant part of the trademark of Jumeirah is infringed. Jumeirah therefore prayed that the Court restrain Designarch from using the impugned mark which is identical with and/or deceptively similar to Jumeirah’s well-known, registered BURJ Marks.

Designarch stated that the word BURJ per se is publici juris and cannot be monopolized. However, the Court disregarded this plea of Designarch as it had itself applied for registration of the mark “THEBURJ” twice, indicating its claim to the mark being distinctive.

The Court referred to the decision of the United States Court of Appeals for the Federal Circuit [380 F.3d 1340 Re Chatam Int’l, Inc]. In this case, it had to be ascertained “whether the mark JOSE GASPAR GOLD was similar to the registered mark GASPAR’S ALE”, and the Court had held that GASPAR was clearly the dominant element in the two marks and resembled the relevant mark enough to cause a likelihood of confusion.

The Court also relied upon Jagan Nath Prem Nath v. Bhartiya Dhoop Karyalaya wherein it was held that, “…an action for infringement, the plaintiff can succeed if he shows that the defendant’s mark is similar to the plaintiff’s mark as it would be remembered by persons possessed of an average memory with its usual imperfections or that its essential particular or the distinguishing or essential feature has been copied.”

After analyzing the similarity between marks of Jumeirah and Designarch, the Court acknowledged that “Prima facie, it appears that the defendants’ trademarks are deceptively similar to the marks of the plaintiff. The essential features of the trademark of the plaintiff have prima facie been copied.”

Designarch relied upon to the case of Nandhini Delux v. Karnataka Cooperative Milk Producers Federation Ltd. to contend that Jumeirah prima facie cannot enjoy a monopoly on the trademark in question over the goods/class of goods/services in which it is not operating. It was acknowledged that Jumeirah is majorly into running its hotels internationally whereas, Designarch pertains to building construction, repair, installation services. Hence, the Court observed that Jumeirah and Designarch are operating in different fields. Furthermore, the Court also took into consideration the fact that Designarch’s residential project is under construction in India for the last ten years and the mark has been in use since at least 2011. In view of the same, the Court did not injunct Designarch from using the term Burj completely, and permitted use of the mark BURJNOIDA only for the present ongoing project. However, an injunction order was passed in favor of Jumeirah and against Designarch, restraining it, from in any manner using the trademark BURJBANGALORE, BURJMUMBAI, BURJDELHI, BURJGURUGRAM and BURJGURGAON or any other similar trademark till the pendency of the present suit.

¹JUMEIRAH BEACH RESORT LLC v. DESIGNARCH CONSULTANTS PVT. LTD. & ANR – CS(COMM) 124/2021

Britannia Industries Ltd (Britannia) has a registered trademark “GOOD DAY” since 1986 for the goods viz. biscuits and cookies. The word mark/ trademark “GOOD DAY” in Class 30 has been in use since 1986 for goods being “biscuits, bread and non-medicated confectionery” and another word mark/ trademark GOOD DAY in Class 30 since 2018 for “biscuits”. Besides this, it has several other registrations comprising of the word mark “GOOD DAY” – both in India and abroad.

Somewhere in August 2021, Britannia came to know that Good Day Oral Care (Oral Care) was using the mark “GOOD DAY” for Toothpaste. This mark is identical to Britannia’s mark “GOOD DAY”. Britannia also came to know that Oral Care is operating a website under the domain name ‘gooddayoralcare.com’, which contains Britannia’s well-known mark “GOOD DAY”.

Oral Care had come up with three variants of the goods under the impugned mark, the packaging of all three products have been reproduced hereunder for ready reference of the readers.

Source- Judgment:-

We do not claim any copyright in the image used. It has been used for academic and representational purposes

Therefore, Britannia approached² the Delhi High Court seeking a permanent injunction against Good Day Oral Care and several other parties restraining them from infringing Britannia’s trademark and copyright.

It claimed that its word mark “GOOD DAY” is a well-known mark and it has invested considerable time and resources for the promotion of its products bearing the said trademark.

Britannia claimed that Good Day Oral Care is the manufacturer its product under the impugned mark “GOOD DAY”. JJ Dental Corporation is the owner of the website on which the products of Oral Care are being displayed and sold. Britannia adjoined several other parties as defendants in the suit. Britannia averred that some of the defendants acted in collusion and applied for the registration of the mark/ device “GOOD DAY”/in Class 21. These are currently under objection from the Trade Marks Registry. (all defendants are jointly referred to as ‘Defendants’)

Britannia claimed that the Defendants' malafide are evident from the fact that they not only adopted the impugned mark “GOOD DAY”, but also that they wrongly adopted several representations of Britannia’s smile device .These two: “GOOD DAY” and the smile device when compared with Britannia’s registered mark appear to be similar.

Britannia claimed that considering the manner in which Oral Care is using the impugned trademark, it is evident that the general public would associate Oral Care’s product with that of Britannia; that there is sufficient material placed on record, which would indicate that the usage of the impugned mark by the Defendants would suggest an association and mistaken identity with respect to Britannia's mark.

Oral Care rebutted that the mark “GOOD DAY” is a generic mark and is being used by several other entities. It added that the mark has been registered under several other classes in favour of other entities. Hence Britannia cannot claim a monopoly over the mark “GOOD DAY” or seek an injunction against it.

Oral Care supported its contention by highlighting the examination report pertaining to its mark, wherein the Trade Marks Registry has pointed out that there is a conflicting mark “GOOD DAY”, registered in favour of one Kerala Soaps and Oils Ltd. since 1982 – with respect to goods being ‘Toothpaste', as well as, for goods like ‘Agarbatti’ in favour of another proprietor viz. Pitamber B. Ramnani since 1987.

Oral Care claimed that there are more than twenty-five such registrations of the mark “GOOD DAY”, and therefore, the Court may not grant an ex-parte order against it, and afford it an opportunity to file a written statement and response to the application before passing any order(s).

Britannia countered by stating that the IPAB, after taking note of the materials placed on record, was convinced that Britannia’s trademarks qualified as a well-known mark within the ambit of Section 2(1)(zg) of the Trade Marks Act, 1999.

Therefore, Britannia claimed that Oral Care’s use of GOOD DAY word mark/device with respect to toothpastes is an infringement under Section 29(4)(b) of the Trade Marks Act. Britannia added that notwithstanding the registration of the trademark “GOOD DAY” in favour of other entities, it is still entitled to seek injunction against Oral Care. Additionally, the two registrations mentioned by Oral Care have already lapsed.

The Court held that prima facie, there is sufficient material placed on record which demonstrates that Britannia’s mark has been acknowledged to be a well-known mark. Hence Britannia has a right to seek injunction relying upon Section 29(4) (b) of the Trade Marks Act 1999.

Also since Oral Care has filed the mark on a “proposed to be used” basis, it is unable to convincingly demonstrate how the use of the impugned mark would not amount to infringement.

The Court held that Oral Care’s adoption is prima facie not honest and is intending to take advantage of the reputation and goodwill of “GOOD DAY”, which is likely to mislead an average man of ordinary intelligence. Therefore, regardless of the fact that there are previous registrations in respect of the mark “GOOD DAY” in favour of other entities, Britannia would still be entitled to approach this Court.

In light of the above circumstances, the Court granted an interim injunction in favour of Britannia restraining the Defendants from manufacturing, advertising/ marketing, offering for sale, or in any manner dealing in goods, including but not limited to toothpaste and/or such allied and/or cognate goods bearing the mark “GOOD DAY” or device ‘'and/or any deceptively similar mark/ device. The Domain Name Registrar was directed to suspend the domain name ‘gooddayoralcare.com’.

The Court clarified that all the rights and contentions are kept open for consideration at a later stage when Oral Care file its reply.

²Britannia Industries Ltd Vs. Good Day Oral Care & Ors.- CS(COMM) 572/2021 dated 15.11.2021

Have you been to a Cobbler lately? If you have, we wouldn’t have to explain much about this time’s logo or the above image. However, if you haven’t, you would find it interesting to know that the image on the right, is a traditional cobbler’s stand used for sewing up or repairing chappals, shoes, sandals and other types of footware.

The logo of the footware selling brand Mochi: contains this device itself, signifying their presence in the footware sector. Another interesting fact is that the word “Mochi” itself means Cobbler, and hence the name and the brand.

Further, while we are at it, don’t buy newer and newer footware. Practice sustainable living and have your old one repaired!

-Adv. Chinmay Pawar

Mahajanpadas- Kamboj

‘Mahajanpada’ literary means “great realm of people”. The term ‘Mahajanpada’ refers to 16 the monarchies and ‘republics’ that stretched across modern-day Afghanistan to Bangladesh in the 6th century B.C. The 16 Mahajanpadas were – Kasi, Kosala, Anga, Magadha, Vajji (or Vriji), Malla, Chedi, Vatsa (or Vamsa), Kuru, Panchala, Machcha (or Matsya), Surasena, Assaka, Avanti, Gandhara, Kamboja.

The Mahajanapadas signify the tribes that came together to form groups and later gave rise to a permanent area of settlements. Some of these ‘realms’ were republics governed by a general assembly and a council of elders led by an elected ‘king consul’. They represent a transition from a semi-nomadic tribal society to an agrarian-based society with a vast network of trade and a highly-organized political structures.

Kamboj Mahajanpada comprised an area of modern day Tajikistan, eastern Uzbekistan, Jammu & Kashmir, Iran and southern Afghanistan. The Kambojas were famous for breeding excellent horses and were remarkable horsemen. Kambojas were constituted into military unions/branches and corporations to manage their political and military affairs. The Kamboja cavalry offered its military services to other nations as well. There are numerous references to Kamboja having been requisitioned as cavalry troopers in ancient wars by outside nations.

-Adv. Chinmay Pawar

Hogenakkal Waterfall

Hogenakkal waterfall is a series of waterfalls located in Karnataka on its border with Tamil Nadu. ‘Hoge’ means smoke and ‘Kallu’ means rock in Kannada. Hogenakkal essentially means smoke over the rocks. It is called ‘Marikottayam’ in Tamil.

One can enjoy a coracle ride on the river in between the giant rocks with waterfalls on both sides. Coracles are circular boats of approximately 7 ft. 4 in. diameter and can carry eight people at a time. They are made of bamboo. These boats are steered and propelled using a single paddle, making them unique. The coracles are locally called ‘parisal’ in Tamil and ‘teppa’ or ‘harigolu’ in Kannada.

Location of Hogenakkal waterfall (Source: Google maps)