Author: Adv. Kavita Srivastav Sharan
Adv. Mittal Nor Patel

For the first time Bombay High Court addresses AI voice cloning issue while granting ex-parte ad-interim relief to singer Arijit Singh against Artificial Intelligence platforms for unauthorized / unlicensed commercial exploitation of his personality rights and moral rights. [ARIJIT SINGH V. CODIBLE VENTURES LLP AND ORS][1]

The well-known singer and celebrity, Arijit Singh sought protection of his name, voice vocal style and technique / vocal arrangement  and interpretations, manner of singing,  photograph, image, caricature and likeness, signature as protectable facets of his personality and publicity rights as he has acquired ‘celebrity status in India’. He also sought protection of his moral rights in the performances conferred upon him by virtue of Section 38-B of the Copyrights Act, 1957.

Mr. Singh learned about following infringing activities which necessitated the filing of the present suit:

1. Certain AI platforms utilized sophisticated algorithms to create audio and visual content inter-alia mimicking/reproducing the features, such as his name, voice, mannerism / manner of singing, photograph, image, likeness, persona, and other attributes of his personality.
2. One of the AI platform allowed conversion of any speech or voice recording or audio file inter-alia into Mr. Singh’s voice by using Real Voice Cloning (RVC) method. 456 songs from the Plaintiff’s repertoire are uploaded without any authority on the platforms owned and operated by the Defendants
3. One of the Defendant also uploaded a video on youtube platform promoting/advertising step wise guideline for unauthorized conversion of any text or voice recording an audio into the Plaintiff’s voice by using their AI platform
4. Certain defendants were falsely representing an association with the Plaintiff for example, one restaurant / pub hosted an event in Bengaluru, Karnataka by unauthorizedly using the Plaintiff’s  name and image for commercial gain .
5. One of the Defendant was using Singh’s photographs on merchandise sold on e-commerce websites, while another had registered domain names using Singh’s name (arijitsingh.com).
6. Certain platforms were allowing their users / members of the general public to create, store, search for and share GIFs comprising of short video recordings of Mr. Singh’s performances which also exploited his image, likeness and persona.

The Plaintiff submitted that in addition to the above, there are several entities / persons who are operating in a clandestine manner without a clear disclosure of their names, address and other details and were impleaded as Defendant as John Doe or Ashok Kumar. It was urged that the Defendants are unauthorisedly exploiting, musing the Plaintiff’s personality traits for commercial gain which jeopardizes the Plaintiff career as a performer/singer and his status as a celebrity.

The Plaintiff specifically pleaded that he has made a conscious personal choice to refrain from any kind of brand endorsement or gross commercialization of his personality traits for the past several years. He also submitted that misappropriation of any attribute of the Plaintiff’s personality traits without his express permission for a commercial purpose is liable to be restrained not only on the basis of the publicity rights namely, the exclusive right to commercially exploit one’s personality but also on the basis of the tort of dilution, more particularly, tarnishment.

It was further submitted that any unauthorized distortion, mutilation, or other modification, or dissemination of Plaintiff’s performances / voice or video recordings thereof, causing prejudice/harm to his reputation, would amount to a violation of Mr. Singh’s moral rights in his performances under Sections 38-B of the Copyright Act, 1957.

Court’s Decision

The Court held that the Plaintiff’s personality traits are protectable elements of the Plaintiff’s personality rights and right to publicity. The Plaintiff has acquired a celebrity status in India and is entitled to protection of facets of their personality. Making AI tools available that enable the conversion of any voice into that of a celebrity without his /her permission constitutes a violation of pf the celebrity’s personality rights. The Court held that “Such AI tools facilitate unauthorized appropriation and manipulation of celebrity’s voice which is a key component of their personal identity and public persona”. It observed that the manner in which the said platforms are attracting visitors by capitalizing on Singh’s popularity “shocked the conscience of the Court”. The Court opined that the Defendants have subjected the Plaintiff’s personality to potential abuse by emboldening internet users to misuse the Plaintiff’s character and identity. The Court further opined that freedom of speech and expression does not grant license to exploit a celebrity persona for commercial gain.

The Court opined that strong case has been made out by the Plaintiff for grant of ex-parte ad-interim injunction which may also operate as dynamic injunction[2]. The Hon’ble Court restrained the Defendants from using Mr. Arijit Singh’s personality rights in any form, without his consent and also directed to remove/take down/delete/block access all infringing content uploaded by them. The Court also ordered the suspension of URLs bearing the Plaintiff’s name.

The matter will be listed on 02.09.2024 for further ad-interim reliefs.

[1] (Com IPR Suit (L)/ 23443/ 2024)

[2] The definition of a ‘dynamic injunction’ as promulgated by Justice Pratibha Singh reads as “an injunction order which is not static but dynamic. This implies that though the first injunction order may be applicable only to one website, however if mirror websites are created, the injunction would dynamically apply to the said mirror websites as well”.

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Author: Adv. Kavita Srivastav Sharan
Adv.Mittal B.Nor

The Hon’ble Delhi High Court has granted ad-interim relief in favor of Dr. Reddy’s Laboratories Limited, restraining Rebanta Healthcare Pvt. Ltd. from infringing and passing off its well-known registered trademark “REBAHEAL.” The trademark is used for medicines treating peptic ulcers and mouth ulcers.

Dr. Reddy’s Laboratories Limited is the registered proprietor of the trademark “REBAHEAL” in class 3, bearing No. 5795277. They launched their product under the mark “REBAHEAL” in the market on June 26, 2023, for treating peptic ulcers and mouth ulcers.

The Plaintiff contends that upon searching “REBAHEAL” on Google, only their product appears in the search results. They argue that their mark enjoys significant goodwill and reputation in India and abroad among relevant customers such as doctors and healthcare professionals. This reputation is due to extensive use, widespread availability, prescription, and promotion.

In the last week of June 2024, the Plaintiff’s representative discovered products of the Defendant bearing the infringing mark “REBAHEAL,” used for treating pain, regulating menstruation, and repairing bone fractures. The Plaintiff asserts that the Defendant’s actions, aimed at creating deception, have blatantly copied the Plaintiff’s mark “REBAHEAL,” causing potential loss and damage to the Plaintiff’s reputation and business and diluting the distinctiveness of its mark.

Court’s Decision

The Court held that the rival marks are visually and phonetically identical, likely to deceive the general public, doctors, and chemists, thereby posing serious health risks. The Court noted that although the medicines are used for different ailments, confusion could lead to severe health implications if the wrong medicine is consumed by patients.

The Hon’ble Court also found that a prima facie case for granting interim relief is established by the Plaintiff. Therefore, the Court has restrained the Defendants from selling any pharmaceutical preparations under the disputed mark “REBAHEAL” or any other mark deceptively similar to the Plaintiff’s mark “REBAHEAL.”

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Author: Adv. Kavita Srivastav Sharan
Adv. Mittal Nor Patel

                             

In a recent appeal under the Trademarks Act, 1999 filed before the Hon’ble Bombay High Court, a significant legal challenge has been raised against the Trade Mark Registry’s purported orders for allowing applications for recordal of assignment/ transmission (i.e. application to record the subsequent proprietor of a trademark) without following the due process of law.

Electronica India Pvt. Ltd. v. Electronica Hitech Machine Tools Pvt. Ltd[1].

Brief Background:

Electronica India objected to the application made by Electronica Hitech for recording their name as the subsequent proprietor of the trademark under Section 45 of the Trademarks Act, 1999. The Trademark Registry, Mumbai approved the recordal of transmission by way of communication instead of a formal speaking Order. This approval was challenged by Electronica India in an Appeal under section 91 of the Trademarks Act, 1999 stating that they are “person aggrieved” by the impugned order.

Contentions Raised By Electronica India

Electronica India through its Counsel highlighted several discrepancies. It was argued that despite online status page of the Registry’s website indicated an Order dated 25.01.2018, however no such order was made available. Additionally, an RTI request yielded only a Communication dated 18.05.2018, rather than the order dated 25.01.2018. This communication was later uploaded as an order in the online database, bearing two different signatures. Electronica India questioned and pointed out to the Court that there is no justification orexplanation as to how multiple orders could have been passed by the Registry for the very same application for recordal of transmission.

Electronica India contended that they are not an interloper and any supposed order, assuming one exists, failed to address the objections to the recordal raised by them by their letter dated 19.01.2018. Electronica India asserted that their rights were disregarded and that Electronica Hitech had filed a false Affidavit, failing to disclose pending disputes over the trademark “Electronica.  It was pointed out that Electronica India has challenged the exclusive claim to the subject mark by Electronica Hitech in the Pune District Court Suit pending between the parties. Had these disputes been disclosed, the Registrar would be required to stay proceedings under Section 45(3) until the Courts resolved the matter.

Electronica India argued that if the Registry considered them as an interloper or thought that they did not have any locus to object the recordal of transmission, the Registry could have recorded the same in the impugned order.

 Arguments of Electronica Hitech

Electronica Hitech strongly contended that the trademark “Electronica” was registered in the name of their Erstwhile firm and the subject mark was thereafter automatically vested in them upon the firm’s conversion to a Company under the Companies Act, which constitutes transmission. It was asserted that upon conversion of a Partnership firm to a Company under Part IX of the Companies Act, all assets of the firm automatically gets transferred to and vest in the Company without requiring any additional documentation.

They relied upon decisions of the Andhra Pradesh High Court in Vali Pattabhirama Rao V/s. Sri Ramanuja Ginning and Rice Factory[2] and Hon’ble Bombay High Court in HEM Corporation Pvt.Ltd. & Ors. Vs. ITC Limited[3] to support their contention that no document is required for conversion of a partnership into a Company under part IX of the Companies Act and that the said conversion would amount to transmission by operation of law. Thus, the trademark “Electronica” registered in the name of their Erstwhile firm will automatically be vested and deemed to continue as the property of Electronica Hictech. In such circumstances, the Registrar is only required to replace the name of the erstwhile firm with the name of the Electronica Hitech on an application under Section 45 of Trademarks Act.

 

Electronica Hitech further argued that remanding the matter back to the Registrar of Trademarks could either confirm the transmission or mislead the Registrar into considering an unwarranted challenge to the trademark. It was stressed that the principles of natural justice do not mandate a rehearing, if no real prejudice has been caused, referencing to the Hon’ble Supreme Court judgement in the case of State of UP v. Sudhirkumar Singh[4] which held that procedural lapses do not automatically nullify administrative actions unless they result in significant prejudice.

Court’s Verdict

The Hon’ble Bombay High Court found no merit in Hitech’s submission that the trademark had automatically vested in them upon the firm’s conversion to a company. The Hon’ble Court held that Section 45 of the Trademarks Act, 1999 required the Registrar of Trademarks to follow the due process of law and require the Applicant to furnish evidence in proof of the title. Only upon such satisfaction of evidence, the Registrar may register the recordal of transmission and cause particulars of such assignment or transmission to be entered on the Register.

The Court held that the proceedings under Section 45 of the Trademarks Act is not merely an administrative function since Section 45 (2) r/w Rule 77 of the Trademark Rules provides that the “Registrar may require the applicant to furnish such proof of title over the concerned trademark”. The Court observed that the Registrar should have been mindful of the objections raised by Electronica India and the pending litigation between the parties on the title of the subject trademark before the Pune District Court.

The Hon’ble Court thus remanded the matter and directed the Registry to consider the applications made for recordal in Form TM -24 de-novo after granting Electronica India an opportunity to be heard and then to pass a speaking order in conformity with Section 45 of the Trademarks Act, 1999.

Appeal before the Supreme Court of India

Electronica Hitech subsequently filed an appeal before the Hon’ble Supreme Court challenging the High Court’s decision. However, the Hon’ble Supreme Court refused to interfere in the order passed by the Bombay High Court, thereby upholding the High Court’s decision to remand the matter for reconsideration and emphasizing the necessity of due process in trademark registration.

This proceeding underscores the importance of adherence to legal procedures and due process in trademark registration and the necessity for transparent and reasoned administrative decisions.

[1] 2024 SCC OnLine Bom 1144

[2] 1983 SCC OnLine AP 207

[3] 2012 SCC OnLine Bom 551

[4] 2020 SCC OnLine SC 847

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Author: Adv. Kavita Srivastav Sharan
Adv. Mittal Nor Patel

Saregama India Limited instituted a copyright infringement lawsuit with the Delhi High Court against Emami Limited, seeking to restrain the latter from using the musical and literary content of the song ‘Ude Jab Jab Zulfein’ in advertisements for its product, Emami Kesh King Shampoo without a license from Saregama.

Saregamas’Contention

Plaintiff contended that they are assignees of all works including musical, literary and sound recordings in the song Udi Jab Jab Zulfein by way of an assignment dated 17/10/1995 by the original producer (BR Films) of the film ‘Naya Daur. BR Films issued a letter dated 31/05/2007 confirming rights assigned to Saregama.

Saregama based its claims on Sections 22, 27, 51, and 55 of the Copyright Act, asserting their exclusive rights. They emphasized that their ownership was additionally affirmed by the Indian Performing Right Society Limited (IPRS) via a certificate issued on November 9, 2023.

Saregama also stated that on 26-10-2023, Emami approached Saregama seeking a license for the lyrics and musical composition of the song in question, and requested copies of documents proving Saregama’s ownership of these works. Saregama responded to the email on 31-10-2023, asking Emami for details regarding the advertisement so that an appropriate quote could be provided. Saregama indicated that the ownership documents were confidential and could not be shared with Emami at that stage, citing practical and customary reasons. Instead of responding to the email, Emami sent a letter on 08-11-2023 claiming to be in search of the rightful copyright owner of the lyrics and music composition of the song in question, and challenging Saregama’s rights. Saregama replied to this letter on 10-11-2023, reaffirming its copyright ownership and providing the IPRS certificate as evidence. Subsequently, in a letter dated 24-11-2023, Emami disregarded the IPRS letter and demanded that Saregama disclose its confidential documents.

Emami’s Arguments

On the other hand, Emami built their defense around their interpretation of the original agreement. They argued that the Agreement dated October 17, 1955, specifically granted sound recording rights exclusively to Saregama, which they claim to have expired as per Sections 26 and 27 of the Copyright Act, 1957. Emami asserts that these rights ceased 60 years after the release of “Naya Daur” on August 15, 1957, marking their expiration on August 15, 2017. Additionally, Emami questions the validity of the letter dated May 31, 2007, issued by B.R. Films, which Saregama relies upon to support their claim. Emami contends that this correspondence does not constitute an assignment agreement and, therefore, does not substantiate Saregama’s claim of ownership. Emami offered to deposit a sum of Rs. 10 lakhs without prejudice to their rights and contentions to show their bonafide as they were open to pay the license fee to the actual owner.

Court’s Decision

As an interim arrangement, the Hon’ble High Court directed Emami to deposit Rs. 10 Lakhs with the Court Registry within two weeks. Simultaneously, Saregama was directed to submit documents and an affidavit detailing the fees charged by them for licensing similar works. The Hon’ble Court observed that if after hearing the parties it is found that the amounts to be deposited should be varied, the same shall be considered by the Court.

This ruling would have a significant impact on the musical and advertising industries in India as the decision highlights the essential need to obtain the appropriate license for the use of copyrighted content in commercial setups.

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Author: Adv. Kavita Srivastav Sharan

Adv. Mittal Nor Patel

PIDILITE vs ASTRAL: Hon’ble Bombay High Court grants temporary injunction in favour of Pidilite in Design infringement Suit.

Recently on 13^th June, 2024[1], the Hon’ble Bombay High Court granted an ad interim injunction in favor of Pidilite Industries Limited (Pidilite), restraining Astral Limited (Astral) from infringing on Pidilite’s registered design of Coex plastic containers used for its M-SEAL PV SEAL products since 2019 after it transitioned from tin containers which were used since 2015. Justice Firdosh Pooniwalla stated, “the Pidilite has established a prima facie case warranting the grant of ad-interim reliefs.”

Brief background

Pidilite is India’s market leader in adhesives and sealant constituting to 70% share in Indian Markets.  It offers wide ranges of sealants under its ‘PV SEAL’ brand, which includes a pipe glue and chemical compound used for joining various types of plastic pipes. Since 2015, the Pidilite has openly, extensively, and continuously sold their M-SEAL PV SEAL products, which are distinguished by their PV SEAL labels. These products have been marketed in distinctive tin containers with unique shapes, sizes, contours, and configurations.

In 2018, the Pidilite began transitioning from tin containers to Coex plastic containers for their solvent cement products under the M-SEAL PV SEAL mark. This transition was completed upon the introduction of Coex plastic containers into the market in 2019, gradually phasing out the tin containers. As of 2023, only Coex plastic containers are exclusively used by Pidilite.

In or around 2024, Pidilite came across Astral’s containers used for solvent cement products manufactured and/or sold by them under its brand/mark ‘SOLVOBOND’ and claimed that they copied their unique design, including shape, configuration, and specific cap features of Coex plastic containers used for their solvent cement products under the M-SEAL PV SEAL mark. Pidilite thus sued Astral claiming infringement of its design, copyright and tort of passing off its goods as the goods of Pidilite. Pidilite claimed that the use of the impugned design by Astral is misleading and has the effect of deceiving the public at large.

Pidilite’s Contentions

a. Their registered design was original, novel and visually appealing to eyes

Pidilite contented that their registered design when considered as a whole, is original, distinctive and unique and has an appeal to the eye. The novelty of its design resides in the shape and configuration thereof. The ocular appeal is the definitive test of a valid design. What may appeal to one may appear bizarre to another. The corollary would therefore be that the Hon’ble Court while examining the ocular appeal of a design should not apply its own subjective standards.[2] Pidilite contended that its distinctive M-seal PV seal Container is original under Section 2(g) of the Designs Act and is first in the market to use such distinctive containers for solvent cement products. Pidilite further contented that the defense of Section 19(1) of the Designs Act raised by Astral is not applicable since there are no prior representations, containers produced by Astral are identical or similar to that of Pidilite.

b. ‘Mosaicing’ is not permissible for designs

It is settled position in law that test to consider the novelty of a design is whether the same appeals to the eye as a whole for this aspect reliance was placed on Kemp & Co. vs. Prima Plastics Limited.[3] The Pidilite’s contented that design must be assessed as a unified whole and cannot be fragmented into distinct elements. The criterion of “appeal to the eye” must be applied in evaluating the design in its entirety.

 

Astral’s contention

a. Combining selected features from different prior art publications

Astral contented that Pidilite has combined selected features from different prior art publications which is not permissible when assessing design which is claimed to be novel under the Designs Act.

b. Prior Art Publication

Astral submitted that as per search undertaken by them on internet/design registries/patent registries/market it clearly shows that the Pidilite’s subject design, as also the features thereof such as shape of the bottles, ridges on the cap and overall configuration are fully pre-empted and vitiated by prior publication in India and other countries and therefore Pidilite cannot claim  monopoly and the suit design is hit by Section 19(1)(b) of the Designs Act. Astral claimed that Pidilite’s container was disclosed prior to the making of the Design Application as a Patent Application was made on 28th September 2018 whereas the Application for registration of the design was made on 5th October 2018.

c. Mere trade variant

Astral argued that Pidilite’s design and container are hit by Section 19 (1)(c) of the Designs Act r/w Section 49 (c) as it disregards minor variations and Pidilite’s container is a mere variant of a known design and is therefore neither novel nor original.

Hon’ble Court’s Verdict

The Hon’ble Court held that Pidilite’s container when considered as whole has an appeal to eye and when considered as a whole is distinctive and unique. The cap contains a unique pattern of vertical lines and elongated ridges around the outer surface and multiples grooves below the cap connecting to the seal. The container has a distinctive unique ring. The edge of the bottle has a unique design. There are unique edges at the shoulder and bottom of the container. All these ingredients taken together do appeal to the eye. The prior art and publications presented by Astral, when compared holistically, were neither found closely resembling nor identical to Pidilite’s design as applied to its containers.

The Hon’ble Court also made it clear that Mosiacing is not permissible and cannot be a defense to infringement to a registered design. It further held that in suit for infringement, it not necessary that every aspect of design must be entirely newly concocted and unknown to the history of mankind. Section 4(c) of the Designs Act prohibits the combination of known articles but does not extend this prohibition to individual parts thereof. Therefore, even if certain elements of a design were derived from previously known articles, their use in a unique manner to create a novel article is permissible, and the entire article would constitute a new design under the law.

The Hon’ble Court noted that filing of Patent Application by Pidilite before its Design Application is inconsequential, as the design remained confidential till the time it was published on 03/04/2020 that is much later then filing of application for registration of the Design. Reference was made to Section 11(A) of the Patents Act and Rule 24 of the Patents Rules, 2000 as well as Section 16 of the Design Act.

The Hon’ble Court also rejected Astral’s argument that Pidilite’s design lacked novelty and originality. It affirmed that Pidilite’s design is validly registered and distinct from existing or known designs. The Astral failed to demonstrate the existence of any prior design or one very similar to it preceding the Pidilite’s design, or that Pidilite had merely created a trade variant.

The Hon’ble Court held that Pidilite has made out a prima facie case for grant of ad-interim reliefs in their favour and also noted that if the injunction as sought is not granted, then grave loss, harm and prejudice would be caused to the Pidilite as the Astral would then continue to use the impugned container with the design of Pidilite. The balance of convenience is also in favour of the Pidilite and against Astral. The Hon’ble Court therefore restrained and prohibited Astral from pirating or infringing Pidilite’s right in the registered design bearing No.310662 in any manner.

[1] Bombay High Court Order dated 13/06/2024 in Interim Application (L) No.13706 of 2024 in Com IP Suit (L) No. 13638 of 2024

[2] TTK Prestige Limited vs. KCM Appliances Private Limited (2023 SCC Online Del 2129), Kemp & Co. vs. Prima Plastics Limited (1998 SCC Online Bom 437)

[3] 1998 SCC Online Bom 437.

Author: Adv. Kavita Srivastav Sharan
-Adv. Mittal Nor Patel

The case of Mangalam Organics vs. Patanjali Ayurved Limited[1], pertains to the trademark and copyright infringement by Patanjali of Mangalam’s unique camphor product having a unique cone shape non-woven fabric draped packaging/ trade dress.

On 30/08/2023, the Hon’ble High Court, Bombay granted ex-parte interim relief in favour of Mangalam Organics and restrained Patanjali from manufacturing and/or selling the infringing  Camphor Cone  products. The Hon’ble Court also appointed a Court Receiver to seize the infringing Camphor Cone products. The aforesaid order was brought to the knowledge of Patanjali on 28/09/2023.

Despite the Hon’ble Court’s order, Patanjali was still supplying the impugned products and the same were also made available for sale on their website. Mangalam, therefore filed and Application under Order XXXIX Rule 2A Code of Civil Procedure, 1908 (Order 39 Rule 2A CPC, 1908) alleging wilful disobedience and breach of the Order dated 30/08/2023[2] passed by the Hon’ble Court. Mangalam filed Additional Affidavits dated 30/04/2023 and 13/03/2024 along with annexures evidencing manufacture as well as sales of “Patanjali Astha Kapoor Cone” at a Virar store. The Invoices were produced for the months of March and April along with its manufacturing date i.e. March 2024, thereby showing continues sale by Patanjali after the Order dated 30/08/2023.

On 26/06/2024, the Authorised Representative of Patanjali filed an Affidavit and apologized for alleged breach being unintentional and assured Hon’ble Court that immediate steps would be taken to stop sale of the infringing products. However, Mangalam alleged that Patanjali is in wilful breach of the said order and they are answerable for the same. Therefore, Hon’ble Court by order dated 21.06.2024[3] directed Patanjali to tender an unconditional apology by way of an Affidavit and directed the presence of the Director and Mr. Rajnish Mishra, the deponent of the said Affidavit in Reply. It also directed Patanjali to file Affidavit stating in detail sale of impugned Camphor Cone product after the said order dated 30/08/2023.

On the next date of hearing i.e on 08.07.2024, Patanjali tendered an Affidavit in Reply dated 02/06/2024 and admitted to the breach of Injunction Order dated 30/08/2022 passed by the Hon’ble Bombay High Court and tendered an unconditional and unqualified apology on behalf of Patanjali and gave an undertaking to abide the orders passed by the Hon’ble High Court at Bombay. In the said Affidavit, Patanjali admitted that there has been a cumulative supply of impugned Camphor Cone products worth Rs. 49,57,861/- to whole sellers/ distributors and authorised stores out of which stock value of Rs. 25,94,505/- is still lying with their whole sellers/distributors and authorised stores.

On the other hand, Mangalam tendered a Compilation of Document containing documents to show that the said infringing products are still available in the market and that there has been sale of the infringing products as recent as on 3^rd July, 4^th July and 8^th July. The website of Patanjali also shows that the impugned products is being offered for sale on 08/07/2024 despite Hon’ble Court’s Order dated 30/08/2023 and 21/06/2024. Mangalam contended that Patanjali did not disclose sale of the impugned Camphor products after 24/06/2024 thereby misrepresenting Hon’ble Court that the cumulative supply of impugned Camphor product is only amounting to Rs. 49,67,861/- post order dated 30.08.2023  and infact there has been supplies far in excess of this amount. Mangalam strongly pointed out to Hon’ble Court that there has been a persistent breach of the order passed by this Hon’ble Court.

Considering the admission of the Patanjali to the breach of the injunction order committed by them, Hon’ble Court held that Patanjali would necessarily have to purge the contempt of the injunction order, more so since the impugned products were still supplied as recent as on 08/07/2024. The Hon’ble Court stressed that such persistent breach of the injunction order by the Patanjali cannot be tolerated by Hon’ble Court and that it would be appropriate to direct them to deposit a sum of Rs.50,00,000/- (Rupees Fifty Lakhs Only) prior to passing of the order for contempt/ breach of the injunction order passed by Hon’ble Court.
Hon’ble Court thereafter has posted the matter on 19.07.2024 and continued the ad- interim relief granted earlier to Mangalam.

[1] Hon’ble Bombay High Court, Comm IPR Suit (L) No. 21853 of 2023
[2] Hon’ble Bombay High Court, Interim Application (L )No.2226 of 2023
[3] Hon’ble Bombay High Court, Interim Application (L )No. 4586 of 2024

Author: Adv. Kavita Srivastav Sharan & Adv. Mittal Nor Patel

Indian courts have progressively recognized and protected personality rights, even in the absence of explicit statutory provisions. These rights are derived from Article 19(1)(a) and Article 21 of the Indian Constitution, which guarantee the freedom of speech and expression and the right to live with dignity. Additionally, they are inferred from the Trademark Act, 1999, and the Copyright Act, 1957. Before the landmark Supreme Court judgment in Justice K. S. Puttaswamy (Retd.) v. Union of India[1], personality rights were primarily enforced under the common law tort of “passing off.” The 2017 judgment elevated these rights to constitutional status. Jackie Shroff’s Legal Battle for Publicity Rights.

Bombay High Court’s Ruling in Favor of Karan Johar[2]

In Karan Johar v. Indian Pride Advisory Pvt Ltd. (Com IPR Suit (L) No. 17863 of 2024), the Bombay High Court recognized the infringement of Johar’s personality rights by the Defendants, who had used his name in the film title “Shadi Ke Director Karan Aur Johar” without consent. The court, citing precedents like Anil Kapoor v. Simply Life India & Ors[3], Arun Jaitley v. Network Solutions Private Ltd. & Ors[4] and Titan Industries Ltd. v. M/s. Ramkumar Jewellers[5], granted ad-interim relief, prohibiting the unauthorized use of Johar’s name, thereby protecting his personality rights and right to privacy.

Rajat Sharma’s Injunction against Unauthorized Use[6]

In another significant case, the Delhi High Court granted an ad-interim injunction to Rajat Sharma, Chairman and Editor-in-Chief of India TV, against Ravindra Kumar Choudhary. The court prohibited Choudhary, a political satirist, from using Sharma’s photograph, video, name, or similar trademarks, such as “Jhandiya TV” and “Baap ki Adalat,” without authorization, reinforcing the protection of personality rights against commercial exploitation.

Jackie Shroff Defends His Publicity Rights against Unauthorized Use[7]

Renowned actor Jackie Shroff recently sought judicial intervention to protect his publicity and personality rights from unauthorized exploitation. His lawsuit targeted multiple defendants for the misuse of his name and trademarks in various forms, including the sale of merchandise, derogatory videos, and the operation of a restaurant named “Bhidu Shawarma & Restaurant.” The Delhi High Court, referencing D.M. Entertainment Pvt. Ltd. v. Baby Gift House[8], issued an injunction prohibiting the defendants from using Shroff’s name, image, voice, or sobriquets for commercial purposes without consent, underscoring the importance of safeguarding celebrity rights.

In conclusion, while statutory reforms may be forthcoming, the judiciary’s proactive stance has laid a foundation for the continued recognition and enforcement of personality rights in India’s legal landscape.

[1] 2017 SCC OnLine SC 996.

[2] Com IPR Suit (L) No. 17863 of 2024 (Bombay High Court)

[3] 2023 SCC OnLine Del 6914

[4] CS (O.S.) 893 of 2002 (Del.)  (2011) 181 DLT 716)

[5] (2012) 50 PTC Del 486

[6] 2024 SCC OnLine Del 4380

[7] Jaikishan Kakubhai Saraf v. Peppy Store, 2024 SCC OnLine Del 3664

[8] (2010) SCC online Del 4790

Delhi High Court Upholds AMUL’s Trademark Dominance: A Landmark Victory in Brand Protection

In a landmark decision on April 8, 2024, the Delhi High Court delivered a significant victory for Kaira District Co-operative Milk Products Union Ltd (the Petitioner) against D N Bahri, trading as Veldon Chemical and Food Products (the Respondent), in case C.O. (Comm.IPD-TM) 165/2023[1]. The court ordered the removal of the Respondent’s mark “AMUL” (Device) bearing no. 1182469 under class 32, aligning with the Petitioner’s request to rectify the Register of Trade Marks.

The Petitioner, widely known as the powerhouse behind India’s beloved dairy brand, “AMUL,” challenged the Respondent’s registration under class 32, which covers non-alcoholic drinks, including mineral and aerated waters. The Petitioner’s argument hinged on the fact that “AMUL,” an acronym for Anand Milk Union Ltd, was declared a well-known trademark by the Intellectual Property Appellate Board in 2011. With numerous registrations in various classes, such as 05, 29, 30, and 31, and a legacy dating back to 1956, the Petitioner emphasized its longstanding and widespread reputation.

Contrarily, the Respondent asserted their use of the “AMUL” mark for beverages since December 1957, filing for registration in March 2003. However, the Petitioner argued that the Respondent failed to substantiate this claim, presenting only a single label without any supporting documents. The Petitioner cited the IPAB’s decision in M/s. F K Bearing Machinery Co. Ltd v. M/s. Modern Machinery Stores, highlighting the Registrar’s duty to examine the Register thoroughly.

The Respondent contended that their use of “AMUL” in a different product category and prior to the Petitioner’s application in 1998 should protect their registration. They also claimed that “AMUL” is a generic term derived from the Hindi word ‘Amulya.’ Additionally, they referenced the Supreme Court’s ruling in Nandini Deluxe vs Karnataka Cooperative Milk Producers Federation Limited [2], arguing that a manufacturer cannot monopolize an entire class without bona fide intent to trade in all its articles. The Respondent also noted that the Petitioner did not object during their mark’s registration process.

In a compelling rebuttal, the Petitioner asserted that their class 32 registration remained valid, emphasizing that the Respondent had not sought its removal. They maintained that their diverse product range includes non-alcoholic drinks, reinforcing their claim.

Justice Anish Dayal of the Delhi High Court meticulously examined the arguments. He concluded that the Petitioner had established grounds for rectification under section 47, as the Respondent failed to demonstrate continuous use of the “AMUL” mark since 1957, presenting only a solitary label as evidence. The Court held that the mark ‘AMUL’ had acquired immense, undiluted, and enduring significance, making it clearly identifiable as the source of the Petitioner’s goods. Its protection would therefore transcend all classes, having been declared a well-known mark. The Judge noted the Petitioner’s earlier application for class 32 in 1998, predating the Respondent’s 2003 application by over five years. He stressed the Registrar’s responsibility to consider earlier registrations across various classes, as mandated by rule 33.

Consequently, the Court found that sections 11(1) and 11(2) of the Trade Marks Act were applicable, justifying the removal of the Respondent’s mark. The potential for passing off under section 11(3)(a) was also acknowledged. The Court allowed the rectification petition and ordered the removal of the Respondent’s mark from the Register, with directives to be executed within four weeks.

[1] 2024 SCC OnLine Del 2550
[2] (2018) 9 CC 183

 

-Adv. Kavita Srivastav Sharan

-Adv. Mittal Nor Patel

S.K Srivastav and Co.
Advocates & Solicitors
Tel: (022) 2267 4729
Email: sks@srivastavandco.com
Web: www.srivastavandco.com / .in

Author: Adv. Kavita Srivastav Sharan
First Published by:-IP LINK AISA

In a recent Judgment High Court, Bombay declared INTERNATIONAL SOCIETY FOR KRISHNA CONSCIOUSNESS (ISKCON) as well known Trademark in India. In the year 1966 Late Acharya, His Divine Grace A. C. Bhaktivedanta Swami Parabhupada started the Krishna Consciousness Movement in New York, USA in the name and style of “INTERNATIONAL SOCIETY FOR KRISHNA CONSCIOUSNESS” (commonly known by the acronym ISKCON).

ISKCON filed a suit before the Hon’ble High Court, Bombay seeking permanent injunction against ISKCON Apparel Private Limited for infringing its trademark ISKCON and sought a declaration that the trade mark ISKCON is a well-known trademark in India.

ISKCON submitted that that the acronym ISKCON was derived and/or adopted from its own name i.e. I from International, S from Society, K from Krishna and CON from consciousness. It submitted that there are more than 600 ISKCON temples, 65 Eco farm communities, 110 vegetarian restaurants and centres all over the world including in India. It was submitted that the mark ISKCON has been regularly openly, continuously, uninterruptedly and extensively using the mark ISKCON in respect of the various goods and services since at least the year 1971. It also owns the domain name and/or website www.iskcon.org which is operational since the year 1994 and has secured registrations of various other domain names. It further submitted that ISKCON is no longer restricted to any particular goods/ services/ activities but pertains to a diverse range of category and enjoys a personality that is beyond the scope of mere products/ services rendered under the trademark ISKCON.

The Court observed that the word ISKCON is a coined trademark that is to say that the same does not exist prior to its adoption and use by the Plaintiff and is associated exclusively with them and it deserves the highest degree of protection. On the basis of the material placed on record, the Court opined that the Plaintiff’s trademark ISKCON satisfies the requirement and test of a well-known trademark as contained in Section 11(6), 11(7) and other provisions of the Trademark Act, 1999 and declared ISKCON as a “well-known” trademark in India within the meaning provided in section 2(1)(z)(g) of the Trademarks Act 1999.

By Adv. Gaurav Srivastav, Bombay High Court

1. Mandatory sentences and minimum mandatory sentences as punishment in law has been commonly prescribed by the legislatures worldwide. However, recently the judiciary across the world have developed a tread towards its Constitutional commitment of proportionality in punishment with the actual crime committed. The Apex Courts of several countries such as Cananda, USA, Australian, South Africa and also the European Court have struck down mandatory life imprisonment and/or minimum mandatory sentences. Canadian Courts have actively struck down minimum mandatory sentence and recently a 9 Judges bench in R. v. Safarzadeh_Markhali, 2016 SCC 14, reiterated its Constitutional commitment for proportionality in sentences. The Supreme Court of United States which had actively struck down mandatory death sentence since early 20th Century have recently in Miller v. Alabama, 132 S.Ct. 2455 (2012) by 5:4 judges ratio struck down imposition of mandatory life sentence for juveniles for being violative of the Eight Amendment. Similarly, the European Court have on several occasions struck down mandatory life imprisonment by applying the “grossly disproportionate test,” few recent cases are Harkins and Edwards v. United Kindom , 2012 ECHR 45 and Murray v, Netherlands, 2016 ECHR 408. Even in Australia, which does not have a Bill of Rights or Constitution, like Canada, USA or India, has struck down minimum mandatory punishment for infringing the principle of separation of power; a recent example can be found in Magamiing v. The Queen, (2013) 253 CLR 381.

2. This Article explore the constitutional validity of the pre and post constitutional Statues in India which provides for Mandatory sentences and minimum mandatory sentences and power of the Judiciary to award punishments dehors the Statutes. This can be broadly explored by attempting to explore the following issues:
(i) Does mandatory sentences and/or minimum mandatory sentences for an offence infringes the principle of Separation of Power embodied in the Constitution of India?
(ii) Can mandatory sentences and/or minimum mandatory sentences for an offence be said to grossly disproportionate to the actual crime committed if it will be cruel, unusual or excessive and / or if such punishment will not serve any penological purpose and thus violative of Article 14 & 21 of the Constitution of India.
(iii) Can an alternative punishment or a minimum mandatory punishment for a particular offence also be unconstitutional for being grossly disproportionate to the actual crime committed or for being cruel, unusual or excessive or for infringing the principle of Separation of Power?

I. Separation of Power between the Judiciary and the Legislature is one of the basic structure of the Constitution of India and any attempt by the legislature to fix a single, specific and mandatory punishment will be per say arbitrary

3. Apart from the crime, the accused and the angle of the crime from the point of view of the accused and other mitigating factors are an important aspect while deciding the period of sentence. Few examples of such relevant factors relating to the accused can be his (a) prior criminal record, (b) his age, (c) the actual crime committed, (d) educational background, (e) human life, (f) sobriety & social adjustments, (g) emotional and mental condition, (h) prospect of his returning to the normal patch in conformity with the law while deciding the quantum of sentence. (i) blameworthiness of the offender; (j) the harm caused by the crime (k) the degree of guilt of the accused and its relation with the length of imprisonment (l) the personality characteristics of the offender, (m) the peculiar circumstances of the case, (n) the conduct of the accused in those circumstances (o) the intention or lack of intention to commit the crime. It is the duty of the Court to balance these factors along with other mitigating factors and award an appropriate sentence. However, if no discretion is given to the Courts, the Courts will have no option other than to completely ignore these factors.

4. Thus it can be argued that it is impossible for the legislature to think of or prescribe an exact punishment or take into account various factors of the crime, the specific facts of the accused, interest of society at large quo the specifications of a given case, and other relevant factors which cannot be put in any straitjacket formula;

5. Thus when the legislature only fixes one punishment which is mandatory in nature then these aspects would be completely ignored by the legislature and a single, specific and mandatory punishment of life imprisonment without any alternative punishment, which is prescribed solely at the will of the legislature, who does not have the adequate determining principles to determine as to what would be a proportionate sentence in the fact of a given case;

6. Moreover, a single, specific and mandatory punishment does not even provide an appropriate structure or yardstick of punishment by prescribing a minimum and maximum period of imprisonment, giving the Judiciary some room of discretion to determine the appropriate sentence after judicially examining all aspects and factors relating to the crime and the accused.

7. The Legislation has traditionally in all the provisions of the Indian Penal Code as well as any other Penal Statutes have provided a structure of punishment to run in between the minimum and maximum period of imprisonment as it deemed that only the Judiciary is fit to take into consideration every relevant factors, mitigating or aggregating, relating to a given case and pass a proportionate sentence within that parameters. Even for the most heinous crimes, the Parliament has in all statutes provided alternative punishments.

8. It is the judiciary which is the only institution who is fully and appropriately equipped with the necessary knowledge of law, experience and infrastructure to study the details of each case based on the legally acceptable material evidence and after applying the legal principles and guidelines of exercise of discretion from judiciary pronouncements. More so when the judiciary has not even given an alternative option which it may award taking into account such mitigating factors.

9. It has been reiterated in a series of judgements by the Supreme Court, that the Court has to award a punishment which is proportionate to the crime committed. The Code of Criminal Procedure specifically provides for wide discretionary powers to the judge once the conviction is determined in S.235, S.248, S.325, S.360 and S.361. It is for this reasons that a fix set of sentencing guidelines is not yet a part of Indian criminal jurisprudence and exercise of judicial discretion within the guidelines evolved by judicial precedents has been the traditional criminal system in Indian and sentencing proportionate sentences has essentially been a function of the judiciary, which has a direct link with the public confidence in the judicial system.

10. Any law depriving the judiciary from its discretion in awarding a proportionate sentence and mandating it to pass an award as required by the legislature is equal to passing a decision without any reasons, without hearing the aggrieved party or any other violation of the fundamental principles of judicial process. This by itself will be in the teeth of Article 14 of the Constitution of India.

11. It can thus certainly be stated that the Judiciary is the only Organ of the State which should determine the sentences and if the power of the Court to award lesser punishment is take away by the Legislature then it will infringe the principle of separation of power which form a basic structure of the Constitution of India.

12. Mandatory sentences and/or minimum mandatory sentences can be said to grossly disproportionate to the actual crime committed if it will be cruel, unusual or excessive and / or if such punishment will not serve any penological purpose and thus violative of Article 14 & 21 of the Constitution of India.

13. Article 21 of the Constitution of India has been interpreted by various judgments of the Supreme Court to incorporate the Eighth Amendment (1791) to the Constitution of the United States, which was virtually incorporated from the English Bill of Rights (1689). The Eighth Amendment which has been now read into as being a part of Article 21 of the Indian Constitution reads as follows:-
”Excessive Bail shall not be required nor excessive fines imposed, nor cruel and unusual or excessive.”

14. In other words, the Eighth Amendment provided that no person shall be subjected to a punishment which is grossly disproportionate to the actual crime committed nor shall it be subjected to any punishment which can be recorded as cruel or unusual or excessive.

15. The 8th amendment though may not require the Court apply strict proportionality between the crime and the sentence in every case but only for cases where the sentence prescribed seems grossly disproportionate;

16. This principle that the punishment should be proportionate to the offence is recognized as a fundamental principle in jurisdictions worldwide and the Court in every jurisdiction have held that this principle of proportionality is applicable to sentence of imprisonment as much as it applies to capital sentence. Therefore, even a single day in prison may be held to be disproportionate in certain circumstances ;

17. Whether a sentence of imprisonment is a disproportionate to the offence allegedly committed by the Accused the Court must look into (a) gravity and magnitude of the offence and the harshness of the punishment, (b) the sentence imposed on other criminals in the same jurisdiction, (c) the sentences imposed for commission of the same crime in other jurisdictions, (d) whether similar crimes are subjected to same or lesser penalties (d) whether there is a legitimate aim or compelling reason for such a drastic measure, (e) whether such a drastic measure is suitable to achieve the aim, (f) what is the decree of evidence which is required to achieve such a drastic measure, (g) whether there can be any less onerous way of achieving the legitimate aim or whether the drastic measure is the only way to achieve the aim, (h) whether such a drastic measure is reasonably considers the competing interest of different groups, (i) blameworthiness of the offender; (j) the harm caused by the crime (k) the degree of guilt of the accused and its relation with the length of imprisonment (l) the personality characteristics of the offender, (m) the peculiar circumstances of the case, (n) the conduct of the accused in those circumstances (o) comparison of the said conduct with other offenders (p) the intention or lack of intention to commit the crime (q) whether a particular offender deserves to be rehabilitated or (r) whether the public needs to be protected from a particular offender.

18. Similarly, if no penological purpose is served by the punishment or the penological purpose of the punishment can effectively achieved with a lesser punishment i.e. a lesser period of imprisonment then it clearly establishes disproportionality. Deterrence, Retributive, Incapacitation, Reformative/rehabilitative theory and/or absolute deterrence or utilitarian theory are the relevant penological theories.

19. The Constitution bench in Mithu V/s State of Punjab, (1983) 2 SCC 277 has struck down a similar provision which prescribed mandatory death penalty without any alternative whatsoever for being violative of Article 14 and 21 of the Constitution of India. Similarly, The Hon’ble Supreme Court of India in the matter of Dadu V/s. State of Maharashtra, (2000) 8 SCC 437 and State of Punjab V/s. Dalbir Singh, (2012) 3 SCC 346 have struck down similar provisions which denied judicial discretion in awarding sentences.

20. The Hon’ble Supreme Court in the matter of Sharaya Bano V/s Union of India reported in (2007) 9 SCC 1 while considering Mithu’s case (supra) held that in Mithu’s case, the provision prescribing mandatory death sentence was not only struck down on the ground of violating Article 21 of the Constitution of India but was also struck down on the ground of it being manifestly arbitrarily and violative of Article 14 of the Constitution of India.

21. Whether alternative punishment or a minimum mandatory punishment for a particular offence can be unconstitutional for being grossly disproportionate to the actual crime committed or for being cruel, unusual or excessive or for infringing the principle of Separation of Power?

22. The real controversy arises when the legislature has provided an alternative mandatory punishment for example life imprisonment in alternative to death sentence and/or when legislature has provided a structure of punishment to run in between the minimum and maximum period of imprisonment.

23. Thus whether the Judiciary is compelled to sentence the minimum mandatory punishment i.e. either mandatory life imprisonment, which is in alternative to death sentence or the mandatory specified number of years of imprisonment, which is the minimum punishment for a particular offence if even the Judiciary does not want to?

24. When the legislature prescribes such minimum / alternative mandatory sentence, by literal interpretation, the Judiciary will be compelled to award the only alternative punishment or the minimum punishment prescribed by the legislature even when after considering various factors, which were not available to the legislature, the Court in its discretion would have preferred a lesser sentence. In other words, does the Judiciary stands completed deprived of its discretion if an alternative or minimum mandatory punishment is prescribed by the Legislature ?

25. The Supreme Court in Vikram Singh v. Union of India, (2015) 9 SCC 502 while considering challenge to the award of death sentence for an offence under Section 364-A IPC, considered various decisions on the issue of punishment. It considered some American decisions holding that fixing of prison terms for specific crimes involves a substantive penological judgment which is properly within the province of legislatures and not courts and that the responsibility for making fundamental choices and implementing them lies with the legislature and conduced as under:
“52.2. Prescribing punishments is the function of the legislature and not the courts.

52.3. The legislature is presumed to be supremely wise and aware of the needs of the people and the measures that are necessary to meet those needs.

52.4. Court show deference to the legislative will and wisdom and are slow in upsetting the enacted provisions dealing with the quantum of punishment prescribed for different offences.”

26. The case of Vikram Singh, (2015) 9 SCC 502 was recently considered by the Constitution Bench in Union of India v. V. Sriharan, (2016) 7 SCC 1 in the descending opinion of Lalit J & Sapare J. The relevant portions are reproduced as below:
50. Having thus noted the relevant provisions in the Constitution, the Penal Code, the Criminal Procedure Code and the DSPE Act, we wish to deal with the questions referred for our consideration in seriatim. The first question framed for the consideration of the Constitution Bench reads as under: (V. Sriharan case [Union of India v. V. Sriharan, (2014) 11 SCC 1 : (2014) 3 SCC (Cri) 1] , SCC p. 19, para 52)
52.1. Whether imprisonment for life in terms of Section 53 read with Section 45 of the Penal Code meant imprisonment for rest of the life of the prisoner or a convict undergoing life imprisonment has a right to claim remission and whether as per the principles enunciated in paras 91 to 93 of Swamy Shraddananda (2) , a special category of sentence may be made for the very few cases where the death penalty might be substituted by the punishment of imprisonment for life or imprisonment for a term in excess of fourteen years and to put that category beyond application of remission?

27. The Minorty held as under:
“273. Section 302 IPC prescribes two punishments, the maxima being the death sentence and the minima to be life sentence. Shraddananda (2) [Swamy Shraddananda (2) v. State of Karnataka, (2008) 13 SCC 767 : (2009) 3 SCC (Cri) 113] proceeds on the footing that the Court may in certain cases take recourse to the expanded option, namely, the hiatus between imprisonment for 14 years and the death sentence, if the facts of the case so justify. The hiatus thus contemplated is between the minima i.e. 14 years and the maxima being the death sentence. In fact going by the punishment prescribed in the statute there is no such hiatus between the life imprisonment and the death sentence. There is nothing that can stand in between these two punishments as life imprisonment, going by the law laid down in Godse case [Gopal Vinayak Godse v. State of Maharashtra, AIR 1961 SC 600 : (1961) 1 Cri LJ 736 : (1961) 3 SCR 440] is till the end of one’s life. What Shraddananda (2) [Swamy Shraddananda (2) v. State of Karnataka, (2008) 13 SCC 767 : (2009) 3 SCC (Cri) 113] has done is to go by the practical experience of the life imprisonment getting reduced to imprisonment for a period of not more than 14 years and assess that level to be the minima and then consider a hiatus between that level and the death sentence. In our view this assumption is not correct. What happens on the practical front cannot be made basis for creating a sentence by the courts. That part belongs specifically to the legislature. If the experience in practice shows that remissions are granted in unsound manner, the matter can be corrected in exercise of judicial review. In any case in the light of our discussion in answer to the question in para 52.6, in cases of remissions under Sections 432/433 CrPC an approach will necessarily have to be made to the Court, which will afford sufficient check and balance.”
“277.Shraddananda (2) [Swamy Shraddananda (2) v. State of Karnataka, (2008) 13 SCC 767 : (2009) 3 SCC (Cri) 113] does not proceed on the ground that upon interpretation of the provision concerned such as Section 302 IPC, such punishment is available for the Court to impose. If that be so it would be available to even the first court i.e. Sessions Court to impose such sentence and put the matter beyond any remissions. In a given case the matter would not go before the superior court and it is possible that there may not be any further assessment by the superior court. If on the other hand, one were to say that the power could be traceable to the power of confirmation in a death sentence which is available to the High Court under Chapter XXVIII CrPC, even the High Court while considering death reference could pass only such sentence as is available in law. Could the power then be traced to Article 142 of the Constitution?”

“280. Further, in theory it is possible to say that even in cases where court were to find that the offence belonged to the category of the “rarest of rare” and deserved death penalty, such death convicts can still be granted benefit under Sections 432/433 CrPC. In fact, Section 433-A contemplates such a situation. On the other hand, if the court were to find that the case did not belong to the “rarest of rare” category and were to put the matter beyond any remissions, the prisoner in the latter category would stand being denied the benefit which even the prisoner of the level of a death convict could possibly be granted under Sections 432/433 CrPC. The one who in the opinion of the court deserved death sentence can thus get the benefit but the one whose case fell short to meet the criteria of the “rarest of rare” and the court was hesitant to grant death sentence, would languish in jail for the entirety of his life, without any remission. If absolute “irrevocability of death sentence” weighs with the court in not awarding death sentence, can the life imprisonment ordered in the alternative be so directed that the prospects of remissions on any count stand revoked for such prisoner. In our view, it cannot be so ordered.”

28. However, the majority opinion of the Constitutional Bench held as under:
“178. We hold that the ratio laid down in Swamy Shraddananda (2) [Swamy Shraddananda (2) v. State of Karnataka, (2008) 13 SCC 767 : (2009) 3 SCC (Cri) 113] that a special category of sentence; instead of death can be substituted by the punishment of imprisonment for life or for a term exceeding 14 years and put that category beyond application of remission is well founded and we answer the said question in the affirmative.”

29. This article does advocates that if a special category of punishment can be created to put the put the punishment of imprisonment for life or for a term exceeding 14 years beyond application of remission then similarly the Judiciary can create a special category of punishment below the minimum mandatory punishment be it a specific number of imprisonment or life imprisonment as alternative to death sentence for the reasons stated below.

30. A legislation which compels the judiciary to implement any government or legislative policy or determination by confining the court’s adjudicative process without following the ordinary judicial process deprives the judiciary of its independent and impartial character. This effectively amounts to letting members of the executive or the parliament to determine the quantum of sentence for particular offenders.

31. The principle of separation of power as applied to the criminal justice system serves the purpose of reducing this risk of arbitrary exercise of power by any arm of the government including the legislature. The legislature enacts laws relating to crime and provide guidelines for appropriate sentences for persons who commit such crimes. The executive enforces these laws and it is the judiciary that determines whether or not a person is guilty, whether the persons has been accorded procedural fairness, and what punishment the offender should receive for committing the crime.

32. Exercising power to sentence a person in confinement for his or her entire life is the highest form of power in existence and it must be only exercised when justified according to the traditional criminal system i.e. by the judiciary after reviewing the details of each case based on the legally acceptable material evidence and after applying the legal principles and guidelines of exercise of discretion from judiciary pronouncements.

33. It can thus certainly be stated that the Judiciary is the only Organ of the State which should determine the sentences and if the power of the Court to award lesser punishment is take away by the Legislature then it will infringe the principle of separation of power which form a basic structure of the Constitution of India.

34. This issue after the decision of Vikram Singh, (2015) 9 SCC 502 was no longer res integra, where the Supreme Court answered the same in Negative. However, after the decision of the Constitution Court in Union of India v. V. Sriharan, (2016) 7 SCC 1 the issue has possibly reopened and infact the Supreme Court has held that the Judiciary can create a different category of punishment de hors the statute.