TRADEMARK LAW INDIA

Difference between Passing Off Cases and Infringement Cases

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CASES

In Corn Products case it was observed that the principle of similarity could not to be very rigidly applied and that if it could be prima facie shown that there was a dishonest intention on the part of the defendant in passing off goods, an injunction should ordinarily follow and the mere delay in bringing the matter to court was not a ground to defeat the case of the plaintiff. It bears reiteration that the word ``Glucon-D'` and its packaging had been used by Glaxo since 1940 whereas the word ``Glucose-D'` had been used for the first time in the year 1989.

Dishonest intention can be proved by they use “extra dark” on their packaging and “dark plus” on the pencil”.

In Cadila Health Care case, it has also been held that in the case of a passing-off action the similarities rather than the dissimilarities have to be taken note of by the court.

Trade Dress Cases

A.V. Rajadurai Nadar v. Ayya Nadar and another wherein it was held that the expression 'deceptively similar' as defined in S.2(d) means that the similarity or resemblance must be such as it would be likely to deceive or cause confusion. Any conclusion reasonable and proper can be arrived at by a meticulous examination of each detail and then making a comparison. At the same time what mainly strikes the eye must also be conducive. But, when one looks at it, especially from the standpoint of a person who is most likely to use a particular brand of matches, if it appears that the distinction is prominent and it cannot lead to any similarity or a deceptive similarity or confusion then there could be no objection to the two different trade marks.

J. and P. Coats Ltd. v. Chadha & Company(India) PTC Supp(1) 295 Del(DB), where colour of rival boxes was similar, the following view was taken:-

"Marks, it must never be forgotten, are remembered rather by general impression or by some significant details than by any photographic recollection of the whole. Keeping in view the main idea, the essential feature or the leading characteristic represented by each one of the two rival marks, we feel that those who use the thread may well be expected to distinguish between the two figures of 'dog' and "anchor" and if they happen to be literate, they can easily distinguish one from the other. It is no doubt true that the colour of the boxes is very much similar, but then that is not conclusive nor is that the domination or the leading characteristic."

Vicco Laboratories Bombay v. Hindustan Rimmer, Delhi case also the plaintiffs were selling their goods with descriptive get up and colour scheme for long in 1995 while the defendants started selling their products in 1997 in the cartons which appeared to be copies of the entire get up and the colour scheme adopted by the plaintiff. It was held to be a case of passing off and fit for injuncting the defendants. The foreign decisions relied upon by Mr. Sibal on the concept of trade dress encompassing colour combination, get up and lay out inspite of there being no similarity in the trade name are as under:-

(i) White Hudson & Company Limited v. Asian Organization Limited 1965 RPC 144. In this case the plaintiffs sold their cough sweets in Singapore since 1953. The sweets were sold loose in orange colored cellophane wrappers on which was printed the word "Hacks" in Roman characters only. In March, 1958 the defendants entered the same market with cough sweets in a white cellophane wrapper. But in May of that year they went over to using an orange wrapper similar to the plaintiffs' but bearing the word "Pecto". The plaintiffs brought an action to restrain passing off. The trial judge found that no other wrapper cough sweets had been sold loose, that the sweets were called by the local population "red paper cough sweets", that the plaintiffs' get-up had become distinctive of their goods, that the get-up of the defendants' sweets resembled the plaintiffs' to such an extent as to lead to confusion, that the difference in the names printed on the wrappers was not sufficient to distinguish the goods in the eyes of a purchasing public largely unable to read English, and that passing-off had therefore been established.
(2) Colgate Palmolive Company And ... vs Anchor Health And Beauty Care Pvt. ... on 29 October, 2003
Words "Colgate" and "Anchor" are distinct and have not an iota of similarities either in look or in sound. That is why the ingredients of trade dress, get up, colour combination, lay out of the container or packing acquire significance and relevance for determining the offence of passing off. This criteria flows from the concept of action of passing off developed over the years that it is the similarities and not the dissimilarities which go to determine whether the action for passing off is required or not. That is why in trademark cases even the deceptive similarities are considered sufficient for infringement of trademark. If similarities of trade dress are substantial from the look of the two goods, it comes within the mischief of passing off.
Upshot of aforesaid discussion leads to the most ineluctable conclusion that the plaintiffs have successfully established a prima facie case for injunction the defendant from using the colour combination of red and white in that order as trade dress on the container and packaging. As a consequence the application is allowed and defendants are, by way of ad interim injunction, restrained from using the colour combination of red and white in that order on the container/packaging of its goods viz. the "Tooth Powder".

REVIEW POWER of Intellectual Property Appellate Board

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Intellectual Property Appellate Board (Procedure) Rules, 2003

Rule 23: Review petitions.- (1) A petition in triplicate for review of an order of the Appellate Board may be made to the Registry in the prescribed Form 6 under these rules within two months from the date on which the order is communicated accompanied by a statement setting forth the grounds on which the review is sought. Where the order in question concerns more than one respondent, sufficient extra copies of such petition and statement shall be filed.

(2) The Registry shall forward the petition and statement to the respondents to the review petition.

(3) The respondents may file counter statement in Form 1 under these rules within two months from the date of receipt of the review petition and shall forward a copy of the counter statement to the petitioner directly under intimation to the Registry.

(4) The review petition shall be posted for hearing before a Bench by the Chairman.

Judgments

In Grindlays Bank v. Central Government
the Court was required to consider, inter alia whether the Labour Tribunal had any jurisdiction to set aside the ex-parte award particularly when it was based on evidence. The objection as to the jurisdiction of the Tribunal, raised before the Court was in the following terms:
It is contended that neither the Act nor the Rules framed there under confer any powers upon the Tribunal to set aside an ex parte award. It is urged that the award although ex parte, was an adjudication on merits as it was based on evidence led by the appellant, and, therefore, the application made by respondent No. 3 was in reality an application for review and not a mere application for setting aside an ex parte award.

The Supreme Court held as follows:

It is true that there is no express provision in the Act or the rules framed thereunder giving the Tribunal jurisdiction to do so. But it is a well known rule of statutory construction that a Tribunal or body should be considered to be endowed with such ancilliary or incidental powers as are necessary to discharge its functions effectively for the purpose of doing justice between the parties. In a case of this nature, we are of the view that the Tribunal should be considered as invested with such incidental or ancillary powers unless there is any indication in the statute to the contrary. We do not find any such statutory prohibition.

The expression, 'review', it was held by the Supreme Court, in the above case is used in two distinct senses, namely "(1) a procedural review which is either inherent or implied in a Court or Tribunal to set aside a palpably erroneous order passed under a misapprehension by it, and (2) a review on merits when the error sought to be corrected is one of law and is apparent on the face of the record".

Patel Narshi Thakershi v. Pradyuman singh ji

It was further held, that it is in the latter sense that the Supreme Court in Patel Narshi Thakershi v. Pradyumansinghji held that no review lies on merits unless a statute specifically provides for it. It was also held that when a review is sought due to a procedural defect, the inadvertent error committed by the Tribunal must be corrected ex debito justitiae to prevent the abuse of its process, and such powers inheres in every Court or Tribunal.

Godrej Sara Lee Ltd., A Company ... vs Reckitt Benckiser (India) Ltd. on 15 February, 2008

Shri A.K. Gupta learned senior counsel, however, drew our attention to Rule 23 of the Intellectual Property Appellate Board (Procedure) Rules, 2003 which lays down that a petition in triplicate may be made to the Registry in the prescribed Form-6 under these Rules within two months from the date on which the order is communicated, accompanied by a statement setting forth the grounds on which the review is sought. That Rule itself does not confer power on this Board to review its own orders or decisions. The rule merely prescribes the form in which an application for review may be made. The rule may be contrasted with Section 127(c) of the Act. That provision deals with powers of registrar and based upon that the Registrar may on an application made in the prescribed manner 'review its own decision'. There is no such corresponding provision either under the Act or the Rules framed thereunder conferring power on the IPAB to review its orders or decisions.

We are, therefore, of the view that this Board has no jurisdiction or power to review its own orders and decisions except due to procedural defect or inadvertent error which may require correction ex debito justitiae. The instant petition filed for review on merits, in our opinion is, therefore, not maintainable. It is accordingly dismissed without going into the merits of the contentions raised.

Union of Bank of India v. Chanderkant Gordhandas Shah (1994) 6 SCC 271,

it is submitted that the High Court exercising jurisdiction under Article 226 of the Constitution will not re-examine factual disputes or the evidence and sit in appeal over the concurrent findings of the AR or the IPAB. The scope of the powers of the judicial review were limited to correcting errors of law or procedural errors leading to manifest injustice or violation of principles of natural justice.

On a conspectus of case law, it becomes quite evident that a Court or Tribunal cannot review its own order or Judgment unless there is a statutory provision providing for the same. However, a Court or Tribunal has inherent powers to recall orders obtained by practising fraud on it. There is no question of the Court becoming functus officio, because it retains the jurisdiction to recall such orders. It inheres in a Court or Tribunal to review by recalling the orders on grounds of fraud, misrepresentation or other similar grounds. We may, however, make it clear that the decision of the Division Bench in K.B.G. Tilak v. Spl. Tahsildar (1978) 2 APLJ (HC) 83) is confined to a case of reopening in a case where either it was dismissed for default or a decision was rendered exparte. This decision, as it is peculiarly confined to the facts and circumstances thereof, cannot, therefore, be of any assistance in so far as the case on hand is concerned. We, therefore, reiterate that a Court or Tribunal can review its own order or judgement only where the party, by way of mis-representation, has played fraud upon the Court and not in other cases.”

IN P.P. Buildwell Pvt. Ltd. Vs. P.P.Jewellers Private Ltd.,

Following the decisions of the Supreme Court in Grindlays Bank’s case and the Division Bench of the Andhra Pradesh case we are of the view that if there is nothing provided in the statute the court or the Tribunal will have no powers to deal with the matter. In the interest of justice, it could be done if there is an error due to a procedural defect that definitely could be rectified. In view of the above, we do not find any procedural defect in the instant case to review the same.

Champagne Moet & Chandon vs Union Of India & Ors on 19 September, 2011

It is worth noting, while exercising the power of judicial review under Article 226 of the Constitution of India it cannot be converted into an appeal. The judicial review is directed not against the decision but is confined to the examination of the decision making process. If the reasons ascribed by the authorities or the IPAB are manifestly unreasonable that no reasonable authority entrusted with the power in question would reasonably made such a decision, the concept of judicial review gets attracted.

Bunge Agribusiness India (P) Ltd. vs Registrar Of Trade Marks And Anr. on 3 December, 2004
The main contention of the learned Counsel for the appellant is that the Deputy Registrar by his earlier order allowed the opposition filed by the appellant by upholding all the objections raised by the appellant under Sections 9, 11(a), 12(1) and 18(1) of the said Act. The Review Petition has been filed only on the ground that the original documents were not filed at the time of hearing of the application and second respondent having got the possession of the original documents wants to produce the same by way of additional evidence and on the basis of those documents, the matter can be reviewed. The impugned order of the Deputy Registrar does not disclose the particulars of any original document of the second respondent. The earlier order has been reviewed only on the basis that the mark is a common dictionary word and as such, the appellant cannot claim monopolistic rights. Further, the Deputy Registrar has found that the goods of the second respondent have nothing to do with the goods of the appellant as both are different and consequently the Deputy Registrar had observed that there is no need for any detailed discussion and allowed the Review Petition. The impugned order is contrary to law as the grounds made out in the Review Petition were not the issues discussed by Deputy Registrar in his impugned order. Further, it was contented that the review can be done only to correct the mistake and not otherwise.
6. We find some force in the contention of the learned Counsel for the appellant. As stated already, by order dated 26.2.1993, the Deputy Registrar upheld the opposition of the appellant finding that the second respondent's trademark offends Sections 12(1), 9, 11(a) as well as 18(1) of the said Act. In the Review Petition, the Deputy Registrar was persuaded to review the earlier order only on the ground that the second respondent could not produce the material evidence, which is very clear from the following passage of the order of the Deputy Registrar in his order dated 19.10.1993:
The discovery of evidence by the applicants is an important law point. This evident was not present in the Trade Marks Registry when order dated 26.2.1993 was passed by the Ld. Deputy Registrar of Trade Marks. Now, by exercise of due diligence the evidence in original has been made available to the Trade Marks Registry. Had this evidence been filed prior to order dated 26.2.1993 the fate of this case could have been altered. The grounds of the review petition are reasonable, convincing and relevant. Hence, it is a fit case to allow the said Review Petition.

COPYRIGHT: Microfibres Inc. vs. Girdhar & Co., & Anr.

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The Plaintiff was stated to be engaged worldwide in the business of manufacturing, marketing, selling and exporting of upholstery fabrics directly or through its subsidiaries and affiliates. It claimed that on all its upholstery fabrics n are printed unique and original artistic works conceptualized and drawn by and on behalf of the Plaintiff. The Plaintiff claimed that its artistic works enjoyed copyright protection in India as a consequence of the Berne and the Universal Copyright Conventions (India and the U.S. being members of the Conventions). The upholstery fabrics manufactured and sold by the Defendants were stated to bear artistic works which were identical or colorable imitations of the Plaintiff’s artistic works and thus constituted infringement of its copyright therein.

In defence, the Defendants submitted:

(i) the Plaintiff’s artistic works were actually designs relating to textile products which were aesthetic, ornamental and visual in nature and thus came within the scope of the Designs Act, 2000;

(ii) the Plaintiff had failed to register these designs under the Designs Act, 2000 or under its predecessor Act and, therefore, could not claim protection under the Copyright Act;

(iii) the Plaintiff was itself conscious of the fact that registration was required under the Designs Act since it had registered some of its upholstery designs in the U.K. under the local Designs Act;

(iv) the certificates relied upon and issued by the United States Copyright Office referred to the subject work as fabric designs and not artistic works;

(v) the Indian Patent and Design Office confirmed in writing that the subject works were register able and being registered under the

Designs Act, 2000.

In rejoinder, the Plaintiff pointed out that the definition of “design” under the new Designs Act, 2000 specifically excluded artistic works and thus did not apply to its artistic works within the meaning of the Copyright Act, 1957. In other words, the Plaintiff argued that its upholstery fabric designs could not have been registered under the Designs Act, 2000 by virtue of the exclusion of artistic works and thus entitled to copyright protection under the Copyright Act.

Consequently, it was stated that the defence under Section 15 of the Copyright

Act did not apply.

On its part, the Defendants submitted:

(i) that the interpretation advanced by the Plaintiff would have the effect of rendering the law of designs redundant for the simple reason that each design registered thereunder would be able to trace its origin to a diagram, chart, drawing and thus cease to be governed by the Designs Act;

(ii) this could not have been the legislative intent because the law of designs is based on the same principle as that applicable to other monopolies and to fuel industrial innovativeness by granting limited time limit to the monopolies and allow others to make use of them after they have passed into the public domain;

(iii) the plea of the Plaintiff, if accepted, would be anti competitive and would throttle and stagnate the industry;

(iv) that the legislative intent behind the repealed Designs Act, 1911 and that under the Designs Act, 2000 remained the same and the exclusion of “artistic works” in the new definition was only clarificatory and intended to exclude artistic works pure and simple such as paintings, sculptures and works of art;

(v) the statement of objects and reasons of the Designs Bill, 1999 provided that the intent was to ensure that the law does not unnecessarily extend protection beyond what is necessary to create the required incentives for design activities while removing impediments to the very use of available designs;

(vi) the proceedings from the Parliamentary debate also showed that the Act was being amended to provide help and protecting the rights of designers;

(vii) the hand book issued by the Design Office for information to the public also specifically stated;

“What can be registered as a Design?

- To qualify for registration as a design, an article should relate to the ornamental or new shape, surface pattern, lines or colour with aesthetic look (designs or industrial plans, layouts or installation are not registerable).

- It should be applicable to any product reproducible by industrial means (Paintings / Sculptures and ‘works of art’ excluded).

Finding merit in the defence raised by the Defendants, the High Court of Delhi dismissed the Plaintiff’s suit for injunction, holding: “in order for the work of the Plaintiff to qualify as an “artistic works”, it must fall within the definition of sub section (c ) of Section 2 of the Copyright Act. A reading of the said provisions would show that attempt of the Plaintiff can only be to bring it within the concept of “painting.” The comparison with the paintings of M.F. Hussain would be otiose as the work in question, in the present case, is not a piece of art in the form of a painting. There is no doubt that labour has been put and there is some innovativeness applied to put a particular configuration in place. Such configuration is of the motifs and designs which by themselves would not be original. The originality is being claimed on the basis of the arrangements made. What cannot be lost sight of is the very object with which such arrangements or works had been made. The object is to put them to industrial use. An industrial process has to be done to apply the work or configuration to the textile. It is not something which has to be framed and put on the wall or would have any utility by itself. The two important aspects are the object with which it is made (which is industrial) and its inability to stand by itself as a piece of art. In fact, it has no independent existence of itself. In India, we have special legislation governing the protection of different nature of rights. Insofar as the industrial designs are concerned, the protection is provided under the Designs Act, 2000…..An important and relevant aspect is that both under the old Act and the new Act, fabric designs on textile goods have been classified as proper subject matter of design protection by inclusion as a specific class in the Rules framed

under the Acts…

Furthermore, the legislative intent is also to be kept in mind which is to provide protection for a certain period of time for commercial exploitation. Thus, nature of protection is quite different for an artistic work under the Copyright Act which is for the life time of the author / creator + 60 years. This is not so in the case of commercial exploitation as under the Designs Act and the Patent Act, the period is much lesser. In the present case, the configuration was made only with the object of putting it to industrial /commercial use.”

In view of the above findings, the High Court of Delhi dismissed the suit.

No Res Judicata on Adverse Finding in Previous Cases

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In Midnapur Zamindari Co. Ltd. vs. Naresh Narayan Roy, it was observed as under:- "Their Lordships do not consider that this will be found an actual plea of res judicata, for the defendants, having succeeded on the other plea, had no occasion to go further as to the finding against them: but it is the finding of a court which was dealing with facts nearer to their ken than the facts are to the Board now, and it certainly creates a paramount duty on the appellants to displace the finding, a duty which they have now been able to perform."

In Devaki Amma and others v. K.P. Sreedharan, referred to the earlier decision of the same High Court in Cherian v. Kochuvareed, which observed as follows:

"If a High Court remands a case to the lower court, the matters finally disposed of by the order of remand cannot, any of them, be re-opened when the case comes back from the lower court but, if at the time of remand, no final decision is given on a point, though some observations only are made in respect of it, it is open to another Bench, a court of coordinate jurisdiction, when finally determining the case, to come to its own conclusions on it, and that even in a case decided by the first court of appeal other than a case, decided by the High Court, if a Judge on appeal decides certain points and remands the case, his decision is binding on his successor, before whom the case comes up again from the judgment after remand because such a court is a court of coordinate jurisdiction, and, therefore, he cannot go behind the earlier final decision of his predecessor before remand."

In paragraph 11, it is stated as follows:

"The test, therefore, in such a case, to ascertain if a particular finding given by the Judge on appeal is a final decision, or not is to find out, if, by the order of remand, the Judge on appeal has remanded the suit for determination of all the points at issue, or, it has determined some points in controversy, and remanded the suit for determination of the remaining points, which may include the question of maintainability of the plaintiffs' suit itself, in which case the decree of the first court has to be set aside, and, the suit remitted to the court below for a fresh decision of the case according to law. If therefore a final decision is rendered on any point in the order of remand which could have been appealed against, that decision is binding on the parties and is not open to challenge before the same court or even before a superior court in a subsequent appeal. If however no final decision is given but only some observations made on any point, Section 105(2) does not bar consideration of that point in the subsequent stages of the proceeding. The test therefore is whether there is a final decision on any particular point".

From the above survey, the following broad legal principles emerge: (a) An appeal is a creature of statute. Unless statutory conditions are fulfilled, a court of justice has no jurisdiction to entertain an appeal. (b) If the statute prohibits, the court has no jurisdiction to entertain an appeal. (c) A successful party has no right of appeal against a finding against him. Such a decision will not operate as res judicata in a subsequent suit. (d) A question decided and a finding recorded against a losing party will operate as res judicata against him if not challenged by him. (e) A remand order conclusively deciding the rights of parties is a decree within the meaning of Clause (2) of Section 2 of the Code of Civil Procedure and hence appealable. If not appealed against it will operate as res judicata. If the appellate court purports to act under Order 41, Rule 23, CPC an order of remand is appealable. (f) The grounds available to an appellant in such appeals against findings are those which would be available to him in a second appeal. (g) In appeals against orders of remand, the findings of fact other than those relating to the order of remand, cannot be pressed into service. (h) If findings on orders of remand are not appealed against, they will become final and the party aggrieved will be precluded from disputing their correctness. R. Maria Siluvai vs B. Sreekumari Amma And Three ... on 16 December, 1997

Ram Niwas And Ors. vs Shiksha Prasar Samiti Ratangarh ... on 7 November, 2000

Para 13. Having considered the contentions raised by the learned counsel for the appellants, I am of the opinion that in the first instance the finding recorded by the trial court that principle of res judicata cannot be applied to this case does not appear to be correct. It is true that ordinarily a finding recorded against a successful party who has no opportunity to challenge that finding in the appeal does not bind him and such a finding does not operate as res judicata for him in the subsequent litigation but this rule is not without exception and cannot be applied with a straight jacket mind. The principle is well established through a large number of decisions that generally an adverse finding against a defendant in a decree of dismissal of suit would not operate res judicata but it is equally well settled that where such an adverse finding form fundamental part of the decree itself, it operates as res judicata in spite of the fact that the decree is one of dismissal.

Muthiya Pillai vs Ramalingam on 17 December, 2009

Firstly, it is found that there was no finding that the suit properties were the joint family properties in A.S.No.37 of 1996. Secondly, it is found that the said appeal, in fact, ended in favour of the plaintiff herein. Even assuming for the sake of argument that there was some adverse finding as against the plaintiff, the plaintiff, who went on appeal, cannot prefer any appeal as against the mere finding in the said judgment. In view of the above facts and circumstances, I find that the principle of res judicata will not operate in this case.

Venkatachala Padoyachi and Ors. v. Velayudha Padayachi A.I.R. 1935 Mad. 701, where Venkatasubba Rao, J., sitting alone held as follows: An adverse finding against a successful party in a suit on one issue cannot operate as res judicata so as to bind him in a subsequent suit, for he could not have appealed against that finding, the decree having been in his favour.

The Chief Court in Pateshwari Din v. Mahant Sarju Doss, AIR 1938 Oudh 18 : 1937 OWN 1127 held that where a decree in previous suit is wholly in favour of a person and gives him all the reliefs sought for by him, he has no right of appeal against the decree so as to enable him to contest any adverse finding against him in such suit. Hence, such adverse finding cannot operate as res judicata as against him in a subsequent suit".

In Chandrika Singh v. Chokhe Singh, AIR 1930 Oudh 124, the finding was against the party who was successful. He had no right of appeal. It was held that it would not operate as res judicata. Following the latter decision, in Pateshwari Din v. Mahant Sarju Doss, AIR 1938 Oudh 18 it was held that where a decree in a previous suit is wholly in favour of a person and gives him all the reliefs sought for by him, he has no right of appeal against the decree so as to enable him to contest any adverse finding against him in such suit. Such decision cannot operate as res judicata as against him in a subsequent suit".

In Banarasi Sah. v. Bhagwanlal Sah, AIR 1977 Pat 206, it was held that where a decree is absolutely in favour of a party but some issues are found against him. he has no right of appeal against the decree and plea of res Judicata cannot be founded on adverse decision against him because he had no occasion to go in appeal.

Zamlndart Company Ltd, v. Naresh Ranjan Roy, AIR 1922 PC 241 ; Sri Pal v. Swami Nath, AIR 1968 All 282 ; Smt. Tarabai Mohata v. Union of India, AIR 1971 Col 225 ; Mathura Bai v. Ram Krishna Bhaskar Barve, AIR 1961 Bom 97 ; Sukhani v. Sukhbasi, AIR 1967 All 423, it was reiterated that when a party succeeds in a suit or appeal, an adverse finding against him cannot be the basis of a plea of res Judicata, for having succeeded he had no occasion to prefer an appeal. In Commissioner for the Port of Calcutta v. Bhairadinram Durga Prasad, AIR 1961 Col 39 (FB), it was held that such a party has no right of appeal when a suit is dismissed on a finding that the plaintiff had no right to sue, an adverse finding against the defendant Is not res Judicata, as was held in Markanda Mohapatra v. Varada Kameshwar Rao Naidu. AIR 1949 Pat 197.

Overlaping of Section 15 of Copyright Act and Designs Act

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CASES

1. William Grant & Sons Ltd. vs Mcdowell & Compay Ltd. on 27 May, 1994.

It follows further that in view of the fact that the plaintiff's label is a mark within the meaning of the Trade & Merchandise Marks Act, Section 15 of the Copyright Act can have no application to the label in question, for the reasons that the same is not an article. The label is permanently affixed on the bottle. It is not sold as an article. Nor is it intended to be sold as anarticle. The sole purpose of the plaintiff's label is to show that the Glenfiddich whisky which is a Single Malt Whisky, which is "Special Old Reserve", is manufactured by William Grant & Sons Ltd., the plaintiff. In this view of the matter, it cannot be said that because of section 5 of the Copyright Act, the copyright of the plaintiff in the label would cease to be, once more than 50 impressions of the label are made.

2. Fabric designs covered under designs Act (section 15(2) will apply)

As far as the defendants' arguments on the question of the copyright protection in this case, not being available due to provisions of Section 15 of the Act, and provisions of the Designs Act are concerned, it would be appropriate to set out the observations in Microfibres (supra): ‚In India, we have special legislations governing the protection of different nature of rights. Insofar as the industrial designs are concerned, the protection is provided under the Designs Act, 2000, which came into force from May, 2001 and repealed the earlier Designs Act, 1911. An important and relevant aspect is that both under the old Act and the new Act, fabric designs on textile goods have been classified as proper subject matter of IA NO.2352/2008 IN CS (OS) 344/2008 Page 19 design protection by inclusion as a specific class in the Rules framed under the Acts. In the Designs Act of 1911, Classes 13 and 14 of the Fourth Schedule of the Rules dealt with printed or woven designs of textile goods other than checks and stripes and checks and stripes respectively. Such protection is now provided under Class 5 of the new Design Rules of 2001.

3. However, there can be no quarrel with the plea of Shri Ramachandran that the operation of Section 15(2) of the Copyright Act does not exclude from the ambit of Copyright protection either the original "artistic work" upon which the design is based or the design which by itself is an artistic work. It cannot be disputed that the original paintings/artistic works which may be used to industrially produce the designed article would continue to fall within the meaning of the artistic work defined under Section 2(c).

This clearly shows that the legislature intended that even if the artistic work such as a painting has been used as the basis for designing an industrially produced object for commerce, such as the furnishing in the present case, nevertheless the original painting would indeed enjoy full copyright protection, while the result of the industrial application of such painting, namely, the design used in the industrial production of the ultimate product shall enjoy lesser period of protection as stipulated under the Designs Act provided it is registered as a design under the Designs Act. Thus, we are of the view that an original artistic work initially acquires protection under the Copyright Act as an 'artistic work' or else the protection under the Designs Act qua the product created from the artistic work when industrially applied."Servewell Products Pvt Ltd & Anr vs Dolphin on 9 April, 2010

4. Rajesh Masrani vs Tahiliani Design Pvt. Ltd on 28 November, 2008,

It is alleged that the drawings which are made in the course of developing the garments and accessories by the plaintiff are artistic works under Section 2(c)(i) of the Copyright Act, 1957. The patterns printed or embroidered on the fabric are also artistic works in their own right and are developed by the plaintiff. The garments or accessories themselves are works of artistic craftsmanship under Section 2(c)(iii) of the Act, while the patterns printed or embroidered on the fabric are also artistic works in++ their own right. The Plaintiff does its creative work on computers and claims to be the author under Section 2(d) (vi) of the Copyright Act. The Plaintiff claims to be the first owner of Copyright in all the products of the company under Section 17(c) of the Copyright Act.

It seems to me, going backwards in the order of the claims, that the Plaintiffs must succeed on the ground of infringement of copyright. The Plaintiffs? design was an artistic work within the meaning of the Copyright Act and it has been copied, there is no doubt about it at all. The small differences that have been introduced on behalf of the Defendants do not make any substantial difference: substantially, in the words of Sec. 49 of the Copyright Act, 1956, the Plaintiffs? work has been reproduced on behalf of the Defendants and, therefore, it seems to be quite plain that there has been an infringement of the Plaintiffs? copyright in their picture, which is quite an artistic picture within its limitations, and the Plaintiffs are entitled to succeed on that ground.

26. We are, therefore, of the opinion that the plaintiffs? work is entitled for protection under Section 2(c) of the copyright Act and is an original artistic work. Since the work is an ?artistic work? which is not covered under Section 2(d) of the Designs Act,2000, it is not capable of being registered under the Designs Act and the provisions of Section 15(2) is not applicable.

5. A. F. Products v. A. B. Works, . It was held in this case that a design is

necessarily part and parcel of the article manufactured while a trade mark is necessarily not so. Thus the label to be put on a carton to be used as a container for the goods can never amount to design within the meaning of Section 2(5) of the Designs Act. Section 15(2) of the Copyright Act, 1957 has no application to this case. No such contention is raised in any of the affidavits filed on behalf of the defendant.

The defence raised by the defendants under Section 15 of the Copyright Act has certainly to be considered at the time of trial. That cannot be rejected off-hand as a frivolous ground. Learned Counsel for the appellant attempted to argue that Section 15 of the Copyright Act would apply only to designs on the article itself and not to designs on the package. That is a question of law turning on the interpretation of Section 15 of the Copy Right Act and the provisions of the Designs Act. That is not a matter which can be decided at the interlocutory stage. In fact, we directed learned Counsel for the appellant not to argue the question raised by the defendants under Section 15 of the Copy Right Act.

7. Warner Brothers v. Roadrunner 1988 FSR 292 however, if the intended industrial use of the work was contemporaneous with its coming into existence, Section 15 of the Copyright Act would apply. I may hasten to clarify that it is not suggested that if any design is registered, copyright under no circumstance exist in the drawings. Section 15 lays down that on registration of a design under the Designs Act, the copyright shall not subsist in that design and not in the drawings. Therefore, it is possible that when the moulded plastic article of novel shape is made from a working drawing, as in the instant case, the drawing may qualify as an original work entitled to copyright protection and, at the same time, a registered design for the shape of the article would be protected under the Designs Act. If an unauthorized copy is made of the article, it may constitute an indirect copy of the drawing and therefore may infringe the copyright.

8. So labels cannot be registered as Designs under Designs Act 2000.

There is no need to stick or affix the design to the article. Applying a design to produce an article or a machine means using the design as a model or pattern to be multiplied by an industrial process. A design applicable to a thing for its shape can only be applied to the thing by making it in that shape or pattern. When a design is applied to an article it means that the characteristic features e.g. shape, configuration, lines, etc. are reproduced in conformity with the model design. It is a naive argument submitted by the respondent that application means sticking the paper on which the design is printed. It has no logic and if accepted would make the whole provision namely Section 15(2) nugatory and worthless. Such an interpretation being contrary to all canons of interpretation cannot be adopted. Accurate Transheat Pvt. Ltd. vs Devendra Somabhai Naik on 4 June, 2004

Order 41 rule 22 cannot apply on appeal and writ petition (Successful Party)

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Jabalpur Development Authority vs Y.S. Sachan And Ors. on 12 February, 2004

The question that falls for consideration before the Full Bench is framed thus:-

"Under Order 41, Rule 22 of the Code of Civil Procedure there is a specific provision for the filing of cross-objections. These provisions admittedly apply to all appeals filed under Clause 15 of the Letters Patent. So much so, against the judgment rendered by the learned Single Judge upon a first appeal when a Letters Patent Appeal is filed, in that Letters Patent Appeal, cross-objections could be filed by the respondent therein. We fail to see how and when the writ appeal also is filed under Clause 15 of the Letters Patent, the provisions of Order 41, Rule 22, Civil Procedure Code could be excluded, there is no rule in the Writ Proceedings Rules which can be said to be inconsistent with Order 41, Rule 22, Civil Procedure Code. In fact the rules are silent as to whether cross-objections could be filed or not. We may add that the Writ Proceedings Rules by themselves do not provide any remedy. They regulate the proceedings which may be instituted by virtue of some other provisions of substantive law, the writ petitions are filed under Article 226 of the Constitution and the writ appeals are filed under Clause 15 of the Letters Patent. It is to govern these proceedings that the writ proceedings Rules have been framed. This was necessity for the reason that in the Appellate Side Rules, there is no specific provision governing the writ petitions. Moreover, specific procedure had ' to be devised for regulating the petitions filed before this Court on the Original Side invoking the extra-ordinary jurisdiction of the High Court. The rules are procedural rules and do not confer or take away the substantive right of appeal or the right of filing of cross-objections.

On the other hand there is an express provision in Rule 24 that in relation to causes and matters coming up before the High Court on the original side or the appellate side, the provisions of the Code of Civil Procedure will govern. We therefore, fell no hesitation in holding that the writ appeal being a proceeding on the appellate side of the High Court and being a civil proceeding, the provisions of the Code of Civil Procedure would apply and Order 41, Rule 22, Civil Procedure Code which makes, a provision for the filing of cross-objections, would therefore, equally apply to a writ appeal. Consequently, the cross-objection, which in this case is termed as 'cross writ appeal' are maintainable. The mere fact that it has been numbered as an independent writ appeal does not affect to the character of the petition filed by the writ petitioner. The 'cross writ appeal' is accordingly treated as 'cross objections' under Order 41, Rule 22, Civil Procedure Code and the same having been filed before expiry of thirty days of the filing of the main Writ Appeal No. 967/82 no question of limitation arises. In objection as to maintainability of Writ Appeal No. 1093 of 82 is overruled."

Mangala D/O Dinkar Shankar ... vs Laxman Ganpat Jadhav on 19 September, 2007

Para8 “Whenever a party who is successful in getting a decree finds that there is an adverse finding recorded against the said party in the judgment, the said party cannot prefer an appeal challenging the decree. The remedy of such party to challenge those findings is by way of cross objection whenever the other party has filed an appeal challenging the decree. But if the other party has not filed the appeal then in that circumstances such findings cannot be challenged by the party like appellant. In the present matter the respondent-husband has not challenged the decree passed by the Family Court and therefore the objections to the findings as raised by the appellant cannot be entertained even by way of a cross objection or cross appeal. Therefore, we find that the appeal on that ground is not maintainable.”

Union Bank Employees Association vs Union Bank Of India on 6 August, 2001

6. The award of the Central Industrial Tribunal is in favour of the management and there was no occasion or necessity for the management to file a writ petition in this Court. I do not find any substance in the contention of the learned counsel for the petitioners that against the adverse findings given on a particular point though ultimately decision is in favour of the litigant still writ has to be filed. In case where the writ petition would have been filed by the respondent management challenging the finding of the Industrial Tribunal regarding the appointment of Ashok Kumar I have my own reservation whether it could have been admitted by the court. The management could not have filed any cross objection as the provisions of Code of the Civil Procedure are not applicable in the proceedings under Article 226 of the Constitution.

Keshab Narayan Banerjee vs Commissioner Of Income-Tax And ... on 28 August, 1998

“8. Sub-rule (1) of Rule 22 of Order 41, Civil Procedure Code, reads as under ;

"Any respondent, though he may not have appealed from any part of the decree, may not only support the decree but may also state that the finding against him in the court below in respect of any issue ought to have been in his favour; and may also take any cross-objection to the decree which he could have taken by way of appeal, provided he has filed such objection in the appellate court within one month from the date of service on him or his pleader of notice of the day fixed for hearing the appeal, or within such further time as the appellate court may see fit to allow."

9. Proceedings in a writ application filed under Article 226 of the Constitution and an appeal arising therefrom under Clause 15 of the Letters Patent strictly would not be civil proceedings in the sense that technically they are not governed by the provisions of the Code of Civil Procedure, yet they being in the nature of civil proceedings, the principles contained in Order 41, Rule 22 of the Civil Procedure Code, should apply in all Letters Patent appeals. After all a respondent who was partly successful in the writ proceedings should clearly decide whether to appeal against the unsuccessful part of the judgment of the learned single judge or to agitate in the appeal court the finding which may go against him. Such a partly successful respondent, therefore, can prefer its own appeal against that part of the judgment which goes against it or may, in the appeal of the writ petitioner decide to file cross-objection(s) in respect of the findings which have gone against him. If he does neither, it is still open to him to take recourse to the provision contained in Rule 22(1) of Order 41, Civil Procedure Code, and urge the court hearing the appeal that the finding against him by the learned single judge in respect of an issue ought to have been in his favour. This is the limited right made available under the amended Rule 22(1). This right, however, has to be exercised with clear limitation and a contingent condition that the ultimate result of the appeal shall not amount to upset the judgment of the learned single judge in so far as the nature and extent of the relief granted to the writ petitioner (appellant in the Letters Patent appeal) is concerned. A person, the respondent in the writ application, who does not choose to file appeal against the judgment of the learned single judge, even though a substantial part of such judgment goes against him, nor does he choose to file cross-objections in the appeal filed by the writ petitioner, cannot be permitted to urge the court to set at naught even that relief which was partially given to the writ petitioner by the learned single judge. Subject to such limitation and contingent condition, such a respondent may be allowed to assail a finding on an issue returned by the learned single judge which went against him. In the present case, as noticed, the Revenue has neither filed any appeal against the judgment of the learned single judge nor did it file any cross-objections in the appeal filed by the petitioner and yet it wanted to challenge the aforesaid two findings regarding the mode of service based on "refusal" and "affixation". If the respondent is allowed to challenge these two findings, or even one of them, and if the challenge is successful, the result would be that in the appeal we shall have to hold that the service of notice by "refusal mode" or "affixation mode", as the case may be, or by both of them was proper, and, if once we take that view, even the limited relief given by the learned single judge to the appellants would have to be set aside. The net result, therefore, would be that the appellant who filed the appeal against the part of the relief which was not given to him by the learned single judge would be deprived of even that part which was given to him, only because he came up in appeal against the unsuccessful part, even though the respondent did not prefer any appeal against any part of the judgment, successful or otherwise. We have no hesitation to hold that such a course of action, from the interpretation of Rule 22(1) is not permissible. We, therefore, did not permit Mr. Prasad to challenge these two findings under Rule 22(1). These two findings, therefore, in our view, have assumed finality and cannot be upset or disturbed by us in this appeal.”

S.K. Awasthy vs M.R. Bhope, Presiding Officer, ... on 29 January, 1993

The learned Counsel for Respondent No. 2 invited the attention of the Court to the provisions contained in Order 41, Rule 22 and Order 41, Rule 33 of the Code of Civil Procedure as and by way of analogy. Order 41, Rule 33, Code of Civil Procedure empowers the appellate Court to pass any order it deems fit even though the appeal is filed against part of the decree and no cross appeal or cross objections are filed by the respondents as more particularly set out therein. In my opinion, Order 41, Rule 33 or Order 41, Rule 22 of the Code of Civil Procedure cannot be applied to a writ petition by analogy. A writ petition is not an appeal. The jurisdiction and powers of Writ Court shall have to be ascertained independently of Order 41, Rule 22 or Order 41, Rule 33 of the Code of Civil Procedure. In one sense, powers of writ Court are wider and in another sense narrower.

Declaration on Free Access to Law

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In October 2002 the meeting of LIIs in Montreal at the 4th Law via Internet Conference, made the following declaration as a joint statement of their philosophy of access to law. There were some further modifications of the Declaration at the Sydney meeting of LIIs in 2003 and at the Paris meeting in 2004.

Legal information institutes of the world, meeting in Montreal, declare that,

· Public legal information from all countries and international institutions is part of the common heritage of humanity. Maximising access to this information promotes justice and the rule of law;

· Public legal information is digital common property and should be accessible to all on a non-profit basis and free of charge;

· Independent non-profit organisations have the right to publish public legal information and the government bodies that create or control that information should provide access to it so that it can be published.

Public legal information means legal information produced by public bodies that have a duty to produce law and make it public. It includes primary sources of law, such as legislation, case law and treaties, as well as various secondary (interpretative) public sources, such as reports on preparatory work and law reform, and resulting from boards of inquiry. It also includes legal documents created as a result of public funding.

A legal information institute,

· Publishes via the internet public legal information originating from more than one public body;

· Provides free, full and anonymous public access to that information;

. Does not impede others from publishing public legal information; and

· Supports the objectives set out in this Declaration.

All legal information institutes are encouraged to participate in regional or global free access to law networks.

Therefore, the legal information institutes agree,

· To promote and support free access to public legal information throughout the world, principally via the Internet;

· To cooperate in order to achieve these goals and, in particular, to assist organisations in developing countries to achieve these goals, recognising the reciprocal advantages that all obtain from access to each other's law;

· To help each other and to support, within their means, other organisations that share these goals with respect to,

o Promotion, to governments and other organisations, of public policy conducive to the accessibility of public legal information;

o Technical assistance, advice and training;

o Development of open technical standards;

o Academic exchange of research results.

· To meet at least annually, and to invite other organisations who are legal information institutes to subscribe to this declaration and join those meetings, according to procedures to be established by the parties to this Declaration.

· To provide to the end users of public legal information clear information concerning any conditions of re-use of that information, where this is feasible.

Access to Legal information in India

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There are three broad pillars of Indian democracy: the legislatures who make laws, the executives who enforce laws and the judiciary that interprets laws. The laws regulate a number of activities like criminal offense, civil cases, taxation, trade, social welfare, education and labour rights.

A number of attempts have been made to bring the knowledge of law to the common people. The Government of India took active efforts to present all laws along with their amendments at indiacode.nic.in and all court judgments at judis.nic.in. Similar efforts have been taken up by other privately owned websites. While it is commendable to make law documents available to common people, it is still quite difficult for common people to easily find the required information.

The first problem is that acts are very large and in most scenarios just a few section of laws are applicable. Finding most applicable sections from hundreds of pages of law documents is too daunting for common people.

Secondly, laws are often vague and one needs to see how they have been interpreted by the judicial courts. Currently, the laws and judgments are separately maintained and to find judgments that interpret certain law clauses is difficult. This is one of the reasons that the private individuals have taken initiatives to publish legal information on internet.

Now the problem arises when the legal information is published on to the internet by an individual, they claim to have copyright of that literary work and also its scenario under Information Technology Act.

Indian Scenario

Copyright and judicial information

It is very important to know certain details about copyrights before analyzing the topic in hand which is copyright in judgments.

Meaning of copyright

"copyright" means the exclusive right subject to the provisions of this Act, to do or authorize the doing of any of the following acts in respect of a work or any substantial part thereof, namely:-
(a) in the case of a literary, dramatic or musical work, not being a computer programme, -
            (i) to reproduce the work in any material form including the storing of it in any                  medium by electronic means;
            (ii) to issue copies of the work to the public not being copies already in circulation;
            (iii) to perform the work in public, or communicate it to the public;
            (iv) to make any cinematograph film or sound recording in respect of the work;
            (v) to make any translation of the work;
            (vi) to make any adaptation of the work;
            (vii) to do, in relation to a translation or an adaptation of the work, any of the       acts specified in relation to the work in sub-clauses (i) to (vi);
                                    (b) in the case of a computer programme,-
                                    (i) to do any of the acts specified in clause (a);

Copyright shall not subsist –

SECTION 52

Sub Section 1(c) the reproduction of a literary, dramatic, musical or artistic work for the purpose of a judicial proceeding or for the purpose of a report of a judicial proceeding;

Sub section 1(d) the reproduction or publication of a literary, dramatic, musical or artistic work in any work prepared by the Secretariat of a Legislature or, where the Legislature consists of two Houses, by the Secretariat of either House of the Legislature, exclusively for the use of the members of that Legislature;

The most important and relevant being the case of Eastern Book Company and Ors vs D.B Modak and Anr

In this case Appellant No. 1 - Eastern Book Company is a registered partnership firm carrying on the business of publishing law books. Appellant No. 2 - EBC Publishing Pvt. Ltd. is a company incorporated and existing under the Companies Act, 1956. The said appellants are involved in the printing and publishing of various books relating to the field of law. One of the well-known publications of appellant No. 1 - Eastern Book Company is the law report "Supreme Court Cases" (hereinafter called "SCC").

Headnotes are prepared by appellant No. 3-Surendra Malik. As per the said appellant (plaintiff No. 3 in the suits filed in the Delhi High Court), the preparation of the headnotes and putting the various inputs in the raw text of the judgments and orders received from the Supreme Court Registry require considerable amount of skill, labour and expertise and for the said work a substantial amount of capital expenditure on the infrastructure, such as office, equipment, computers and for maintaining extensive library, besides recurring expenditure on both the management of human resources and infrastructural maintenance, is made by the plaintiff-appellants. As per the appellants, SCC was a law report which carried case reports comprising of the appellants' version or presentation of those judgments and orders of' the Supreme Court after putting various inputs in the raw text and it constituted an 'original literary work' of the appellants in which copyright subsisted under Section 13 of the Copyright Act, 1957 and thus the appellants alone had the exclusive right to make printed as well as electronic copies of the same under Section 14 of the Act. Any scanning or copying or reproduction done of or from the reports or pages or paragraphs or portions of any volume of SCC by any other person, was an infringement of the copyright in SCC within the meaning of Section 51 of the Act.

The defendant-respondent No. 2 Spectrum Business Support Ltd. (in Civil. Appeal No. 6472/2004) has brought out a software called "Grand Juriy" published on CD-ROMs and the defendant-respondent No. 2 Regent Data Tech Pvt. Ltd. (in Civil Appeal No. 6905/2004) brought out software package called "The Laws" published on CD-ROMS. As per the appellants, all the modules in the defendant-respondents' software packages had been lifted verbatim from the appellants' work; the respondents had copied the appellants' sequencing, selection and arrangement of the cases coupled with the entire text of copy-edited judgments as published in the plaintiff-appellants' law report SCC, along with and including the style and formatting, the copy-editing paragraph numbers, footnote numbers, cross-references, etc.; and such acts of the defendant-respondents constitute infringement of the plaintiff-appellants' exclusive right to the same.

It was held in the case that the reports in the Supreme Court Cases (SCC) of the judgments of the Supreme Court are a derivative work in public domain. By virtue of Section 52(1) of the Act, it is expressly provided that certain acts enumerated therein shall not constitute an infringement of copyright. Sub-clause (iv) of Clause (q) of Section 52(1) excludes the reproduction or publication of any judgment or order of a Court, Tribunal or other judicial authority, unless the reproduction or publication of such judgment or order is prohibited by the Court, the Tribunal or ocher judicial authority from copyright. The judicial pronouncements of the Apex Court would be in the public domain and its reproduction or publication would not infringe the copyright. That being the position, the copy-edited judgments would not satisfy the copyright merely by establishing amount of skill, labor and capital put in the inputs of the copy-edited judgments and the original or innovative thoughts for the creativity are completely excluded.

Accordingly, original or innovative thoughts are necessary to establish copyright in the author's work. The principle where there is common source the person relying on it must prove that he actually went to the common source from where he borrowed the material, employing his own skill, labour and brain and he did not copy, would not apply to the judgments of the courts because there is no copyright in the judgments of the court, unless so made by the court itself. To secure a copyright for the judgments delivered by the court, it is necessary that the labour, skill and capital invested should be sufficient to communicate or impart to the judgment printed in SCC some quality or character which the original judgment does not possess and which differentiates the original judgment from the printed one. The Copyright Act is not concerned with the original idea but with the expression of thought. Copyright has nothing to do with originality or literary merit. Copyrighted material is that what is created by the author by his own skill, labor and investment of capital, maybe it is a derivative work which gives a flavor of creativity. The copyright work which comes into being should be original in the sense that by virtue of selection, co-ordination or arrangement of pre-existing data contained in the work, a work somewhat different in character is produced by the author.

For the reasons stated above, the appeals were partly allowed. The High Court did grant interim relief to the plaintiff-appellants by directing that though the respondent-defendants shall be entitled to sell their CD-ROMS with the text of the judgments of the Supreme Court along with their own head notes, editorial notes, if any, they should not in any way copy the head notes of the plaintiff-appellants; and that the defendant-respondents shall also not copy the footnotes and editorial notes appearing in the journal of the plaintiff-appellants.

Interplay between Public Domain, Freedom of Expression and Copyright

“The general rule of law is, that the noblest of human productions—knowledge, truths ascertained, conceptions, and ideas—become, after voluntary communication to others, free as the air to common use”

The freedom speech and expression does not only protect freedom of ideas but also the form in which it is expressed. But Copyright law curtails this freedom of expression.

Freedom of Speech and Expression

• Right to receive information

• Right to disseminate information

Justifications for copyright being beyond the purview of Article 19(1)(a) of the Constitution a reasonable restriction under Article 19(2)

• Economic incentive vis-à-vis promotes free speech and production

• Right to steal is not included within the freedom of speech and expression

The Idea/Expression Dichotomy

1. ‘original’ u/s 13 of the Copyright Act, 1957:

(a) Original literary, dramatic, musical and artistic works;

(b) Cinematograph films; and

2. Sweat of the brow: conferring copyright on works merely because time, energy, skill and labour was expended, that is, originality of skill and labour

3. Modicum of creativity: in the sense that by virtue of selection, co-ordination or arrangement of pre-existing data contained in the work, a work somewhat different in character is produced by the author”. - Eastern Book Company v. DB Modak

The Supreme Court too recognized this shift and in Eastern Book Company v. DB Modak (supra), following the approach laid down by the Canadian Supreme Court in CCH Canadian Ltd., Vs. Law Society of Upper Canada (2004) SCC 13, rejected the sweat of the brow doctrine, (which conferred copyright on works merely because time, energy, skill and labour was expended, that is, originality of skill and labour), and held that the work must be original ?in the sense that by virtue of selection, co-ordination or arrangement of pre-existing data contained in the work, a work somewhat different in character is produced by the author?. It is noteworthy that our Supreme Court noticed that the two positions i.e. the sweat of the brow on the one hand, and ?modicum of creativity? were extreme positions; it preferred a higher threshold than the doctrine of ?sweat of the brow? but not as high as ?modicum of creativity?. Thus, our law too has recognized the shift, and mandates that not every effort or industry, or expending of skill, results in copyrightable work, but only those which create works that are somewhat different in character, involve some intellectual effort, and involve a certain degree of creativity. It is in the light of this standard of originality, that the plaintiffs claim to copyright in the questions as well the copyright in the arrangement of the exercises in each chapter and the internal arrangement of questions therein, needs closer scrutiny.

Eastern Book company v Navin J.Desai, the question involved was whether there is any copyright in the reporting of the judgment of a court. The Delhi High court observed: It is not denied that under section 2(k) of the Copyright Act, a work which is made or published under the direction or control of any Court, tribunal or other judicial authority in India is a Government work. Under section 52(q), the reproduction or publication of any judgment or order of a court, tribunal or other judicial authority shall not constitute infringement of copyright of the government in these works. It is thus clear that it is open to everybody to reproduce and publish the government work including the judgment/ order of a court. However, in case, a person by extensive reading, careful study and comparison and with the exercise of taste and judgment has made certain comments about judgment or has written a commentary thereon, may be such a comment and commentary is entitled to protection under the Copyright Act”.

The court further observed: “In terms of section 52(1)(q) of the Act, reproduction of a judgment of the court is an exception to the infringement of the Copyright. The orders and judgments of the court are in the public domain and anyone can publish them. Not only that being a Government work, no copyright exists in these orders and judgments. No one can claim copyright in these judgments and orders of the court merely on the ground that he had first published them in his book. Changes consisting of elimination, changes of spelling, elimination or addition of quotations and corrections of typographical mistakes are trivial and hence no copyright exists therein.

FINALLY ITS DECIDED THAT INDIA FOLLOWS "NATIONAL EXHAUSTION"

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Finally, it has been decided that India follows National Exhaustion. It has been made clear by Justice Manmohan Singh in his judgment on Samsung vs Kapil Wadhwa that India follows national exhaustion.

Facts of the cases

Plaintiffs (SAMSUNG) are engaged in the business of manufacturing and trading in electronic goods such colour televisions of all types, home appliances, washing machines, microwaves, air conditions, computers, printers and cartridges etc. The Plaintiff No. 1 has licensed the use of Samsung trademark in India to Plaintiff No.2(Samsung India) vide a trademark agreement dated 8th July 2003. The said agreement has also been filed with the Trade Mark‟s Registry for registration. The grievance of the plaintiffs in the present case relates to the important business of manufacturing, selling and distribution of wide range of printers under the mark SAMSUNG by them and rampant problem of parallel importation especially carried out by the defendant No. 1 and 2 whereby the plaintiffs are deprived to carry out their legitimate business under the mark SAMSUNG.

The plaintiffs have averred in the plaint that on 18th March 2011, the advertisement was published in the weekly The DQ week by the defendant No. 2 offering SAMSUNG printers for sale. The plaintiff also complained that the said advertisement used the SAMSUNG mark along with slanted device. The said advertisement quoted the price much below than the price of the printers ordinarily sold in the market as per the plaintiff.

The Defendant also operates a website whereby the defendant offers for sale a varied range of the printers under the mark SAMSUNG at the prices much lower than offered by the plaintiff. The defendants use the technique of deep hyperlinking whereby the defendant is also able establish a connect between his website with that of the plaintiff when it comes to displaying the product to the consumer. All this is done to confuse the consumer so as to believe that the products are emanated from the plaintiffs authorized representatives when the defendants are not so.

Issues

The plaintiffs by showing the above acts of the defendants allege that the defendants are guilty of the following infringement:

1. By way of parallel imports, the defendants are infringing the trade mark SAMSUNG of the plaintiffs in as much as the importation has been caused without the consent or permission of the registered proprietor and thus the defendants acts are infringement in view of Section 29 of the Trade Marks Act.

2. By way of doing meta tagging and deep hyperlinking, the defendants are guilty of the infringement of trade mark SAMSUNG as the defendants are using the mark in relation to the advertisement and the use of the same is treated to be use for the purposes of infringement and thus the defendants are violating Section 29(1) read with Section 29 (6) of the Act.

3. The defendants are passing off the goods which are not meant for Indian market giving the impression that the same are emanating from the plaintiffs when the plaintiffs have not given any such authorization or permission to the defendants to undertake such activities. All this is being done to the detriment of the plaintiffs is clear act of misrepresentation as well as deceit to the general public.

4. The defendants are also tarnishing the reputation of the plaintiffs well known trade mark SAMSUNG by providing the goods which are actually not intended to be served to the Indian public. Any element of dissatisfaction would then clearly attack or reflect on the reputation of the plaintiffs mark SAMSUNG.

Interpretation of section 30 (3) and (4) of Trademark Act 1999

Section 30 reads as under

Section 30 (3) Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of the goods in the market or otherwise dealing in those goods by that person or by a person claiming under or through him is not infringement of a trade by reason only of-

(a) The registered trade mark having been assigned by the registered proprietor to some other person, after the acquisition of those goods; or

(b) The goods having been put on the market under the registered trade mark by the proprietor or with his consent.

Section 30(4) Sub-section (3) shall not apply where there exists legitimate reasons for the proprietor to oppose further dealings in the goods in particular, where the condition of the goods, has been changed or impaired after they have been put on the market.

READ MORE....

Link for the judgment: http://lobis.nic.in/dhc/MAN/judgement/18-02-2012/MAN17022012IA77742011.pdf

Exceptions to Design Right (UK/EU)

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Exceptions to Design Right

Design right does not subsist in certain situations(section 213(2)). Some of these designs are also excluded from the definition of ‘design’ in the 1949 Act, as amended, so they cannot be registered. Here, the legislation clearly looks at individual features of the design.

Method or Principle of Construction

The definition of design excludes the underlying principles or ideas behind the design. If they are to be protected at all, they are properly matters for the patent system.

‘Must Fit’ and ‘Must Match’

The ‘must fit’ and ‘must match’ exceptions are intended to prevent design right conferring a monopoly and thereby to preserve competition. They permit copying where design constraints compel it.

‘Must Fit’

Design right does not subsist in those parts of the design of an article which enable an article to fit or connect to another so that either article may perform its intended function. In Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289 Laddie J considered that the ‘article’ which the article in the design had to fit could be the human eye. The radius on the rear face of a contact lens was therefore a must fit feature. In Mark Wilkinson Furniture Ltd v Woodcraft Designs (Radcliffe) Ltd [1998] FSR 63, a fitted kitchen was not an article but a collection of matching articles, so the design for the kitchen unit was not deprived of protection. The meaning of the word “enable” was explored by Park J in A Fulton Co Ltd v Grant Barnett & Co [2001] R.P.C. 16, [2000] All ER (D) 1270. This exception is particularly intended to withdraw protection from spare parts which must fit in to existing equipment, though it also extends to complete articles (ee Philip Parker v Stephen Tidball [1997] FSR 680, Ch D.) including some species of design that will be little more than one big must-fit feature (like a mobile phone case): it is particularly directed at those which offer interfaces enabling them to be fitted together: Electronic Techniques (Anglia) Ltd v Critcheley Components Ltd [1997] FSR401, Ch D. In Fulton, however, a case for a folding umbrella was not a must-fit design:

It would in my view be unacceptable to construe the provision as meaning that any article which is shaped so about cover or contain another article cannot qualify for design right.

In the Parker case (which on the face of it seems hard to reconcile with this view) there was infringement of features in the design of which there was design freedom, so the ‘must-fit’ argument was not conclusive.

Notice that it is not the design for the spare part itself which is excluded from protection, but only the design of those features of shape or configuration of the article which enable it to fit. A competitor who wishes to produce an article will still be prevented from copying the free-standing parts of the design but will be able to copy the connecting or ‘must fit’ features. These may be applied to the second design to produce a competing article which will fit and function.

In the Baby Dan case, the deputy judge, David Young QC, gave a purposive construction to the must-fit exception. The claimant could rely on design right relating to various parts of a larger article, so the must fit exception would not exclude from protection the shape or configuration of the parts necessary to enable them to be assembled. A similar approach, recognising design right in component parts and restricting the must fit exception, informs the decision of Park J in Frayling Furniture v Premier Upholstery Ltd. (1999) 22(5) I.P.D. 22051.

In Novum (Overseas) Ltd v Iceland Foods plc and Austria Haustechnik[2002] EWHC 53 the High Court considered the effect of the so-called must fit exception to design right. The defendants had made and imported freezer cabinets that reproduced the claimant’s design (drawings of which the first defendant had obtained under the pretence that they were needed for shop layout design purposes: infringement of copyright by reproducing the drawings was admitted).

The first defendant argued that it was co-owner of the design, having had some input into the design work. The judge held that it had not done sufficient to produce this result, and even if it had dealings in a jointly owned design needed the consent of all owners.

Though freezer cabinets are not the most exciting pieces of design work around, the judge considered that a combination of commonplace features could attract unregistered design right protection. The model in suit was quite different in overall appearance to prior designs that had been put in evidence. The defendants’ freezer was a substantial reproduction of the design, and notwithstanding the evidence the judge held that it had been copied and therefore infringed design right. However, dividers and gaskets which formed part of the cabinet were commonplace and also were covered by the must fit exception.

The second defendant escaped an award of additional damages as it had been unaware of unregistered design right and had trued to produce a design that was not a copy.

‘Must Match’

The ‘must match’ exception excludes from protection features which are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part.

It is intended to apply where there is a need for articles which are part of a single object to match the appearance of the rest of that object as a whole - it does not apply to pieces from a set of cutlery.

The exception is intended to cover the situation where a part is needed to restore the aesthetic appearance of an article. In such a case certain features of the design may be covered by the ‘must fit ‘ exception. The other features of the design are not free-standing since the designer must reproduce the shape of the item being replaced if their article is going to serve as a viable replacement. So, wherever, aesthetically, there is no design freedom, design right will not arise.

The need for the features of the design to match another must be considered, at the moment the design is created. So if the shape or design of an article is not dependent on anything else at the time the design is made, design right will subsist. It will be immaterial that at some future stage the use to which the article is put creates a must match situation.

Surface Decoration

Surface decoration is excluded from the scope of design right, again because the right is concerned with the overall form of an article. It may be registered (registration being concerned with features of an article) and may also be protected by copyright. See Designers Guild Ltd v Russell Williams (Textiles) Ltd. Surface decoration means more than a design printed or painted, or perhaps etched, onto an article – it includes a ‘v groove’ in a kitchen unit (Mark Wilkinson Furniture Ltd v Woodcraft Designs (Radcliffe) Ltd [1998] FSR 63, Ch D.). In Lambretta v Teddy Smith argument that the design was not surface decoration but the configuration of different-coloured pieces of the garment was rejected.

Surface decoration is specifically excluded from the definition of a design for the purposes of copyright, so section 51 of the Copyright, Designs and Patents Act 1988 does not restrict copyright protection. The design right exception is not restricted to situations where dual protection actually exists.

Requirements for Protection

Originality

Design right only subsists in original designs. The basic test of originality is that the design must be independent in the sense that it is not a copy although it need not necessarily be novel. In C & H Engineering v F Klucznik & Sons Ltd(the Pig Fenders case) [1992] FSR 427 Aldous J held that the same test as imposed in copyright law would be appropriate: that the design was not copied but the independent work of the designer. A design may be original in that is it is not copied, but may not be novel for the purposes of the Registered Designs Act because it has been previously published.

Section 213 provides that original designs attract UDR protection: but a design is not original if it is commonplace in the design field in question. However, a design may, it seems, be original but also commonplace and therefore denied protection: see Scholes Windows Ltd v Magnet Ltd [2001] EWCA Civ 532, [2002] FSR 10.

In Interlego v Tyco Industries [1989] 1 AC 217, [1988] 3 All ER 949, [1988] RPC 343 the Privy Council held that a design was not original where the only original input of the designer was to make modifications to the design drawings which were indistinguishable in the article made to the design. Amongst other changes, the radii on the corners of the bricks were altered. This did not start a new term of protection running. In Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289Laddie J held that although designs (in suit, for contact lenses) which looked the same to the naked eye could enjoy design right protection, merely changing the scale of an existing design would not create a fresh right. The commonplace exclusion applies to designs that are ‘trite, trivial, common-or-garden, hackneyed or of the type that would excite no particular attention in those in the relevant art.’ However, he did not think it right to try to advance a definition of the term.

In Spraymiser the High Court was asked to consider whether the claimant’s design was original for the purposes of unregistered design right. The defendant had purchased in the United States a wooden mannequin which could be reconfigured to form different items of furniture. The defendant described it to the claimant in the UK, suggesting that the claimant might develop something similar which the defendant would advertise in its mail order catalogue. Now there was some dispute about whether the defendant had shown the device to the claimant.

The claimant subsequently developed a similar design which was marketed by the defendant for several years until 1997 when the defendant stopped ordering the product from the claimant and found another supplier, using the claimant’s product as a template. The claimant sued for infringement of unregistered design rights and for breach of contract.

On the evidence, the Court decided that the claimant had never had access to the American model. Similarities between the two devices were inevitable because they were both representations of the human form, but this did not preclude the possibility that the claimant’s work was original.

Commonplace designs

Sub-section (4) adds a further limitation, requiring that a design is not commonplace, thus excluding designs which, while they are not copies, are no more than an expression of what is widely known in the design field in question. In the Pig Fenders case the judge described the ‘commonplace’ provision as imposing a requirement akin to novelty. He found that certain features of the pig fenders in suit were commonplace, so that although they were common to the plaintiff’s and the defendant’s designs, there was no infringement. But in Amoena v Trulife [1996] IPD 19006 the court considered novelty unnecessary. Consideration of the prior art may nevertheless be relevant, as in Lone Star Toys Ltd v JM Enterprises of Wetherby Ltd. [1996] FSR 857.

In Farmer Build Ltd v Carier Bulk Materials Ltd and others [2000] ECDR 42, [1999] RPC461 (CA)The Times, 23 December 1998 (Ch D) the plaintiff manufactured and marketed slurry separators. One of its products was problematical, and it agreed with the defendant that a new machine would be designed on the basis of two of the plaintiff’s old designs and improving on them. The relationship broke down: the defendant subsequently started to produce its own slurry separators which were externally different from those it had designed for the plaintiff but internally virtually identical.

The defendant claimed that the individual parts of the machines, and the machines themselves, were commonplace in the design field at the time of their creation. The court considered that the correct approach was to compare the design of the article in which UDR is claimed with the design of other articles in the same field, including the alleged infringing one. The material time for this exercise is when the design is created. A design copied from the design of an earlier article will not be original, and it is not necessary to consider whether it is commonplace or not.

Whether it is commonplace is determined by ascertaining the degree of similarity to the design of similar, independent articles in the same design field. In Scholes Windows v Magnet Ltd the field was windows, not uPVC windows, so the earlier use of a similar design on Victorian windows counted against the modern design being protected. This is to be done objectively, in the light of the evidence (including expert evidence) but is a question of fact and degree for the court. If there are aspects of the plaintiff’s design not found in other designs in the field, except the defendant’s, the court can conclude that the design was not commonplace. In Scholes the horn design had been used on windows for many years and was therefore commonplace. In the case of a decorative design where there is greater design freedom, as was the case there, the Farmers Build guidelines will be less help.

The guidelines were applied by the High Court (Rattee J) in Round Imports v PML Redfearn Ltd [1999] CIPA 725, upheld sub nom Round Imports v Rexam Glass Barnsley Ltd by the Court of Appeal, 5 October 2000. This concerned UDR in a tall-necked bottle designed for the plaintiff for its Red Eye beverage. The design of the Red Eye bottle was original in that it was not a copy of another design: it was however very similar to a Miller bottle which the plaintiffs had provided to the defendant as a model, and although there were minor variations in shape and dimension they were not in the judge’s view sufficient to make the bottle significantly different from the Miller bottle or any other tall-necked bottle available at the time. Glass designers have always considered small differences sufficient, but it seems that the law differs from their view and their designs will now be open to copying. However, that case was decided on other grounds.

The guidelines were also applied in the Jo-Y-Jo case, where expert evidence showed that the cardigan designs in question were ‘classic’. Embellishing the garments with embroidery and edging did not prevent the designs being commonplace. In Fulton, a claim to unregistered design right in the handle and case of a folding umbrella was upheld: to enable functional designs to enjoy any protection, the judge (Park J) said, a narrow interpretation of what is commonplace was needed. Merely because references to two designs of close similarity could be shown was insufficient. Very minor changes of line or angle can have a significant effect on a design (as happened in Scholes).

In Spraymiser Ltd. v Wrightway Marketing Ltd. [2000] ECDR 349 (High Court) the deputy judge took the view that the field was extremely small, consisting as it did of only two designs, namely the American one and the claimant’s. There were sufficient differences between them that the claimant’s design was not commonplace within the field. Had there been a greater number of candidates, more differences may (it is submitted) have been needed.

Trademark classes -- Trademark Rules ,2002

2012-02-13T14:45:00.004+05:30

THE FOURTH SCHEDULE TO TRADE MARKS RULES, 2002

Classification of goods and services – Name of the classes

(Parts of an article or apparatus are, in general, classified with the actual article or apparatus, except where such parts constitute articles included in other classes).

Class 1. Chemical used in industry, science, photography, agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesive used in industry

Class 2 . Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordents; raw natural resins; metals in foil and powder form for painters; decorators; printers and artists

Class 3 . Bleaching preparations and other substances for laundry use; cleaning; polishing; scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices

Class 4 . Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels(including motor spirit) and illuminants; candles, wicks

Class 5 . Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparation for destroying vermin; fungicides, herbicides

Class 6. Common metals and their alloys; metal building materials;

transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores

Class 7 . Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs

Class 8 . Hand tools and implements (hand-operated); cutlery; side arms; razors

Class 9 . Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus

Class 10 . Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials

Class 11 . Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying ventilating, water supply and sanitary purposes

Class 12 . Vehicles; apparatus for locomotion by land, air or water

Class 13 . Firearms; ammunition and projectiles; explosives; fire works

Class 14 . Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and other chronometric instruments

Class 15. Musical instruments

Class 16 . Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks

Class 17 . Rubber, gutta percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal

Class 18 . Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery

Class 19 . Building materials, (non-metallic), non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

Class 20 . Furniture, mirrors, picture frames; goods(not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother- of-pearl, meerschaum and substitutes for all these materials, or of plastics

Class 21 . Household or kitchen utensils and containers(not of precious metal or coated therewith); combs and sponges; brushes(except paints brushes); brush making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes

Class 22 . Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes) padding and stuffing materials(except of rubber or plastics); raw fibrous textile materials

Class 23 . Yarns and threads, for textile use

Class 24 . Textiles and textile goods, not included in other classes; bed and table covers.

Class 25 . Clothing, footwear, headgear

Class 26 . Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers

Class 27 . Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings(non-textile)

Class 28 . Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees

Class 29 . Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats

Class 30 . Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces, (condiments); spices; ice

Class 31. Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt

Class 32 . Beers, mineral and aerated waters, and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages

Class 33 .Alcoholic beverages(except beers)

Class 34 . Tobacco, smokers' articles, matches

SERVICES

Class 35 .Advertising, business management, business administration, office functions.

Class 36 .Insurance, financial affairs; monetary affairs; real estate affairs.

Class 37 . Building construction; repair; installation services.

Class 38. Telecommunications.

Class 39. Transport; packaging and storage of goods; travel arrangement.

Class 40. Treatment of materials.

Class 41. Education; providing of training; entertainment; sporting and cultural activities.

Class 42. Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Class 43. Services for providing food and drink; temporary accommodation.

Class 44. Medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Class 45. Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

Overlapping rights: Copyright Act & Design Act

2012-02-06T17:08:00.001+05:30

Overlapping rights

There can be considerable overlap between the laws of copyright, registered designs and design right, in that all three may be relevant to the same article (see box, Overlap between copyright, registered designs and design right). To understand the relationship between them, some explanation of their legislative background is required. In summary, prior to the CDPA:

Design drawings were protected by copyright as artistic works for the life of the author plus 50 years.
Aesthetic designs which qualified for registration under the RDA were protected for 15 years.

This had the unintended and anomalous effect that purely functional designs, which did not qualify for protection as registered designs for a 15-year period, were instead protected by copyright as artistic works for the life of the author plus 50 years.

The CDPA reformed much of the law relating to the interaction between copyright and registered designs, as a result of which:

The period of protection for "aesthetic" registered designs was extended from 15 to 25 years (the requirement for aesthetic appeal was subsequently removed by the Designs Regulations).
A new unregistered design right was created to include functional designs.
Three-dimensional designs were, generally, removed from protection under the law of copyright, unless they were artistic works. (Generally speaking, the circumstances in which a three-dimensional design will constitute an artistic work are fairly limited − examples of three-dimensional articles that would qualify as artistic works are works of artistic craftsmanship, sculptures or engravings.) In the case of artistic works, the period of protection is broadly:
- the life of the author plus 70 years; or
- for artistic works which are made by an industrial process (which applies where more than 50 articles are made), 25 years from the end of the year in which the relevant article was first marketed (section 52, CDPA; see Permitted Acts).

Section 236 of the CDPA provides that, where copyright and design right subsist in a work, it is not an infringement of the design right in the work to do anything that would infringe the copyright in the work. Effectively, this means that where copyright and design right both subsist in a work, copyright is the IP right which has to be relied on.

See box, Copyright, registered designs and design right: a practical comparison for a comparison of how the law of copyright, registered designs and design right apply in practice.

Nestle and Amul Locked in Row Over Trademark

2012-01-30T23:41:00.004+05:30

Nestle India and Gujarat Cooperative Milk Marketing Federation (GCMMF), which markets its dairy products under the brand 'Amul' are locked in a row over using a trademark.

GCMMF has sent a legal notice to Nestle India stating about the trademark infringement when the latter launched its own brand of milk and yoghurt under the brand name-a+ (Plus), in December last year, sources privy to development said.

Amul has claimed in the notice that is has been selling fortified cheese under the brand 'Amul A+' since one year and high calcium milk labelled as 'Amul Calci+' since last four years, they said.

While, Nestle India has claimed that it was using the brand a+ (Plus) for its milk and yoghurt as it has purchased it from a person in North India.

"We are in talks with Amul over the alleged infringement of trademark, which we had purchased from a North Indian," a Nestle India executive said, preferring anonymity.

An e-mail sent to Nestle India for case details did not solicit response.

However, neither of the two leading dairy product marketing giants have moved court over the issue. They are still in dialogue and seeking an amicable solution to it through negotiations, according to sources.

"We are not commenting on the issue as negotiations are still underway with Nestle India over the trademark infringement issue," a top GCMMF functionary told PTI, on the condition of anonymity.

An executive of Nestle India said in an e-mail reply to PTI, "The A+ brand is legally assigned to us in accordance with accepted practices. We are currently in discussions with Amul and prefer not to comment further,".

The over Rs 9,700 crore brand Amul enjoys 25 per cent share in the country's organised milk retail and 70 per cent in the cheese market segment.

LINK

New Requirements for Registration of Trade Marks in India

2012-01-22T05:48:00.001+05:30

Controller General of Patents, Designs and Trade Marks dated 9th of January 2012 bearing no. CG/F/ Public Notice/ 2011/ 81. In a move to bring about accuracy of trade mark records and applications and to limit the potential for misuse of a broad claim in case of description of goods and services of a trade mark, the Controller General of Patents, Designs and Trade Marks has issued the aforementioned circular which requires Trade Mark applications to have the following information, failing which the Trade Mark Applications will not be processed henceforth:

1. Description of Goods / Services: Actual description of Goods /Services in respect of which the trade mark is proposed to be used or has been used should be mentioned and terms like "all goods/ services", "etc.", "all other goods/ services included in class……" , "goods/services not limited to ……….." shall not be entertained. Thus, when filing a trade mark application one should only mention those goods / services in respect of which the applicant is using / proposes to use the trade mark.

2. Names: The full names (initials are not allowed) of Proprietors in the case of a Proprietorship Firm, the full names of all Partners in case of a Partnership Firm, name of the Managing Trustee in case of a Trust and name of the person representing the society in the case of a Society, should be mentioned.

3. Date of USE: In the case of a claim of date of prior use of the trade mark, the actual date- consisting of the day, month and the year, when the trade mark was used should be given and not just the year and the month.

4. Translation/Transliteration: Proper translation/transliteration of the trade mark should be provided in the case of Non-English characters appearing in the mark.

5. Visibility of Trade Mark: The trade mark should be clearly visible.

The War Between Copyright and Remix Culture

2012-01-21T01:31:00.001+05:30

If there’s one concept that has suffered more damage than just about anything else as a result of the Web and the ongoing explosion of digital media, it’s that of copyright: The idea that a content creator should have virtually unlimited control over his or her creation, regardless of what form it takes. As blogger Andy Baio notes in a recent post, the principle behind copyright has been taking a beating from “remix culture,” driven in large part by YouTube (GOOG) and other video sites. Is the rise of the YouTube generation changing the way we think about copyright—and if so, should we let that happen? Do we even have a choice?

Baio, a long-time digital journalist who blogs at Waxy.org and is also a former chief technology officer of Kickstarter and a staffer at Expert Labs, notes that a huge number of the users who post mashups and other video interpretations of popular music to YouTube seem to have only a hazy idea of what copyright is, or how it’s applied to works like the ones they are uploading. As he notes, there are close to a million videos on the site that contain phrases like “no copyright infringement intended” or invoke the “fair use” clause in U.S. copyright legislation. In the vast majority of cases, these videos are probably illegal under the current law.

Saying things like “No copyright infringement—I only put this up as a project” (as one video uploader who posted a version of the movie Pulp Fiction, reassembled in chronological order, did) has no real legal force or effect, as Baio points out. Whether fair-use principles would apply to these kinds of creations is a more difficult question to answer, since the definition of fair use is notoriously complex. The courts use the so-called four factors test, which assesses the nature of the re-use, the intent of the new work, and the impact this has on the original. But as Baio notes: “Under current copyright law, nearly every cover song on YouTube is technically illegal. Every fan-made music video, every mashup album, every supercut, every fanfic story? Quite probably illegal, though largely untested in court.”

There are a number of ways to look at this kind of activity: If you are a copyright holder or a lawyer or an organization such as the Motion Picture Association of America, you can see it as theft, pure and simple—and you can file thousands of takedown notices under the Digital Millennium Copyright Act (including some fairly absurd cases in which music appears in the background of a video), or push for even more regressive and punitive legislation like the proposed Stop Online Piracy Act, which would allow you to remove websites from the Internet permanently, among other things.
Remix Culture Becomes “Normal”

At some level, however, this approach arguably turns into a self-defeating strategy for the media and content industries. I think Baio is right when he suggests that the “remix culture” many of these YouTube users identify with is changing the way an entire generation thinks about copyright, for better or worse. (I would argue it is for the better.) For them, the “fair use” principle is far broader than the courts would probably define it. Who is to say they are wrong? Says Baio: “No amount of lawsuits or legal threats will change the fact that this behavior is considered normal—I’d wager the vast majority of people under 25 see nothing wrong with non-commercial sharing and remixing, or think it’s legal already.”

As I’ve pointed out before, my teenaged and older daughters experience popular media of all kinds through remixes of some sort or other. Whether it’s a TV show like Doctor Who or Glee, or a popular song, or movies such as those in the Twilight series, they are almost constantly sharing remixes, mashups, parodies, and other references through social platforms like YouTube and Facebook and Tumblr. Almost every one of these is probably illegal, although some might be covered by fair use if they ever went to court.

LINK

Publisher Guidelines for a "Work Made For Hire"

2012-01-05T18:15:00.003+05:30

The following guidelines should help you obtain and retain copyright ownership of creative works that are intended to qualify as a "work made for hire."

Reduce to writing the rights of the employee and publisher with respect to employment-related works and other works.
Have a written "work made for hire" agreement with all freelancers and independent contractors who create works that you want to qualify as a "work made for hire." Merely stating that this is a "work made for hire" agreement does not make it one; all the requirements of the independent contractor prong must be satisfied.
Make sure the written "work made for hire" agreement is signed by both parties before the creation of the work.
Include an appropriate "assignment" clause in the "work made for hire" agreement that will serve as a back-up if the work does not qualify as a "work made for hire".

Will the Publisher Own the Copyright for All Works Created by Freelancers?

2012-01-05T18:15:00.000+05:30

Not necessarily. Although the independent contractor prong requirements for a work to qualify as a "work made for hire" also appear to be straight forward, publishers often fail to satisfy the specific requirements. If the work fails to qualify as a "work made for hire" there is a great likelihood that the publisher will not own the work that he has paid for.

A freelancer's creative work in order to qualify as a "work made for hire" must satisfy the exact requirements of the Copyright Act. (1) The work must have been specially ordered or commissioned by the publisher. (2) The work must "fit" into one of nine narrow statutorily enumerated categories of work: (i) contribution to a collective work, (ii) part of a motion picture or other audiovisual work, (iii) translation, (iv) supplementary work (i.e., prepared for publication as a secondary adjunct to another author's work such as an index or forward), (v) compilation, (vi) instructional text, (vii) test, (viii) answer material for a test, or (ix) atlas. (3) The parties must agree in a written and signed document that the work shall be considered a "work made for hire." In addition, although it is not stated in the Copyright Act, the "work made for hire" document must be signed by both parties prior to the commencement of the work. If the publisher fails to satisfy any of these requirements the work will not qualify as a "work made for hire" and the publisher could lose copyright ownership of the work.

Where do publishers go wrong when freelancers create works that the publisher wants to qualify as "works made for hire"? The specially ordered or commissioned requirement is usually never a problem. The nature of work frequently creates problems for the publisher. The reason for this is that the nine enumerated categories of works are not all inclusive and many significant categories of works cannot be considered a "work made for hire" under the independent contractor prong of the Copyright Act. Therefore if a work does not fall into one of the nine categories, even if it was specially ordered or commissioned, it will not qualify as a "work made for hire." From my experience, the written document requirement presents the greatest difficulty for publishers. Some publishers have only oral agreements with their freelancers; as may be expected the work created under an oral agreement will not qualify as a "work made for hire". Other publishers prepare the written "work made for hire" document, however, for a variety of reasons the document is not signed by both parties until after the freelancer has started or even completed creation of the work. If this situation occurs the work will not qualify as a "work made for hire"; this is because the written document was not executed by both parties prior to the creation of the work.

http://www.legalhelpindia.com/articles/copyright-ownership-2.html

Copyright Ownership: Is the Creator of the Work an Employee or Independent Contractor?

2012-01-05T18:14:00.002+05:30


	The first question the publisher must ask with respect to the "work made for hire" doctrine is whether the creator of the work falls under the employee prong or independent contractor (freelancer) prong. The significance of this line-drawing is that there are different requirements in the Copyright Act for a work to qualify as a "work made for hire" depending upon whether the creator of the work is an employee or freelancer. If the creator of the work is an employee, the publisher, as the employer of this employee, automatically, without any written employment contract, owns the copyright and all exclusive rights in creative works of employees that are prepared within the scope of their employment. Judicial decisions have established that an "actual" employee is one where the publisher has the right to control the "manner and means" of production. Employee status will generally be found where there is a salaried employment relationship, tax withholding, employee benefits and other indicators of employment as outlined in Part I. But if the creator of the work is not an employee, but instead a freelancer, than the "work made for hire" requirements of the independent contractor prong must be satisfied. This means that the work must be specially ordered or commissioned by the publisher, the work must fall into one of the nine enumerated categories of work, and there must be a signed writing between the parties where they agree that the work will be considered a "work made for hire." Will the Publisher Own the Copyright for All Works Created by Employees? Not necessarily. Even though the great majority of works created by employees will be owned by the publisher there is a possibility that some works might not be owned by the publisher. Although the requirement of "works prepared within the scope of employment" appears straight forward it can become somewhat complicated when employees work off the premises or when they create works on their spare time. If the work is to qualify as a "work made for hire" under the employee prong the employee must create the work within the normal scope of their job. The reason for this is that "no one sells or mortgages all the products of his brain to his employer by the mere fact of employment." Even if there is no question that the creator of the work is an employee, if the work is created outside the scope of the employee's normal job activities, it will cast doubt on the publisher's claim to the copyright. Therefore the "wise" publisher will reduce to writing the rights of the employee and publisher with respect to employment-related works and other works. http://www.legalhelpindia.com/articles/copyright-ownership-2.html

Court asks Star not to use 'Master Chef' title for programmes

2012-01-05T11:32:00.002+05:30

A local court on Saturday retrained Star India from using Master Chef title for its various shows till further order after a Mumbai based company alleged trademark infringement.

Star India Pvt Ltd "is restrained from using publishing exhibiting telecasting television show through its channels otherwise under the trade mark Master Chef India 2 on star plus channel and Master Chef Australia and Master Chef USA on star world television channel.... till further order," Additional District and Session Judge Vimal Kumar said here in his exparte order.

The order came on a suit filed by Mumbai-based Wings Entertainment Ltd which claimed that the company in October 2010 noticed that the star plus channel had started using the trademark Master Chef India for its television show which is same/similar as the aforesaid registered trade mark Master Chef of Wings Entertainment Ltd.

The channel, the company claimed, did not stop infringement of trademark inspite of receipt of a Cease and Desist Legal Notice dated 12th October, 2010.

The company's counsel alleged that Star Plus has again infringed trademark by telecasting Master Chef India-2 from November, 2011.

After hearing the agreements, the judge directed the Star India Pvt Ltd stop using ‘Master Chef’ trade mark till further order and fixed the next date on January 6, 2012.

HC rules in favour of Indian Co in trademark copyright case

2012-01-04T13:10:00.002+05:30

The Bombay High Court has dismissed the Netherlandbased liquor group's plea, seeking to restrain Tilaknagar Industries Ltd here, from using trademarks 'Mansion House' and 'Savoy Club' on products sold in India.

Tilaknagar Industries claims to be a major player in the sale of Indian made foreign liquor in India and manufactures 40 brands, including the 'Mansion House' brandy.

UTO Nederland BV and Distilleerderji en Likeurstokerji Herman Jansen BV had filed a suit alleging that Tilaknagar Industries, by printing labels on its products, has infringed their copyright in the original artistic works.

The plaintiffs claimed that they were the registered proprietors of the trademarks 'MANSION HOUSE','MH', 'MHB' and 'SAVOY CLUB' and contended that the defendant has, by using the trademarks, passed off their products, such as alcoholic beverages, spirits and liquors as those of the plaintiffs or as emanating from or being associated with the plaintiffs.

Comparing the labels of the products sold by plaintiffs as well as the defendants, Justice S FVajifdar held in his 90-page order on December 22 that there was no similarity between them.

The literature, shape of the label and the entire get-up of the labels are different. Prima-facie, the mere depiction of the official residence of the Lord Mayer of the city of London would not constitute an infringement of copyright.

Link:

Amul and Nestle to fight for ‘A+’ mark

2012-01-03T14:37:00.002+05:30

The desi manufacturer of milk products, Amul has sued international brand Nestle for trademark violation of its brand ‘A+’. Amul was founded in 1946, and has emerged as the world’s largest diary producer over the years. Amul’s products are extremely popular and much sought after. Recently, Nestle India has launched its new dairy brand ‘a+’ in the market. Gujarat Cooperative Milk Marketing Federation (GMMFC) that markets the Amul brand has sent a legal notice against Nestle India alleging that it has infringed Amul’s trademark by passing off its similar product (Nestle A+ Milk and dahi) as those of Amul’s. Amul claims that it is the prior user of the mark A+, and has been manufacturing the said brand since one year.

Amul claims damages to the tune of 10 crores from Nestle for attempting to unjustly enrich from the goodwill that it has earned over the years. The notice also demands that Nestle should refrain from using the mark a+ as a part of its trademark label and also give an undertaking to the effect that henceforth it shall not manufacture, sell or advertise products using the mark a+. Amul strongly believes that consumers are likely to get confused between the two products as they are deceptively similar. The legal notice has been addressed to the Chairman of Nestle India stating that multinational giant is liable under the Trademark Act, 1999 and other relevant laws for infringement. The notice categorically states, “being the original and prior adopter and prior user of trade marks like A+', GCMMF and Kaira are the sole lawful proprietors of the said trade mark labels and have statutory exclusive rights of the same”.

Amul, being the largest milk producer has a substantial market share over diary products, and is definitely the most preferred brand by the consumers. That being the case, chances are likely that the utterly butterly girl tastes success over its competitor.

Link: http://www.sinapseblog.com/2011/12/amul-and-nestle-to-fight-for-mark.html

Bayer, India's Cipla settle trademark suit

2012-01-03T14:35:00.001+05:30

Bayer AG's (BAYGn.DE) healthcare unit said it settled trademark infringement cases with Indian drugmaker Cipla (CIPL.NS) and Vanuatu-based website operator Archipelago Suppliers concerning the German drugmaker's pet products.

Bayer HealthCare LLC said Cipla's DA Double Advantage pet treatment violated the trademark rights of its flea preventative, Advantage. Bayer had sought to block future sales of the product in the United States.

Under the settlement, Cipla will surrender all profits it made from the sale of its DA Double Advantage, amounting in excess of $100,000, and discontinue all use of the trademark.
Bayer received an additional $100,000 as reimbursement for attorneys' fees, and Cipla agreed to recall any product remaining in the sales pipeline.

Cipla will also stop use of the trademark 'Advance' for a companion animal product and not make any product with the same formula as Bayer's Advantix, another patented flea preventative, during the remaining term of those patents.
Website operator Archipelago agreed to a consent decree, under which it is prohibited from selling DA Double Advantage and Advantix in the United States, Bayer Health Care said.
Cipla was not immediately available for comment.

Patent loss ruins Oracle's New Year party

2011-12-30T10:45:00.001+05:30

Database giant Oracle faced a major setback in the patent litigation against Google, with USPTO rejecting some claims of patent (US6192476) which is one among the several patents that Oracle asserts against Google.

Oracle sued Google last year, claiming that the Google Android operating system uses Java Virtual machine technology and it violates a number of Java patents it acquired along with Sun Microsystems.

Google on the other hand requested the USPTO to re-examine the Oracle patent (US6192476) titled as "Controlling access to a resource”. Last week, U.S. Patent and Trademark Office rejects 17 claims out of 21 claims in patent (US6192476) and it basically means that the patent is invalid since many of the claims have been rejected. Oracle now has six months to appeal for the USPTO's decision. If it fails, then Oracle will probably be stripped of the patent.

"Patents were meant to encourage innovation, but lately they are being used as a weapon to stop it” opined Google's chief legal officer David Drummond.

Author: Raghu

LINK:http://www.sinapseblog.com/2011/12/patent-loss-ruins-oracles-new-year.html?utm_source=feedburner&utm_medium=feed&utm_campaign=Feed%3A+sinapse-indianipinfo+%28SiNApSE+blog%29

COPYRIGHT LAW: Sec. 2(m) dropped from the Copyright Amendment Bill.

2011-12-27T17:44:00.001+05:30

The Government has decided to leave out Section 2(m) from the latest version of the Copyright Amendment Bill which legalizes the parallel imports of books and other copyrighted material into India. Sec. 2(m) reads as follows: ‘Provided that a copy of a work published in any country outside India with the permission of the author of the work and imported from that country into India shall not be deemed to be an infringing copy.” It has been speculated that the government gave away to the pressure from the publisher lobbies and deleted it from the newest version of the Bill. The Parliamentary Standing Committee had earlier supported the Bill and had stated as follows: “that availability of low priced books under the present regime is invariably confined to old editions. Nobody can deny the fact that the interests of students will be best produced if they have access to the latest editions of the books.” This deletion is likely to impact the libraries and educational institutions that could import foreign copies of books without seeking permission of the copyright owner. The disabled are also not likely to be spared by the recent development, as many converted copyright material as well as books that require conversion to formats that are accessible to the disabled will not be freely available. Section 51 which allows only one copy of a book for personal use and Section 52(1)(zb) which provides for a number of activities for enabling access to the disabled do not include the right to ‘import’ any copyrighted works. Thus, it will still continue to remain difficult to buy cheapest editions anywhere in the world, without necessarily going through the publisher in India.

One More ‘John Doe Order’ by Delhi High Court

2011-12-27T17:41:00.003+05:30

As an addition to the recent series of John Doe Orders for protection of films, the Delhi High Court has issued another such order to protect the movie ‘Speedy Singhs’ in 2011. The producers of Speedy Singhs had filed the suit against a few cable operators and against unknown Defendants for a temporary and permanent injunction in order to pre-empt any copyright infringement. The Hon’ble Court has issued the order against all the prospective Defendants, including unidentified persons, restraining them from indulging in piracy and activities such as displaying, releasing, showing, uploading, downloading, exhibiting, playing the movie, etc. The order was to remain in force till December 19, 2011.

‘John Doe’ Orders are mostly seen in the American and Canadian Legal practice. The term ‘John Doe’ indicates a placeholder in legal action and is generally used as a synonym to refer to an individual whose identity is not known to the world at large. The name ‘John Doe’ is used to identify anonymous Defendants, who have allegedly committed some wrong, but whose identity cannot be ascertained by the Plaintiff. These orders can be traced back to the reign of England’s King Edward III (1312–1377), when they were used to refer to unidentifiable Defendants in law. These are representative orders against an unidentifiable class of Defendants, rather than named persons, which allow the goods to be seized. In such orders, once the Defendant(s) are identified, ‘John Doe’ is replaced with the name of the concerned Defendant.

Indian Courts visited the scope of John Doe Orders for the first time in the TEN SPORTS CASE (Taj Television vs. Rajan Mandal 2003) whereby the Commissioner was empowered by the Delhi High Court to enter the premises of any cable operator illegally airing the football World Cup 2002. The Indian version of the order is known as ‘Ashok Kumar’ orders. The High Court of Delhi had also restricted the scope of such orders in the case. The judgment in the case of Indian Performing Right Society Ltd. Vs. Mr. Badal Dhar Chowdhry and Ors (2010) stated that vague/ indefinite injunctions may not be issued and that it can be an abuse of the process of the court and hence, can never be granted. It has also stated that the courts should be extremely cautious in granting such ‘John Doe’ orders and specify the extent of applicability of such orders, the product or article concerned to which it relates to and the steps that can be taken by the aggrieved party to enforce such orders.

John Doe Orders have become quite common in the Indian film industry as an effective way to curb piracy. It is evident from the recent orders of the Delhi High Court in cases such as the movie Singham in July 2011 and the movie Bodyguard in August 2011. However, this trend awaits a Supreme Court Decision to make it a Law of the Land.