Jul 20

RKD NewsNet July 2020

From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar

General News

  • The Curious Case of Judicial Adventurism
  • International News

    The Curious Case of Judicial Adventurism

    INOX Leisure Limited (‘INOX’) is engaged in the business of running and operating cinema multiplexes at various locations in India. INOX entered into negotiations with the multiplex owners and property developers trying to expand its businesses to newer locations. PVR Limited (‘PVR’), which is a competitor of INOX, was also negotiating with developers with respect to certain properties. Ultimately, INOX entered into an agreement with one of the developers. Consequentially, INOX filed a suit at the Delhi High Court1 seeking permanent injunction against PVR. INOX alleged that despite its contracts, PVR was actively pursuing the developer for entering into an agreement for the same property. It was alleged by INOX that PVR is attempting to induce a breach of INOX’s arrangement with developers.

    The Single Judge dismissed the suit at the pre-trial stage, holding that there was no cause of action for relief claimed by INOX and that the relief claimed was in violation of PVR’s right of doing business. The Single Judge also held that INOX has indulged in ‘judicial adventurism’ and a cost of INR 5,00,000 was imposed on INOX.

    Judicial adventurism is an extreme form of judicial activism. It denotes a situation where judiciary goes beyond its territory and enters into that of the legislature or the executive, thereby disrupting the balance of powers between the three organs of the State.

    Aggrieved by the Single Judge’s order, INOX filed an appeal2 contending that the expression “judicial adventurism” is generally used in respect of a judicial authority and cannot be attributed to a litigant. It also contended that the Single Judge has erroneously imposed the cost of INR 5,00,000 upon it, even when the concept of tortious inducement of breach of contract is known as a valid cause of action.

    In the appeal, the Division Bench clarified that “though the plea of tortious inducement of binding agreement is not made out in the present suit, yet the concept is well known in law to constitute a cause of action to file a suit for damages/ injunction”.

    Hence, the Division Bench set aside the finding of ‘judicial adventurism’ and the imposition of costs, holding that it is unwarranted in the present case.

    1CS (OS) No.196/2018, INOX Leisure Limited vs PVR Limited -18 May 2020

    2RFA (OS) 26/2020 INOX Leisure Limited vs PVR Limited – 24 June 2020

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    Storing Counterfeits: Trademark Infringement or Not?

    In the first week of April 2011, a resident of Finland named B received a consignment (in Finland) from China containing approximately 150 ball bearings (about 170 kgs.) which were to be used as spare parts in generators, engines, for construction of bridges or tramways, and the like. The ball bearings had the trademark ‘INA’ affixed on them, which is registered in the name of the Schaeffler Group, Germany. The affixing of the trademark ‘INA’ on the ball bearings in the consignment received, was neither known nor authorized by the Schaeffler Group; conclusively, the products were counterfeit.

    In the second week of April 2011, B withdrew the consignment from the customs warehouse and took it to his residence. From his residence, he further delivered it to a third party after a few weeks. This third party was to export the counterfeit goods to Russia. B accepted a carton of cigarettes and brandy as remuneration (some party indeed!).

    Schaeffler Group, filed criminal proceedings claiming trademark infringement against B before the Court of first instance of Helsinki, Finland. The Court however, acquitted B since, it could not be established that B had deliberately committed the offence. The Court however ordered B to not indulge in retaining counterfeit products in the future and also ordered him to pay compensation to Schaeffler for the losses incurred.

    You may be anticipating that the Schaeffler Group would have filed an appeal, right?

    Well, strangely enough, it was B who filed an appeal at the Court of Appeal of Helsinki, challenging the Court’s orders to pay damages to Schaeffler. The Court of Appeal observed that, B’s act was equivalent to an activity of storage and onward transport. Further, the remuneration received by B was not based on the economic exploitation/benefit of the goods in the further course of business and thus held that, the claim of compensation/damages made by Schaeffler was unwarranted.

    Schaeffler then brought an appeal before the Supreme Court of Finland (Finally!). In the European Union, the Directive 2008/95/EC of the European Parliament and of the Council was formulated with the objective to approximate the laws of the Member States relating to Trademarks.

    Article 5 elaborates on the – Rights conferred by a trademark. The relevant portions of Article 5 are reproduced below5 :

    5(1) The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

    (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;

    (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.

    5(3) The following, inter alia, may be prohibited under paragraphs 1 and 2:

    (a) affixing the sign to the goods or to the packaging thereof;

    (b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;

    (c) importing or exporting the goods under the sign;

    (d) using the sign on business papers and in advertising.

    The Supreme Court referred to Article 5(1)(a) read with 5(3)(b) and 5(3)(c) of the Directive and held that, when a person imports and retains goods, which are affixed with a trademark without the consent or knowledge of the true proprietor of the trademark, and later sends such goods to a third party, then such retention of goods too will amount to ‘using the trademark in course of trade’ and thus B was held liable for trademark infringement.


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    The Case of Enola Holmes

    Sir Arthur Conan Doyle’s estate (“Estate”) has sued the American OTT platform Netflix for infringement of Doyle’s copyright over the Sherlock Holmes’ character and stories in the New Mexico Federal Court. Doyle’s estate has argued that Netflix’s upcoming film titled “Enola Holmes” depicts Sherlock’s character having emotions and respecting women which allegedly violates Doyle’s copyright.

    Enola Holmes is an upcoming British mystery film, based on a book series called The Enola Holmes Mysteries by Nancy Springer. The book chronicles the adventures of Enola Holmes (a character created by Springer); a younger sister of Sherlock who is also a skilled detective. The film is scheduled for release in September 2020 on Netflix. The author, writer and director of the film have also been sued along with Netflix.

    The Estate’s major contention is that although Sherlock’s character in a few works is in the public domain but in these public domain works, Sherlock is “aloof and unemotional” and this is because in the initial writings, Doyle created Sherlock as an unemotional character. However, reports suggest, later on Doyle lost his eldest son in the World War I and four months later he lost his brother too. This brought about a change in Doyle’s personality and when he resumed writing Sherlock Holmes, in his copyrighted stories between 1923 and 1927, he is said to have added a human connection and empathy in Sherlock’s character. Sherlock then became capable of friendship and started respecting women.

    It is because of his life experience that Doyle took this artistic decision of changing Sherlock who was known to have a brain without a heart, to someone who is a warmer person with emotions.

    Now, if Springer and Netflix are basing the story on Sherlock being warm and emotional towards a female character who happens to be his sister, then as per the Estate’s contentions, this personality of Sherlock is still protected by copyright and the filmmakers are liable for infringement.


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    Caution with Injunction

    Reputation once lost cannot be built overnight. The only mitigation is to stop its further derail. Violation of trademarks, trade dress or copyright hampers the goodwill and reputation of the proprietor beyond repair. Therefore, it is of utmost importance to rectify it by stopping the circulation of products bearing the infringing marks in the market. Unlike other laws, where monetary compensation or penalties are desired by the litigants, in IPR disputes, injunction is the most sought after remedy. However, the flip side of the coin is that, most times, this may put the defendant out of business and pose as a hindrance to his substantive rights. Therefore, when an injunction is being granted at interim stages, especially where the case is yet to be heard on merits, the courts act with great caution.

    Allied Blenders manufactures alcoholic beverages which are marketed under, the mark "Officer's Choice" since 1988 with its variants, inter alia, "Officer's Choice Blue" and "Officer's Choice Black" with a unique trade dress. Its label for 'Officer's Choice' is registered under the trademark and copyright laws. MS Industries and Spirit Pvt. Ltd. also manufactures alcoholic beverages sold in Telangana and Andhra Pradesh under the brand "Manjeera Classic No.1 Whisky".

    Allied Blenders filed a suit against MS Industries at the Hyderabad City Civil Court contending that MS Industries has dishonestly adopted labels similar to those of Allied Blenders so as to ride upon its reputation and goodwill, thereby violating its statutory as well as common law rights in the labels. Allied Blenders alleged that there was trademark and copyright infringement as well as passing off due to the adoption of deceptively similar labels by MS Industries. It prayed for a decree of interim as well as permanent injunction, restraining MS Industries from using the impugned trademarks and/or labels which were allegedly deceptively similar to the Plaintiff's labels in any manner. The Hyderabad City Civil Court granted an exparte ad-interim injunction May 12, 2020. The Court’s order, verbatim is as follows:

    "Heard counsel for the petitioner.

    Perused records and documents relied by the counsel for the petitioner.

    There is a prima facie and balance of convenience in favour of the petitioner. Under the above circumstances, the temporary injunction is granted as prayed till 27-03-2020 subject to compliance under Order 39 Rule 3 of Civil Procedure Code (“CPC”). Issue notice to the respondent by 27-03-2020."

    MS Industries appealed before the Telangana High Court stating that as per Order 39 Rule 3 of the CPC, while granting an ex parte ad interim injunction, it is mandatory for the Court to record reasons for grant of such ex parte ad interim injunction. MS Industries contended that since the above order does not contain any such reasons, the same should be set aside. Further, as per Rule 3A of the CPC, if an ex parte ad interim injunction is granted, the interim injunction application is to be decided within 30 days. This condition was not met with by the Hyderabad City Civil Court.

    The High Court relied upon: Shiv Kumar Chadha Vs. Municipal Corporation of Delhi3: wherein, the Supreme Court had observed, "Power to grant injunction is an extraordinary power vested in the court to be exercised taking into consideration the facts and circumstances of a particular case. The courts have to be more cautious when the said power is being exercised without notice or hearing the party who is to be affected by the order so passed.”

    The High Court observed that the Order 39 Rule 3 of CPC is not optional and that the requirement for a reasoned order while granting an ex parte injunction, cannot be held to be a mere formality. The Court acknowledged that there could have been reasonable difficulty in disposing the interim injunction application in March, April or May 2020 given the COVID 19 pandemic, however, there was no reason why the order for ex parte interim injunction was granted without substantiating the same. Thus, the High Court set aside the order and asked the City Civil Court to decide the application within 30 days.

    31993 SCR (3) 522, 1993 SCC (3) 161

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    Do We Sense A Nerve Wrecking Trademark Brawl Here?

    Previously, in the article ‘Being ‘Lovely’ is Just Enough’ (Read here) we covered that HUL has decided to drop ‘Fair’ from its popular product ‘Fair & Lovely’

    In a recent turn of events, HUL has also intended to drop ‘Fair’ from its men’s range of products called ‘Fair & Handsome’ and applied for the trademark ‘https://campaign-image.in/zohocampaigns/h_zc_v1_2_12707000006440006.jpg ’ bearing application no. 4544086 on June 25, 2020. However, on the same day i.e. on June 25, 2020, Emami Limited applied for the wordmark ‘Glow & Handsome’ bearing application no. 4544323. Both the marks are applied for on a ‘proposed to be used’ basis. Emami Limited has also applied for variations such as ‘Emami Glow & Handsome’ and the packaging of ‘Glow & Handsome’. Further, Emami has also gone public saying that they are likely to take a legal recourse against HUL, emphasizing that they had adopted the mark before HUL.

    In view of the above statements, HUL filed an urgent plea at the Hon’ble High Court of Bombay, putting forth some vital facts. HUL submitted that they had adopted and applied for the mark ‘Glow & Handsome’ in 2018, however, the Trade Marks Registry had ‘Refused’ the mark and an appeal contesting this decision is pending before the IPAB as on date. This, evidences prior adoption of the mark by HUL. During its recent rebranding run, HUL re-applied for the mark ‘Glow & Handsome’.

    The Court granted an ad-interim relief in favour of HUL and also directed Emami to send across a written notice, seven days prior to instituting any form of legal proceedings with respect to the contested trademark ‘Glow & Handsome’.

    It is interesting to note that, this would not be the first dispute between Emami and HUL. In fact the two have been at loggerheads in the recent past for the a brand disparagement case4 based on an advertisement for the above referred product ‘Fair & Handsome’!

    In such a scenario that the companies are unable to negotiate, how will the Trade Marks Registry deal with 2 near identical marks filed on the same day on a ‘proposed to be used’ basis?

    *Put on your Thinking Caps*


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    Hidden Meanings in Trademarks


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

    We are certain that all potato chip lovers (well, who isn’t?) can reminisce the taste of the popular Pringles!

    Well, unlike the most common assumption being, that ‘Pringles’ was the name of the person who invented the chips, fails to hold true in this case. In fact, ‘Pringles Avenue’ was a random name picked out from the Cincinnati telephone directory. Since the creators of Pringles like the ring to the name, they decided to adopt it as their brand name. That’s how the character of Mr. Pringles was a created. If you observe the initial logo of 1967, the face of Mr. Pringle’s was to represent a potato. The brand name was written on the bow-tie of Mr. Pringle.

    Eventually with time, the logo was revamped and the features of the face were focussed upon. The latest version of the mascot (logo of 2009 in the above image) is a much more animated and approachable version for consumers. Also, if you notice the letter ‘i’ in the latest version of the logo, you will spot a potato chip acting as the ‘dot’ in the letter ‘i’.

    Like we always say, once you see it, you cannot unsee it!

    6Image source: https://1000logos.net/pringles-logo/

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    ISRO Bags Another Patent!

    The Indian Space Research Organization (ISRO) was founded in August, 1969 and has been vigilant in protecting its patents since 1973(the year its first patent was filed)! ISRO has filed over 270 patents till date.

    On February 8, 2016, ISRO filed a patent application for liquid cooling and heating garment (LCHG) that is suitable for space applications. On June 19, 2020 the Indian Patent Office granted this patent bearing no. 338868. The patent is valid for a period of 20 years from the date of application, i.e. till February 8, 2036!


    *Drawing submitted at the Indian Patent Office

    ISRO is the patent owner and the 4 inventors are Srirangam Siripothu, Reshmi Balachandran, Saraswathi Kesava Pillai Manu, and Gurumurthy Chandrasekaran.

    The garment is claimed to have multiple uses such as: in a manned spaceflight, and also for activities on earth such as working in industries, firefighting, and the like. The primary function of the patent, as claimed by ISRO, is that it has high-end heat transfer quality resulting in maintaining body temperature levels suitable for performing efficient physical work. The outer polymeric fabric tricot and the inner polymeric fabric net is separated by multiple tubes which are configured to circulate the heat transfer fluid. The arrangement of the tubes is such that it covers the entire body with no overlaps, ensuring that the temperature of the wearer is regulated constantly. The garment is a one-piece suit covering the body from head to toe and has a front-entry zipper and is to be worn such that it touches the body of the wearer directly.


    IITR, Lucknow developed Disinfection Machine for N95 masks & PPE Kits

    The Indian Institute of Toxicology Research (IITR), Lucknow, in association with a start-up named Major Technology has developed a disinfection machine for N95 masks and PPE kits which allows them to be reused. This equipment is helpful in saving costs of new Personal Protective Equipment (PPE) kits and masks and also protects the environment by reducing bio-medical waste. A significant feature of these kits is that they do not consume much energy or require heavy power connections and can function in households also. The disinfection machine has been tested by the AIIMS, Jodhpur, and the Sanjay Gandhi Postgraduate Institute of Medical Sciences, Lucknow.


    HRD Ministry launches YUKTI 2.0 platform for innovators

    The Ministry of Human Resource Development (MHRD) in India has launched a new portal for innovators, called Yukti 2.0. This is an online depository for innovative ideas aimed at fostering and promoting innovation among students and teachers. The portal, called Yukti 2.0. The platform was initially promoted with the name Massive Indian Novelty Depository (MIND). Anyone can access the portal and work on various innovations. It is not just a database, but also acts like an online market where people can network, buy and sell ideas. It serves as a bridge between innovation and commercialization.


    Google Bans 25 Apps for reportedly stealing Facebook Credentials of users

    Developers of these apps, regularly come up with novel methods for stealing our information. Recently, in May 2020, Evina, a French security firm is reported to have highlighted 25 apps listed on Google Play Store that were stealing Facebook credentials of users. Collectively, these apps had more than 2 million downloads. Consequentially, Google has now removed all of them from the Play Store. The list of the 25 apps are attached below for ready reference.

    Super Wallpapers Flashlight • Padenatef • Wallpaper Level • Contour Level wallpaper iPlayer & iWallpaper • Video Maker • Color Wallpapers • Pedometer • Powerful Flashlight • Super Bright Flashlight • Super Flashlight • Solitare Game • Accurate scanning of QR code • Classic card game •Junk file cleaning • Synthetic Z • File Manager • Composite Z • Screenshot Capture • Daily Horoscope Wallpapers • Wuxia Reader • Plus Weather• Anime Live Wallpaper • Health Step Counter The story does not end here as these 25 apps may have been removed, but many others are still functioning and are continuously stealing user information. A deeper investigation is required to stop information exchanging hands easily.

    As one can see, most of these apps offered free functionalities, like wallpapers, flashlights, video editing tools, daily horoscope, card, junk file cleaning and other similar features to attract heavy downloads. Their functionalities are different but according to Evina’s report, they use exactly the same method for obtaining data. When a user launches any of these malicious apps on her/his smartphone, the app detects which other apps were recently opened by the user and which apps are there in the phone’s foreground. For instance, if the user has used Facebook on his phone, or if Facebook is already opened in the foreground, the malware will mimic the Facebook site and overlay a web browser window on top of the official Facebook app. Since the browser is displayed in the foreground, it makes the user think the official app launched it and when the user enters his Facebook login credentials on the malware’s phishing page, the credentials are sent to a remote server. The malware’s mimic features a black bar instead of a blue bar of the original Facebook app. The attacker can then use the credentials to access all data stored on the user’s Facebook account and can also access other websites where user has logged in via her/ his Facebook account. Organisations like Google regularly checks such malware and removes it.


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