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Category : IPR Judgements

International Society for Krishna Consciousness (ISKCON) v. Iskcon Apparel Pvt. Ltd. & Anr.

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  • March 1, 2021

FACTS:

ISKCON, the plaintiff known throughout the world for his devotion to a Hindu deity, Lord Krishna, sued Iskcon Apparel, a clothing corporation for violating their trademark “ISKCON” when they sold garments. The plaintiff requested the court to order that the defendant be stopped from breaching its trademark. The applicant requested a permanent decree of declaration recognizing ‘ISKCON’ as a ‘world-famous trademark,’ along with a permanent injunction.

It was alleged that though the defendant replaced its name with Alcis Sports Pvt. Ltd but they still kept on using the name “Iskcon” in the course of trade. In February 2020, an infringement case was lodged and the court issued a temporary relief on 6 March 2020 in order to take account of the case.

ISKCON’s creator was Late Acharya who initiated the Krishna Consciousness Movement in New York in 1966 and called the Krishna Consciousness International Society and is abbreviated by the word ISKCON. The word “ISKCON” was then invented by the plaintiff and never existed before.

ISSUES RAISED:

1.Whether the trade name “ISKCON” complies with the provisions of the Trademark Act, 1999 and qualifies for being a “well-known trademark”?

2.Whether an injunction should be passed against the defendant company restraining them from using the name Iskcon in the course of trade?

LAW APPLICABLE:

Section 11 (6) of Trademarks Act,1999 defines a ‘ well known trademark’. It states that the Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including—

(i) the knowledge or recognition of that trade mark in the relevant section of the public, including knowledge in India obtained as a result of promotion of the trade mark;

(ii) the duration, extent and geographical area of any use of that trade mark;

(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies;

(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;

(v) the record of successful enforcement of the rights in that trade mark; in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.

Section 11 (7) of The Trademarks Act 1999 states that,

The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account—

(i) the number of actual or potential consumers of the goods or services;

(ii) the number of persons involved in the channels of distribution of the goods or services;

(iii) the business circles dealing with the goods or services, to which that trademark applies.

JUDGEMENT:

The single bench of the judge declared the ISKCON acronym “to be a well known trademark” in accordance with the criteria set out in Section 11(6) and 11(7) of the Trade Marks Act,1999 as well as other relevant provisions of the Trade Marks Act,1999. The honourable Judge pointed out that the symbol has been invented and is associated solely with the plaintiff, thus showing that it has the highest standard of protection.

The Court observed the following:

  • The evidence presented by the plaintiff demonstrates how popular the organization is and to what degree.
  • There never was a word ISKCON, and the first to fit was the plaintiff.
  • The ISKCON brand has risen worldwide and is also gaining enormous popularity in India.
  • The trademark was commonly, consistently and publicly used by the plaintiff since 1966.
  • In the past the plaintiff has launched numerous infringement proceedings for infringement of his trademark.

Therefore, the Court granted Iskcon Apparel a permanent injunction to prohibit the use of the ISKCON trade mark.

STAR INDIA PVT. LTD V. MOVIESTRUNK. COM & ORS

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  • February 25, 2021

FACTS:

The plaintiff is engaged in film production and distribution in India (Star India Pvt Ltd.), and for that reason, he holds exclusive licenses for several films. One such film, the distribution of that is into consideration is ‘Mission Mangal’. 80 defendants were impleaded. Defendant Nos. 1-67 are websites that are believed to be infringing plaintiff’s copyright by distributing the film without authorization, defendant No. 68 & 69 are the registrar of 7 defendant websites, defendant No. 70-78 are Internet Service providers (ISPs), and the defendant No. 79 & 80 are Government of the Indians departments and are the distributors that do not have authorization.

The problem arose when the plaintiff found that their film ‘Mission Mangal’ was available for distribution without permission on several Internet platforms. A lot of defendant websites have been displaying and uploading copies of the film to the public. The defendant moved the court subsequently alleging that their exclusive rights were specifically violated under Section 14 of the Copyright Act,1957.

The plaintiff’s most important point, however, is that the websites of the defendant are ‘rogue websites’ mostly involved in distributing infringing copies on the Internet.

ISSUES RAISED:- 

  1. Whether the rights which are claimed by the plaintiff are or are not covered under the Copyright Act, 1957, or putting it differently, can they arise or exist independently of the Copyright Act, 1957?
  2. Whether the Registrant’s information is obscured and the Registrant or the user has no personal or traceable data.?
  3. Whether a website has no details or inactions following receipt of copyright violation notices?
  4. If the website makes folders, indexes, or categories accessible or includes a way of infringing or facilitating copyright?
  5. Whether copyright disrespect is commonly demonstrated by the owner or online site operator?

LAW APPLICABLE:

Section 14 of The Copyrights Act,1957 states the meaning of “Copyright” in the eyes of law.

Section 51 of The Copyrights Act,1957 :

When copyright is infringed.—Copyright in a work shall be deemed to be infringed

(a.)when any person, without a license granted by the owner of the copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a license so granted or of any condition imposed by a competent authority under this Act

(b.)when any person—

(i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or

(ii) distributes either for trade or to such an extent as to affect prejudicially the owner of the copyright, or

(iii) by way of trade exhibits in public, or

(iv) imports 2[***] into India, 2[***] into India,” any infringing copies of the work: 3[Provided that nothing in sub-clause (iv) shall apply to the import of one copy of any work, for the private and domestic use of the importer.]

Explanation.—For this section, the reproduction of a literary, dramatic, musical, or artistic work in the form of a cinematograph film shall be deemed to be an “infringing copy”.

JUDGEMENT:

The Court ruled in favor of the plaintiff, which stated that they had successfully proven that the defendant’s websites were primarily rogue websites that dealt with copies of copyright work and distributed them to the public. It was concluded that the questionable existence of the status of the website registrant along with the nature of the activities also further confirms the finding that the websites of the defendant fell within the reach of the domain of the rogue websites.

In failure to obey legal notices, the court also firmly disregarded the casual existence of the defendant’s websites, and displayed a flagrant disregard and ignorance of the plaintiff’s intellectual property rights. The plaintiff also has the right to the real costs of the action, including the charge for lawyers and the Court fee. The plaintiff will file an affidavit of the actual costs within two weeks.

THE COCA-COLA COMPANY V. BISLERI INTERNATIONAL PVT LTD AND ORS.

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  • February 20, 2021

FACTS:

The plaintiff (Coca-Cola company) is the largest soft drink brand in 200 countries and, in this case, the defendant (Bisleri International Pvt Ltd) is a popular Indian brand that is well known for its bottled water. On 18th September, 1993, the defendant sold to the plaintiff, Intellectual Property Rights (IPR) of THUMBS UP, GOLD SPOT, CITRA, and MAAZA. The IPR included trademarks and rights to the formulation, and goodwill rights, etc. This case deals only with the product MAAZA.

In November 1993, the parties signed a proclamation agreement to resolve the following MAAZA agreement. The MAAZA Licensing Agreement between the petitioner and Golden Agro Products PVT was concluded in October 1994. In this case, the petitioner embodied that all the trademarks, formulation rights, etc.. were irreversibly conveyed to him.

The defendant learned in March 2008 that MAAZA’s trademark had been registered by the plaintiff in Turkey. The interlocutor sent the plaintiff a notification in September 2008 denying the Licenses Agreements and thus preventing the petitioner from making MAAZA by himself/herself or through his/her partners using their trademark directly or indirectly. The notice sent by the defendant to the plaintiff suggested the intention of the defendant to use MAAZA Trademark in India.

 

ISSUES RAISED:

1. Whether the Delhi High Court has the jurisdiction to take up the matter in this particular case?

2. Whether the export of the products with the trademark “MAAZA” can be considered as an infringement in the exporting country?

3. Has some trademark infringement or passing off taken place?

4. Whether the petitioner has the right to a permanent order?

 

LAW APPLICABLE:

Section 26 of The Trade Mark Act 1999 states that where a trademark has been removed from the register for failure to pay the fee for renewal, it shall nevertheless, for the purpose of any application for the registration of another trademark during one year, next after the date of the removal, be deemed to be a trademark already on the register, unless the tribunal is satisfied either

(a) that there has been no bona fide trade use of the trademark which has been removed during the two years immediately preceding its removal; or

(b) that no deception or confusion would be likely to arise from the use of the trademark which is the subject of the application for registration because of any previous use of the trademark which has been removed.

 

JUDGEMENT:

The Court decided, in compliance with Section 41(h) and(l) of the Specific Relief Act, 1963, the deed of assignment to be a legally binding agreement between the parties to the contract. Contractual terms and conditions can be repudiated only if any party continues against the contractual terms and conditions. It means, therefore, that the aggrieved party can only sue for damages in case of breach of a contract. In this case, the defendant had signed an agreement to convey to the plaintiff all IPRs and their associated rights of Trademark  MAAZA.  These rights are specified and absolute, and the defendant had no right to have the contract terminated or dismissed.

The day on which the contract was signed between the defendant and the plaintiff was the day on which all trademark rights were transferred from the defendant to the plaintiff.

The plaintiff is the owner of the mark after the trademark transfer, and so he can determine what to do with it. They do not have to notify the defender or consider their authorization to use the MAAZA trademark.

The plaintiff has the right to register the trademark held by him for use in or outside India when an agreement deed is signed.

The court stated that when goods are exported from the country, it will be considered as a sale within the country from where the goods are exported and the same amount of trademark infringement will be considered.

Delhi High Court is competent to entertain the question because the defendant was manufacturing and exporting the commodity with the MAZAA trademark from India. The provisional injunction against the defendant has been issued not to use the mark either in India or abroad.

Diamond v. Chakrabarty Yahoo! INC

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  • February 8, 2021

Facts

Ananda Chakrabarty, a microbiologist filed claims for a genetically modified human-made bacterium that could break up multiple crude oil components. It is supposed to have considerable value in the treatment of oil discharges because of its properties. The patent claims of Chakrabarty were of three kinds:

  1. Process claims on bacterial processing methods
  2. Composition of bacteria, their carriers, and the slurry bacteria

3.Claims about the bacteria themselves.

The Patent Examiner permitted claims in the first two categories, but denied claims in the third category on two grounds: firstly that the micro-organisms are “products of nature”; secondly that they are not patentable subject-matter as they are living objects, according to § 101 of Title 35 USA.

The Board of Appeals of the Patent Office upheld and ruled that the subject of living objects under Section 101 cannot be patented. This opinion has been overturned by the Court of Customs and Patent Appeals, arguing that the fact that micro-organisms are alive is not important in the sense of patent law. Diamond, Commissioner of Patents, sought certiorari against the Court of appeals in the United States Supreme Court.

Issue

  1. The important issue before the Court was whether the patentable subject matter is specifically defined as the micro-organism of the respondent?
  2. Whether the micro-organism of the respondents constitutes a development or composition of matter within the context of the law (Under title 35 U.S.C., Section 101)?

Law Applicable

Title 35 USC Section 101 which provides “Whoever invents or discovers any new and useful process, the machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent, therefore, subject to the conditions and requirements of this title.”

Judgement

According to the view of the Supreme Court the expressions “manufacture” and “composition of matter” are interpreted to address the wide scope of patent laws, particularly in combination with the extensive “any” in Section 101. “Manufacturing,” by giving these materials new types, characteristics, properties, or combinations either by handwork or mechanical means, shall mean the production of products for use in the manufacture of raw or prepared materials (American Fruit Growers. Inc., v. Brodgex Co., 283 U.S. 1,11 (1931). In Shell Production Co. v. Watson, 149 F Supp. 279, 280 (DC 1957) it was held that ‘Composition of Matter’: is to include ‘all compositions of the two or more substances and … all combinable articles, be it the products of chemical union, be they mechanical mixture or be gas, fluid, powder or solid.’

The Court considers that the micro-organism of the respondent is a patentable subject in the light of these broad meanings since it is not an unknown natural phenomenon but an unnatural fabrication or composition of the material and therefore a result of human creativity. It is a patentable subject. In this sense, the court has differentiated in yet another case in which the subject matter at hand was a natural occurrence (Funk Brothers Seed Co. c. Kalo Inoculant Co).

Also, the Court dismissed the appellant’s contention in that it held that the patent protection affording certain asexually reproduced plants had been granted by The Plant Patent Act, 1930; and the Plant Variety Protection Act of 1970, which allowed protection for certain asexual plants but excluded the protection of bacteria. This claim was challenged in the explanation that the distinction made in the Plant Patent Act was not between living things and inanimates but between natural products, whether alive or not, and inventions made by humans. In addition to this, real reproduction was possible under the Plant Variety Protection Act, and thus plant patent protection was sufficient for this reason. Nothing in §101 is justified in reading the exclusion of bacteria.

It was not expected that genetic technologies would be unforeseen by the Congress, thus, until it could be given, and that Congress should specifically authorize security. This claim has been dismissed with the defined interpretive processes, which are the standards for the legislative history and legal purposes of the current laws. On 16 June 1980, the Supreme Court ruled that a live, human-made micro-organism is patentable under Section 101 and that it constitutes micro-organisms within its scope of a “manufacture” or “composition of matter” (pp. 447 United States 308-318). On 31 March 1981, the patent was granted.