#copyright Archives - Prime Legal

25 Oct

Restraining Order Stopping Anyone From Using Similar Mark As Tobacco Company AFZAL: Delhi High Court

Prime Legal

Uncategorized #copyright, #Restraining Order, #Tobacco, #trademark

Title: Sopariwala Exports & Ors. Versus Ashraf V

Citation: CS(COMM) 259/2021

Decided on: 09.10.2023

Coram: Hon’ble Mr. Justice C. Hari Shankar

Introduction:

The current matter in hand is regarding the use of trademark AFZAL, Sopariwala Exports has the right to iuse the trademark as well as through trademark agreement license to use the trademark was given to other 3 others. Defendant on the other hand is using the mark AFSAL in kerala without obtaining the trademark registration.

Facts:

The plaint alleges that the defendant has infringed the plaintiffs’ registered trademarks as well as its copyright registration and is also, by using a deceptively similar trademark and a deceptively trade dress, seeking to pass off its product as the product of the plaintiffs. As the product is chewing tobacco, it is submitted that additional vigilance is required to be exercised in order to ensure that such attempts at infringement do not go unchecked.

The defendant is using the mark AFSALs and it is are phonetically nearly identical to the mark of the plaintiff, that is AFZAL. And it is added that It has to be remembered that the aspect of confusing or deceptive similarity has to be viewed from the perception of the consumer of average intelligence and imperfect recollection.

The visual similarity between the rival marks in the present case, coupled with the phonetic similarity between “Afzal” and “Afsals”, especially when viewed from the perspective of a consumer of chewing tobacco, clearly discloses the intent of the defendant to adopt the mark which is, phonetically as well as visually, as alike to the plaintiffs’ mark as possible.

Court’s Judgment and Analysis:

Court passed a decree of permanent injunction restraining defendant as well as all others acting on its behalf from using the trademark “AFSALs” or any marke similar to plantiff’s. The defendant shall also be restrained from adopting any trade dress which is deceptively similar and which would, therefore, infringe the copyright held by the plaintiffs in the aforesaid trade dress.

“PRIME LEGAL is a full-service law firm that has won a National Award and has more than 20 years of experience in an array of sectors and practice areas. Prime legal fall into a category of best law firm, best lawyer, best family lawyer, best divorce lawyer, best divorce law firm, best criminal lawyer, best criminal law firm, best consumer lawyer, best civil lawyer.”

Written by: Sushant Kumar Sharma

Click here to view judgement

24 Oct

High Court of Delhi Grants Injunction To Rogue Websites Infringing The Exclusive Right In Broadcasting And Telecasting ‘Bigg Boss’ Show

Prime Legal

Blog #copyright

Title: VIACOM18 MEDIA PRIVATE LIMITED v. BIGGBOS.LIVE & ORS.

Decided on: 12th October 2023

CS(COMM) 730/2023, I.A. 20182/2023, 20183/2023, 20184/2023, 20185/2023

Coram: JUSTICE PRATHIBA M. SINGH

Introduction

The Delhi High Court has granted ex-parte injunction against illegal streaming of the reality show ‘Bigg Boss’. The order came to be passed in an application filed under Order 39 Rules 1 & 2 CPC by leading broadcaster Viacom18 Media Pvt. Ltd..

Facts of the Case

Viacom18 Media Private Limited is a leading broadcaster, who has filed a suit seeking protection of rights including reproduction rights in the programme ‘Bigg Boss’ in all formats, against Defendant Nos.1 to 5 who are the streaming and downloading websites. ‘Bigg Boss’ is a reality show, which is based on the format of international Dutch show ‘Big Brother’ in which the rights are owned by M/s Endemol Shine IP BV. The show revolves around a number of participants and their interpersonal relationships, who live isolated in a particular premise. The Plaintiff has obtained the format rights for this program from M/s Endemol Shine IP BV, for Bigg Boss Hindi seasons 17 and 18. Endemol Shine IP BV has given the exclusive license of the format to the Plaintiff for Bigg Boss Hindi seasons 17 and 18, scheduled to be broadcasted from 15th October, 2023 and Bigg Boss Kannada Seasons 10 to 12 as also Bigg Boss Marathi seasons 5 to 8. The Plaintiff broadcasts these programs on the television channels Colors and Colors Kannada as also on its OTT platform ‘JioCinema’.

The Plaintiff owns the rights in the format of the show having been licensed the same from M/s Endemol Shine IP BV. In addition, in the original broadcast, the Plaintiff owns the cinematographic rights as also the broadcast reproduction rights. The Defendants are currently running the websites wherein previous seasons and programs of Bigg Boss are being made available in an unauthorized and non-licensed manner for viewing. The domain name of the Defendants are also registered in the name of Bigg Boss. These Defendant websites work through the mode of Video-On-Demand (VOD), where users are required to first register and then subscribe and make payment to access the unauthorized content which is hosted, streamed etc. The websites are also advertising the next two seasons, which are going to be produced and telecasted on the Plaintiff’s platform, contending that the same would also be launched on these websites. The apprehension of the Plaintiff is that the Defendants are going to make a monetary dent on the Plaintiff’s business. Even permitting the recordings of the programs of the new seasons, which are yet to be launched on their platforms would cause gross violation of the copyrights of the Plaintiff and thus they have requested for the grant of injunction against the said domain websites.

Court Analysis and Decision

It is observed that the Bigg Boss program enjoys enormous popularity even in India and the unauthorized and illegal dissemination of the Bigg Boss programs would be clear infringement of the Plaintiff’s copyright of broadcast and reproduction rights. If such mushrooming of websites is permitted, it would boost piracy and unatuhorised dissemination causing heavy losses to the Plaintiff who have obtained the rights in the said programme after making considerable investment. The Plaintiff’s OTT channel Jio cinema is also a subscription platform and if the illegal websites are permitted to unauthorizedly telecast these programs, the subscription base of the Plaintiff is also likely to be jeopardized. Considering the overall facts Court was convinced that the Plaintiff has made out a prima facie case of ex- parte injunction. Irreparable loss will be caused to Plaintiff if the Defendants are not restrained from illegal and unauthorized broadcasting of the Plaintiff’s show BIGG BOSS. Accordingly, the Defendant Nos.1 to 5 are directed to refrain from broadcasting, telecasting, streaming, retransmitting and hosting any episodes of the Bigg Boss program, which have already been telecasted or which are likely to be telecasted in near future. The domain names of the websites (as Bigg Boss) shall be suspended immediately by the DNRs, to whom the Plaintiff would communicate the exact domain name details to the Grievance Officer of the said DNRs. The DoT- Defendant No.15 and MeitY- Defendant No.16 must issue blocking orders against the websites. If any further websites with the name Bigg Boss or any other websites telecasting illegally, an application can be filed impleading these websites as parties under Order 1 Rule 10 CPC, 1908, along with an affidavit before the Joint Registrar showing evidence that these are rogue websites infringing the Plaintiff’s exclusive right in broadcasting and telecasting Bigg Boss show. It was ordered that the injunction accordingly extended to those websites as well and such affidavit, domain names shall also be suspended. Court directed all ISPs to comply with the blocking orders and the DNRs to give details of the registrants of the impugned domain names.

Written by- K R Bhuvanashri

click here to view judgement

19 Oct

The Brand SEVEN HOURS using the branding similar to RED BULL’S allowed to dispose of the allready produced cans subjected to the payment of Rs.13 Lakhs to Red Bull: HIGH COURT OF DELHI

Prime Legal

Blog # patent, #copyright, #delhi, #energy Drink, #Red Bull

Title: RED BULL AG V ROHIDAS POPAT KAPADNIS & ANR.

CS(COMM) 512/2023 & I.A. 20372/2023

Decided on: 16/10/2023

Coram: Hon’ble Ms. Justice Pratibha M. Singh

Introduction:

In the present case, Plaintiff is the energy drink company RED BULL, aggrieved by the Defendant’s adoption of an identical silver and blue colour combination for identical energy drinks. The Defendants are manufacturing and marketing the said energy drink under the mark ‘SEVEN HOURS’.

Facts:

The dispute is regarding the use of the silver and blue colour combination by the defendant for their identical energy drinks. The defendant is manufacturing and marketing the said energy drink under the mark ‘SEVEN HOURS’. Mr. Anirudh Bakhru, the plaintiff’s counsel submitted that in past, the colour combination of blue and silver for energy drinks has been protected by the courts in various orders. The marks of the plaintiff include ‘RED BULL’, ‘BULL’ , the double BULL device, single BULL device as also the blue and silver colour combination in a trapezial design. The case of the plaintiff is that the blue and silver colour combination in the distinctive layout and arrangement is exclusively associated with the plaintiff.

On the same case previously an ex parte injunction was granted on 1st August, 2023 and a Local Commissioner was also appointed directing seizure and defendant was told to deposit Rs. 3 Lakhs to Registrar general of the court. The Defendants have moved this present application for further consideration. It is the submission of the Defendants that unfilled cans are also quite expensive and the Defendants have been selling these products since 2021.

Court’s Analysis and Judgement:

The Court sated that the defendant has been using the cans for last 2 years so they can be given the permission to fill the unfilled cans and sell the same, during usual course of business, But this approval is subjected to the condition of paying Rs.10 Lakhs addition to the previous Rs.3 Lakhs to the plaintiff for the loss faced by them.

After this no further products shall be sold by the Defendants under the infringing marks and labels except the filled and unfilled cans which were seized by the Local Commissioner. The unfilled cans which have been seized, shall be released in favour of the Defendants, which were given to them on superdari basis, in the presence of a representative of the Plaintiff. Further the court held that Defendant’s trademark applications bearing nos. 5683132 and 5598032 shall stand withdrawn. The Registrar of Trademarks shall reflect the same on its website within four weeks from receipt of the order.

Written By : Sushant Kumar Sharma

Click here to view judgement

16 Oct

Delhi High Court Restrains manufacturing & selling of ‘GOOD TIME BUTTER COOKIES’ or any other mark which is identical or deceptively similar to the popular mark ‘GOOD DAY BUTTER COOKIES’

Prime Legal

Blog #copyright, #trademark

Title: BRITANNIA INDUSTRIES LIMITED v. AMAR BISCUIT PRIVATE LIMITED & ORS.

Decided on: 12th october 2023

CS(COMM) 728/2023, I.A. 20158/2023, 20159/2023, 20160/2023

Coram: JUSTICE PRATHIBA M. SINGH

Introduction

The Delhi High Court has restrained the sale of biscuits under the mark “Good Time” or “Good Time Butter Cookies” and any other mark which is deceptively similar to Britannia’s Good Day biscuits. The order was passed in favour of Britannia considering that it is a well reputed brand selling “Good Day Butter Cookies” since a very long time as also other products under the said trade mark and trade dress.

Facts of the case

The Britannia Industries Limited has filed suit against Amar Biscuit Pvt. Ltd. and its promoters i.e., Defendant Nos. 1 & 2 to 4, from manufacturing to selling butter cookies under the mark ‘‘Good Time’ which has an almost identical packaging. The Plaintiff is one of the leading manufacturers and sellers of biscuits, crackers and various other food items under the trademark ‘Good Day’ which was adopted by the in 1986. The Plaintiff company itself is a 100 year old company of India dealing with various food products since 1918. The Plaintiff’s revenue for the financial year 2022-23, crossed over Rs.16,000 crores. It also has significant presence on online platforms such as Facebook, Twitter, Instagram and YouTube with thousands of followers.

The subject matter of the present case is the ‘Good Day Butter Cookies’ product which was launched in the year 1986. Around 1997 a distinctive packaging for the product was adopted. It is averred that the packaging has always been in the colour combination of blue and yellow, with cookie being shown in a specific form. Over the years Plaintiff has made minor modifications in the trade dress, however the essential and prominent features of it were retained. Plaintiff claims that the said packaging of ‘Good Day Butter Cookies’ is not merely a trademark label which is entitled to protection but is also an artistic work in which the Plaintiff enjoys copyright. They claim that the sale of ‘Good Day Butter Cookies’ for the financial year 2022-2023 is Rs.1889 crores and the advertisement and promotional expense for the said product is around Rs.137 crores. The Plaintiff recently learned from one of the consumers, who put a post on platform X (Twitter), about the Defendants adoption of the infringing trade mark and dress ‘Good Time’ bearing the same color combination of blue and yellow, realising this misuse as of 6th October, 2023, the Plaintiff has filed the suit.

Court Analysis and Decision

According to the court, by their very nature, butter cookies are products which are purchased by children, literate and illiterate people across urban and rural areas. The enormous turnover of the Plaintiff for the Britannia ‘Good Day’ cookies leaves no doubt in the mind of the Court that the said packaging and product achieved enormous recognition and goodwill in the market. Any attempt to imitate the name, the mark or the packaging would have to be stopped immediately in as much as the consumers are likely to get confused between the two sets of products. Considering that these are food products any chances of confusion has to be completely avoided.

Considering the overall facts, the Judge is convinced that the Plaintiff makes out a prima facie case for grant of an ad interim injunction. Balance of convenience also lies in favour of the Plaintiff considering that it is a well reputed brand selling ‘Good Day Butter Cookies’ since such a long time, as other products under the said trade mark and trade dress. If an ad interim injunction is not granted it would cause irreparable loss or harm to the Plaintiff. as the Defendants’ packaging is deceptively similar to that of the Plaintiff’s, causes confusion to the customers. Court observed that Defendants’ are taking a piggy-back ride of the Plaintiff’s goodwill and reputation in identical business.

Accordingly, till the next date of hearing, all the Defendants and others acting on their behalf are directed to restrain from manufacturing, selling, offering for sale butter cookie biscuits or any other products in the infringing packaging which is under the name ‘Good Day Butter Cookies’ or any other mark which is identical or deceptively similar to the Plaintiff’s mark ‘Good Day/ Good Day Butter Cookies’. Court has ordered the Defendants to remove any online listings of the product within 48 hours and to place a stock statement of the material bearing the impugned mark & packaging, on the next date.

Written by- K R Bhuvanashri

click here to view judgement

5 Oct

Bombay High Court’s Landmark Wynk vs. Tips Judgment: A Game-Changer for Digital Music Platforms

Prime Legal

Blog #bombayhighcourt, #copyright, #Intellectualproperty, #music

Wynk Ltd v. Tips Industries Ltd

CORAM : G.S.Patel & Gauri Godse, JJ

Decided on: 20th October 2022

Introduction

The Bombay High Court ruled down a major judgement in the case of Wynk vs. Tips, which has enormous consequences for the Indian music business. The court found in favour of Tips Industries Limited, a well-known record label, stating that online music streaming and downloading platforms are not eligible for reduced obligatory licences under Section 31D of the Copyrights Act. This blog will provide a description of this landmark decision and its potential implications for the music streaming business.

Facts of the case

Wynk filed a claim under Section 31D of the Copyright Act of 1957. Wynk acknowledged that the Copyright Board/Intellectual Property Appellate Board (which was still in existence at the time) had not yet established rates. Acknowledging this, Wynk consented to pay the first installment of royalties of Rs.10 lakhs. It appears to have concluded (on its own, by all accounts) that royalty should be paid at 10 paise per stream, totaling approximately Rs.1.41 crores from September 2016 to November 2017. Wynk issued Tips an demand draft for this sum.

Courts analysis and Decision

The Wynk vs. Tips case revolved around accusations of copyright infringement filed by Tips Industries against Wynk Music, a famous music streaming network operated by Bharti Airtel. Tips Industries claimed that Wynk Music was selling copyrighted music without legal licencing and demanded monetary damages for copyright infringement. The court had to decide whether Wynk Music was entitled to the benefits of a discounted compulsory licence under Section 31D.

The Copyright Act’s Section 31D addresses the statutory licencing of audio recordings and musical compositions for broadcasting organisations. It enables broadcasting organisations to make sound recordings and musical works available to the public for a charge without the need for specific licences from copyright holders. This provision aims to make it simpler for broadcasting organisations to use copyrighted music and sound recordings while additionally guaranteeing that copyright holders are fairly compensated.

The following are the key findings and major impact to the industry:

No Discounted obligatory Licences: The court ruled that online music streaming and downloading sites, such as Wynk Music, are not qualified for discounted obligatory licences under Section 31D of the Copyrights Act. Section 31D allows broadcasters to communicate copyrighted works to the public for a price without obtaining individual licences, but it excludes internet platforms from this benefit.
The importance of licencing agreements between music streaming companies and copyright owners was emphasised by the court. It was noted that Wynk Music had not obtained the required licences for the music it was offering, and hence could not benefit from Section 31D.
Copyright Protection for owners: The Bombay High Court’s decision strengthens the rights of copyright holders, such as record companies like Tips Industries. It states that online music platforms must secure adequate licences and are not permitted to use cheap compulsory licences to decrease their licencing expenses.
Compliance with Licencing Agreements: This judgement emphasises the significance of strict compliance with licencing agreements for music streaming companies. It serves as a reminder that platforms must follow legal standards and get licences in order to prevent claims of copyright infringement.
The decision may cause changes in the business models of streaming music services in India. Platforms may need to rethink their music acquisition and licencing policies, which could have an influence on their activities and price structures.

Written by: Shivanshi Singh

Click here to view your Judgement

1 2