Delhi High Court reiterates rules of comparative advertisement
The Delhi High Court dismissed an injunction application by Tata Sons Private Limited (Tata) against Puro Wellness Private Limited (Puro) regarding Puro’s TV commercial for its product ‘Puro Healthy Salt’. While dismissing Tata’s application, the Court reiterated the principles applicable for the determination of disparagement in comparative advertisement scenarios.
As for the facts, the commercial complaint by Tata did not directly refer to Tata’s white salt products but referred to certain negative aspects of white salt in general. In that context, Puro made several positive assertions about Puro’s salt which is pink in colour, natural, unbleached with no additives, and better for health than white salt. However, Tata sought an injunction claiming that Puro’s commercial is an example of class disparagement of white salt on the basis that it owns 34% market share in the white salt category. Interestingly, Tata also sells pink salt by describing it as completely natural and free of any chemicals or additives.
The Court analyzed the various judicial precedents on the subject to determine the issues and reiterated the basic principle that any form of advertisement, including comparative advertisement allows extolling of one’s own product. However, while puffing up its product, the advertisement should not resort to misleading or incorrect representations of fact. What needs to be seen to establish disparagement is when there are objectionable comments being made about the rival’s product. A plaintiff cannot maintain an action for disparagement against a commercial which makes no direct/indirect reference to the plaintiff, merely on the ground that it is a majority player in the market. The Court noted that in this case, Tata is deriving negative inferences regarding its salt from the positive assertions in the commercial and thereby, an action for injunction cannot be maintained
The Court also took note of a 2019 order by the Division bench of the Delhi High Court involving the same parties and the same products except that in that case there was a direct reference by Puro’s commercial to Tata’s white salt. While a Single Judge granted relief to Tata, the appellate bench reversed the order. The case is currently lying in appeal before the Supreme Court.
Referring to the 2019 order, the Court further remarked that it would amount to judicial inconsistency for it to adopt a contrary view to that of the Division bench by granting an injunction. The Court also pointed to the fact that Tata concealed from the Court that it also has a pink salt product which Tata itself promotes as a healthy alternative to white salt.
In short, the Court held that the commercial is well within the boundaries of what is permissible in comparative advertising.
Maintainability of Divisional Applications – Delhi High Court gives a Clear Verdict
The maintainability of a divisional application in India has always been a subject of interpretation. Recently, a two-judge (Division) Bench of the Delhi High Court, provided clarity on this matter in the case of Syngenta Limited versus Controller of Patents and Designs, delivering a binding and pivotal precedent.
Section 16 of the Patent Act, 1970, deals with the subject of divisional applications. Under the section, a divisional application may be filed by the applicant voluntarily or to remedy an objection raised by the Controller of Patents and Designs that the claims of an application relate to more than one invention.
The crux of the issue that the Division Bench decided in its judgement, is whether the claims of the divisional application ought to be derived from the claims of the parent application whose claims relate to multiple distinct inventions or can they also be derived from the related specification.
In December 2005, Syngenta Limited (Syngenta), a leading agriculture company, made an application to the Controller in respect of its invention relating to an agrochemical concentrate. There were 14 claims in this application. In September 2011, Syngenta filed a divisional application. Thereafter, the parent application was granted a patent in May 2012.
Subsequently, in February 2013, the divisional application was published and an examination report was issued which followed up with a hearing. The Controller, basing the decision on the interpretation that the plurality of inventions must be present in the claims of the parent application, refused the divisional application in October 2017.
Aggrieved by the refusal order, Syngenta filed an appeal at the Delhi High Court. However, by the time, Syngenta’s appeal could come up for hearing, the Delhi High Court had already decided on the issue in question in Boehringer Ingelheim International GMBH v. The Controller of Patents (Boehringer case).
In the Boehringer case, the Court had decided that the invention claimed in the divisional application should be derived from the claims of the parent application which relate to plurality of distinct inventions. The position had earlier been examined and held so by the erstwhile IPAB in a previous case, ESCO Corporation v Controller of Patents & where the IPAB had decided that a patent application can only be divided, if it claims more than “one invention“.
In the Boehringer case, the Court had relied on the doctrine of patent law i.e., ‘what is not claimed is disclaimed’ and emphasized that since the claims of the divisional application were not part of the claims of the parent application, the applicant had lost the right to claim them. The Court had also ignored the phrase “file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first-mentioned application” in Section 16(1). The Division Bench did not accept the interpretation accorded to Section 16 in the Boehringer case and did not subscribe to the view adopted by the Single Judge in the earlier judgement in the Syngenta case.
On the question of the doctrine of patent law i.e., ‘what is not claimed is disclaimed’, the Division Bench said that this doctrine may be relevant for infringement analysis but, it had no application to the subject of divisional filing and claim drafting. The Court referred to the opinion given by Lord Russel in Electric and Musical Industries Ltd. Et al vs. Lissen Ltd. et al.
Overruling the judgement given in the Boehringer case, the Court held that a divisional application in terms of Section 16 of the Act would be maintainable provided the plurality of inventions is disclosed in the provisional or complete specification that may have been filed. The Court said that irrespective of the divisional application being filed suo moto or on the instance of an objection raised by the Controller, the plurality of inventions would have to be tested based upon the disclosures made in either the provisional or complete specification.
The landmark judgment by the Division Bench of the Delhi High Court in the Syngenta case has provided a pivotal precedent on the maintainability of divisional patent applications. By overruling the decision of the single judge of the same Court in the Boehringer case, the importance of the entire patent specification, not just the claims, in determining the presence of multiple inventions, is clarified. This clarity will likely influence future patent applications and litigations, ensuring a more consistent and transparent approach to divisional patent filings.
Delhi High Court Calls for Regulation of Patent and Trademark Agents
In early September, the Delhi High Court, while passing a judgement in the case, Saurav Chaudhary v Union Of India & Anr., emphasised the need to regulate or supervise the functioning of patent and trademark agents (agents) in India.
This emphasis came in light of a writ petition filed by the petitioner, Saurav Chaudhary, challenging the abandonment of his patent application and praying for its restoration.
The subject patent application was being handled by a firm in Delhi, and the agent was allegedly non-responsive after filing Request for Examination (RFE), despite multiple reminders sent to enquire about the status of the patent application. Subsequently, the application was deemed to be abandoned due to non-filing of a response to the First Examination Report (FER).
Noting that the entire case hinges upon various emails sent by the petitioner to his patent agent, the Court directed one of the patent agents of the firm to submit an affidavit stating all the facts and correspondence held with the petitioner after filing of the patent application.
Highlighting the responsibility of the ‘agents’ of adhering to deadlines and attending to the matters diligently, the Court reflected that a supervisory or regulatory authority over the ‘agents’ is the need of the hour. Towards this, the Court directed the Central Government Standing Counsel (CGSC) to obtain instructions from the office of Controller General of Patent, Design and Trademark (CGPDTM) in order to monitor, regulate and supervise the functioning of the ‘agents’.
With this, the Court took one step ahead towards building a robust mechanism for regulating the functioning of the Indian Patent Office. It will be interesting to see the reply from the office of CGPDTM on next date of hearing.
Delhi High Court Grants Interim Relief in AJIO Trademark Money Scam
Reliance Industries Limited (Reliance) claims to be the largest retailer in India in terms of revenues. It has outlets offering food, groceries, apparel, footwear, toys, home-improvement products, electronic goods, and farm implements. It owns the business-to-consumer (B2C) e-commerce platform www.ajio.com which was launched in 2016 along with a corresponding mobile app ‘AJIO’. Reliance claims that ‘AJIO’ is one of the most popular brands in India, supporting this assertion with information that they have three million customers and numerous downloads of the mobile app.
The genesis of the instant case, Reliance Industries Limited & Anr. v Ajio Online Shopping Pvt. Ltd. and Ors., involved an elaborate scam wherein Reliance and its AJIO brand were at the receiving end of the scam. AJIO Online Shopping Pvt. Ltd (Ajio online), falsely claiming association with Reliance using the AJIO mark, deceived the public with letters and scratch card coupons, suggesting they had won substantial prize money.
These letters further claimed that in order to claim the cash prize, the recipients must make payments of advance government taxes and processing fees. In some versions of the scam, the perpetrators also made the recipient deposit INR 5000 (~USD 60) and claimed that once the deposit was made, they would be able to encash the scratch card to the tune ranging from INR 7, 50, 000 (~USD 9000) to INR 10, 00, 000 (~USD 12000). The employees of Reliance received some of these letters.
Reliance’s investigations uncovered that the individuals were conducting fraud through various mobile numbers and bank accounts. Accordingly, Reliance filed a suit against the perpetrators, Ajio Online’s banks, telecom service providers, the Department of Telecom, and unidentified parties involved in the scam.
Reliance sought restraint orders against the fraudulent persons/ company from using the mark AJIO in any manner and sending any further communication using the said mark. Further, they also sought an order to freeze the relevant bank accounts and block the mobile numbers used in the fraudulent operations.
The Court observed that this was a large-scale operation carried out by unscrupulous individuals with the intention of collecting money under the name AJIO. It noted that owing to the familiarity and reputation of the AJIO name and brand, it would be natural for consumers to believe that the communications were genuine.
Accordingly, the Court found it to be a fit case for grant of an ex-parte injunction and passed the following orders against the Ajio online and the other defendants:
- Injunction restraining Ajio Online from using the mark AJIO or sending any further communication seeking money including into any new bank accounts that they may open in future;
- Freeze the bank accounts associated with the scam;
- Block all the mobile numbers provided and to place on record all available documentation regarding the identity of the registrants; and
- Issue blocking orders against all phone numbers making them non-operational with immediate effect.
Furthermore, Reliance was allowed to move an application should they identify any new numbers or bank accounts. Making an exception from the usual norm, the Court also ordered that Ajio Online be served the suit papers through the available mobile numbers. On Reliance’s application, the Cyber Cell, Delhi Police was directed to investigate the issue to identify exact details of the perpetrators, to investigate the entire matter and provide a status report by the next date of hearing urgently and expeditiously.
In an age of sophisticated online scams being perpetrated by numerous parties using famous brands, the wide-ranging orders passed by the Court in this case would certainly pave the way for coming up with more stringent and up to date laws and regulations to overcome this persistent issue.
Delhi High Court grants ex parte orders against personality rights violation
Anil Kapoor (‘Kapoor’) is a well-known actor from the Mumbai film industry with a career spanning nearly 40 years. He has appeared in over 100 films and endorsed several brands. Kapoor is also known in the Mumbai film industry to have popularised the Marathi language slang word, ‘Jhakaas” (roughly translated to English as ‘fantastic’) with his unique delivery of the same. Kapoor claims that the same has become synonymous with him.
In September 2023, the Delhi High Court granted an ex parte injunction order in Kapoor’s favour and against multiple defendants (‘the defendants’). The crux of Kapoor’s claim in the suit was that the defendants violated his personality rights, violated his copyrights in movie dialogues, and were guilty of passing off, unfair competition, and dilution. Kapoor claimed in the suit that the defendants are unauthorizedly using his name, image, likeness, voice, personality, and other aspects of his persona to create merchandise, make false endorsements, and make morphed images by employing tools such as artificial intelligence for commercial purposes. The merchandise created ranged from mobile phone wallpapers and stickers to cups, T-shirts, suits, and key chains. Some of Kapoor’s images were used to make cartoon characters and to upload pornographic images of Kapoor with other actors. His voice and dialogues from movies were also used to make ringtones and ring-back tones The defendants were also guilty of registering domain names using Kapoor’s name. Kapoor alleged that the defendants in a manner were utilizing several features of his persona and misusing the same in malicious ways and were earning monetary benefits out of the same.
Having heard Kapoor’s arguments, the Court issued notice to the defendants and made the following observations:
- While free speech in respect of a well-known person is protected in the form of right to information, news, satire, parody, and criticism, when the same crosses a line, and results in tarnishing their image, blackening or causes jeopardy to the individual’s personality, or attributes associated with the said individual, it would be illegal;
- Using a person’s name, voice, dialogues, and images in an illegal manner, that too for commercial purposes, cannot be permitted;
- The celebrity’s right to endorsement, being one of their major sources of livelihood cannot be destroyed by permitting unauthorized merchandising activities;
- Technological tools such as AI, freely available today, make it possible for anyone to produce or imitate a celebrity’s persona. Use of the persona in a dark or grim manner, as portrayed on porn websites or morphed along with other actors in videos and images is not merely offensive or derogatory to Kapoor, but also to the third-party celebrities and actors involved;
- There is no reason why the domain names in Kapoor’s name that have been registered by the defendants be allowed to be squatted upon;
- Kapoor’s name, likeness, image, and persona deserve to be protected, not only for Kapoor’s own sake but also for the sake of his family and friends who would not like to see his image, name, and other elements being misused, especially for such tarnishing and negative use, which are actionable torts;
Accordingly, the Court restrained the defendants from:
- Utilizing Kapoor’s name, likeness, image, voice, personality or any other aspects of his persona to create any merchandise, ringtones, ring back tones, or in any other manner misuse the said attributes using technological tools such as AI, machine learning, deepfakes, face morphing, GIFs, either for monetary gains or otherwise to create any videos, photographs, for commercial purposes resulting in a violation of Kapoor’s rights;
- The defendants who were domain name registrars were directed to immediately lock and suspend the domain names www.anilkapoor.in, www.anilkapoor.net and www.anilkapoor.com. Additionally, they were directed to inform Kapoor of the respective registrants of these domain names; and
- The Department of Telecommunications and the Ministry of Electronics and Information Technology were also directed to issue blocking orders in respect of all these links and any other links, which may upload pornographic videos of Kapoor.
Delhi High Court allows trademark rectification on the sole ground of bad faith adoption
On April 27, 2023, the Delhi High Court allowed a rectification petition (BPI Sports LLC v. Saurabh Gulati & Anr.) filed by BPI Sports LLC (BPI) against a local defendant, Saurabh Gulati (Gulati), solely on the basis of the ground of bad faith adoption.
Delhi High Court reaffirms the basis for assessing the patentability of computer-related inventions (CRI)
With the popularisation and growth of the metaverse and, of course, the proliferation of non-fungible tokens (NFTs), the world of luxury goods is expanding into digital spaces.
Versace, Tommy Hilfiger and McDonald’s are some of the brands that are already securing their trademarks for NFT-authenticated virtual goods, seizing the opportunities of the virtual world. Additionally, these brands are also exploring new branding opportunities in the metaverse, as demonstrated by Gucci’s opening of Gucci Town – a virtual space on Roblox, with a consumer base of more than 200 million.
NFTs’ growth raises a common question: how do they intersect with intellectual property rights, especially trademark protection? This article provides some pointers on navigating the tricky terrain of protection of trademarks by examining some of the guidelines emerging from the trademark offices of the US, Europe and the UK.
Kolkata High Court Rules GUI Capable of Design Registration in India
In UST Global (Singapore) Pte Ltd v The Controller of Patents and Designs and Anr, the Kolkata High Court set aside the order passed by the Assistant Controller of Patents and Designs (Controller). The Court held that the Controller’s refusal to grant design protection for UST Global (Singapore) Pte Ltd. (UST) GUI design of “Touch Screen”, a new surface ornamentation, was unsustainable. The Court ordered the Controller to consider the matter afresh and provide an opportunity to UST for a hearing.
On September 4, 2019, the Controller rejected the design registration for UST’s ‘touch screen’ GUI, stating that a GUI is only visible when the device is activated, and thus cannot be considered a design for an article. The Controller had also noted that GUIs are primarily created through software development, not industrial manufacturing processes.
Challenging the Controller’s order, UST appealed before the High Court on December 6, 2019, arguing that this order is erroneous as GUI is a software, an intellectual property, and an article of value, and hence capable of registration. Further, UST added that the design is original and has never been in the public domain. UST also added that GUI is a 2D design that is visible as soon as the display is turned on, without the need to touch the device vis-à-vis the design. Additionally, UST stated that a well-implemented GUI can positively influence customers in buying such products.
The Court agreed to the observations submitted by UST and further added that the process of application of the subject design i.e., GUI on the finished article is a mechanical and manual process that falls within the definition of “industrial process”. In support of this, the Court held that a software developer creates a source code for a GUI, which is embedded in micro-controllers and micro-processors and is displayed on the screen by electronically illuminating pixels. Therefore, the design is applied to the article by an industrial process and means. The Court considered the following judgments while dealing with the appeal:
- Gramophone Company Ltd. v Magazine Holder Company (1910) 27 R.P.C. 152;
- P. Ferrero and CSPA’s Application (1978) RPC 473;
- Re: Apple Computer Inc.’s Design Applications [2002] F.S.R. 38; and,
- K.K. Suwa Seikosha’s Design Application [1982] R.P.R. 166.
The Court passed the order on March 20, 2023, and directed the Controller to reconsider the matter afresh within three months from the order and provide an opportunity for UST to be heard.
This first-of-its-kind order deals with the design registration of GUIs in India. Orders like these give the confidence to file design registrations for GUIs in India.