In a significant judgment dated December 4, 2024, the Hon’ble Bombay High Court granted interim relief to Castrol India Ltd. in a copyright infringement case against social media influencer Mr. Gaurav Taneja, popularly known as “Flying Beast.” The Court’s ruling highlights the importance of protecting intellectual property in brand collaborations and underscores the legal obligations of influencers in such arrangements.

The Dispute

The case revolved around Castrol’s innovative “Castronomy” marketing campaign, designed to showcase the brand’s technological contributions to space exploration. The campaign featured a unique zero-gravity flight experience, meticulously planned and financed by Castrol, to promote its cutting-edge technologies. Influencer Mr. Gaurav Taneja was invited to participate in the campaign to create promotional content.

However, the Plaintiff alleged that Mr. Taneja failed to deliver the agreed upon content, refused to execute a formal Term Sheet, and instead uploaded videos and photographs from the campaign to his social media accounts without authorization. The uploaded content omitted any references to Castrol or the campaign, undermining the Plaintiff’s branding efforts.

Court’s Observations

Mr. Justice R.I. Chagla ruled in favor of Castrol, making several key observations. The Court noted that Castrol had borne all costs associated with the campaign, including the chartered zero-gravity flight and associated logistics. It held that Castrol, as the Producer and first Owner of the campaign’s cinematographic content under the Copyright Act, 1957 was entitled to full protection of its intellectual property. Reference was made to the judgment in Ramesh Sippy v. Shaan Ranjeet Uttamsingh, affirming Castrol’s rights as a Producer of the copyrighted material.

The court found that Mr. Taneja had unauthorizedly exploited the content, referred to as the “Impugned Content” by sharing it publicly without approval. Furthermore, the Defendant’s deliberate omission of any references to Castrol’s brand or campaign in the uploaded materials was seen as a clear breach of trust and legal obligations.

Relief Granted

In its interim order, the Court upheld Castrol’s exclusive copyright over the campaign content, affirming the Company’s ownership and legal protection under the Copyright Act, 1957. The Court directed Mr. Taneja to immediately remove all unauthorized content, including videos and photographs, from his social media platforms. Furthermore, it restrained Mr. Taneja and his associates from reproducing, sharing or using the campaign material in any form without Castrol’s explicit permission. The Court scheduled the next hearing for 20th February 2025 to review compliance with its orders and consider any additional reliefs sought by the Plaintiff.

Conclusion

The Hon’ble Bombay High Court’s decision to uphold Castrol India’s copyright rights highlights the sanctity of intellectual property and the growing legal scrutiny in influencer marketing. By protecting Castrol’s investments and creative efforts, the Court has set a robust benchmark for resolving disputes in the rapidly evolving digital landscape. This case serves as a reminder of the legal protections available to brands and the responsibilities influencers bear in maintaining the integrity of collaborative campaigns.

Click here to view Order.

Bombay High Court imposed cost of Rs.50,00,000/- (Rupees Fifty Lakhs Only) on Premier Stationery Industries Pvt. Ltd. & Ors. in a Contempt Petition for willful and deliberate disregard and disobedience to its Order dated 13/07/2017 in a trademark and copyright infringement Suit

On 21/04/2017, the Petitioner, Pidilite Industries Ltd. filed Suit against the Respondent-Premier Stationery Industries Pvt. Ltd. & Ors. for trademark, copyright and design infringement of their well-known mark and their rights in  FEVICOL MR Artistic Work, distinctive design  FEVICOL MR Bottle and FEVICOL Glue Pens and for tort of passing off.

By Order dated 13.07.2017, the above Suit was disposed of in terms of the consent terms and the undertaking contained therein were accepted as undertakings to the Hon’ble Court and the Respondent Nos. 1 & 2 submitted to the decree of the Court.

In or about August 2020, the Petitioner learnt that the Respondents have re-commenced use of the impugned trade dress/ label and colour scheme which was a substantial reproduction of essential features of the Petitioner’s FEVICOL MR Artistic Work and its distinctive FEVICOL MR Bottle and FEVICOL MR Glue Pens in flagrant violation of the Final Order dated 13.07.2017, Consent Terms and undertakings given to the Hon’ble High Court.

The Petitioner upon coming across of such contemptuous actions of the Respondent Nos. 1 & 2 addressed letter dated 05.08.2020 and called upon them to cease and desist from violation the Final order and Consent Terms dated 13.07.2017. The Respondent Nos. 1 & 2 replied to the said letter contending that they were not in violation of the Final Order of the Hon’ble High Court.

Pursuant to the Contempt Petition filed by the Petitioner, the Respondent Nos. 1 & 2 filed their Reply stating that they had sold their business and their asset to M/s. Premier Stationery Industries (Respondent No. 3), sole propriety firm owned by Mr. Rajinder Puri Goswami, husband of Respondent No. 2. M/s. Premier Stationery Industries and by Mr. Rajinder Puri Goswami were impleaded as Respondent Nos. 3 and 4 by way of amendment to the Contempt Petition. The Respondent Nos. 3 and 4 were not parties to the
Suit.

Petitioner’s submission

The Petitioner submitted that though Respondent Nos. 3 & 4 were not parties to the Suit, they were aiding and abetting the Respondent Nos. 1 & 2 in committing contempt of Court. The Respondent Nos. 1 & 2 attempted to circumvent the Final Order of the Hon’ble Court and continued wrongful activities through Respondent Nos. 3 & 4. It was submitted that the Respondents are jointly and severally liable for the contempt of the Court’s Order.

The Petitioner also submitted that relationship of the Respondents is conveniently suppressed in the Affidavit in Reply filed by the Respondents in the Contempt Petition with a view to mislead the Court and obstruct the administration of justice. The counsel for the Petitioner also contended that the relationship of Respondent No. 2 being wife of Respondent No. 4 is borne out from Board Resolution of the Respondent No. 1. Petitioner also argued that it is fit case to apply the doctrine of lifting the corporate veil. It was submitted that the conduct of the Respondents possess a “dual character of contempt of Court” (i) by aiding and abetting each other and especially Respondent Nos. 1 & 2         (ii) for directly being responsible for violating the Court’s Order and knowingly interfering and obstructing in the administration of justice. Reliance was placed on the Hon’ble Supreme Court decision Sita Ram v. Balbir[1] wherein the Supreme Court recognized the dual character of contempt of Court by a third party.

The Petitioner also submitted that in reply of the Respondents to the cease and desist notice is self-destructive as Respondent Nos. 1 & 2 have admitted to being responsible for the manufacture/ sale of the impugned products.

The Counsel appearing for the Petitioner also submitted that the Respondents have neither tendered apology nor unconditional apology and there is neither remorse nor regret on part of the Respondents for their wrongful acts and that strict action should be taken against the Respondents for their contumacious act.

Respondent’s Submissions

The Respondent submitted that Respondent Nos.s1 & 2 have in 2017 sold all the assets, machineries, products to a proprietary concern Respondent No. 3, M/s. Premier Stationery Industries owned by Respondent No. 4 Mr. Rajinder Puri Goswami who is husband of Respondent No. 2. It was also contented that Respondent Nos. 1 & 2 have filed on record their income tax returns for Assessment Year 2019-2020 and 2020-2021 which show that total income of Respondent No. 1 was zero. Respondents claimed that they have not committed any breach of the Consent Terms. Respondent Nos. 3 & 4 also submitted that they were not aware of the Consent Terms and as also they were not party to the Suit in which the Consent Terms was executed and, therefore are not bound by the same.

Court’s Decision

The High Court held that the contention of the Respondent Nos. 3 & 4 that they were not aware of the Consent Terms or Final Order cannot be accepted as their relationship with Respondent Nos. 1 & 2 is evidently established through documents on record. Court also noted that the Respondent Nos. 1 & 2 have made false statements on Affidavit that they have ceased their business of manufacturing and/or sale of the impugned product. Hon’ble Court also noted that the Respondents have failed to offer apology let alone an unconditional apology. The Hon’ble Court rejected the submission of the Respondents that since Respondent Nos. 3 and 4 were not parties to the Suit and the Consent Terms, they are not liable. It held that the Courts powers under Section Article 215 of the Constitution of Indian r/w Contempt of Court Act r/w Section 151 of the CPC in not only wider than but is also independent of any rights of the parties inter se in any execution proceedings. The Court held that “The Respondents have failed to offer any apology let alone an unconditional apology and which is evident from their lack of remorse or regret on their part for their wrongful acts and/or wilful disobedience of the Courts Orders.  It is well settled that the Court ought not to allow its processes to be set at naught and/or breach of its Orders by parties such as the Respondents and strict action ought to be taken against the Respondents for their malafide conduct”.

The Court held that the Respondents have committed wilful contumacious contempt of court, it would be necessary for the Respondents to purge their contempt by penalizing them. Accordingly, the court ordered that the Respondents shall jointly and/or severally pay to the Petitioner an amount of Rs.50,00,000/- (Rupees Fifty Lakhs Only) within 4 weeks and failure on part of the Respondents to comply with the order would result in Respondents being taken in custody and detained for period of two weeks in Civil Prison namely, Arthur Road Jail, Mumbai.

Click here to View Order

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”.

Click here to View Order

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.”

Click here to view the Order

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

Click here to view Order

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.

Click here to view Order

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