Trade Marks Rules, 2017
Some of the key changes introduced by the Trademark Rules, 2017 (‘TM Rules 2017’), which have come into force on March 6, 2017 and replace the erstwhile Trademark Rules, 2002 (‘TM Rules 2002’), are as follows:
i. For the first time, a mechanism has been introduced enabling brand owners to file an application with the Registrar for determination of a trademark as ‘well-known’;
ii. TM Rules 2017 specifically provide for the registration of a sound mark;
iii. Definition of ‘opposition’ has been amended to include opposition not only in relation to a pending trademark application, but also opposition to alteration of a registered trademark and opposition to the grant of protection to an international registration designating India;
iv. Where use of a trademark is claimed prior to the date of application, the applicant is required to file an affidavit testifying such use along with supporting documents;
v. Official fees for trademark registration have been increased substantially; however, concessions have been provided to small enterprises, startups and individuals, and to e-filings;
vi. Expedited processing of a trademark application has been provided for, including examination and other proceedings such as processing responses to the examination report, show cause/hearings, publications, and oppositions;
vii. Video conferencing is provided for, to enable hearings and email has been permitted as a means for service of documents ;
viii. The number of adjournments that a party can ask for has been limited to a maximum of two and the adjournment period has also been limited to a maximum of 30 days; and
ix. New provisions have been included for trademark registration through the Madrid Protocol in relation to the Madrid Agreement Concerning the International Registration of Marks.
Delhi High Court on Permissibility of Photocopying of Text Books for Preparing Course Packs
A Division Bench (‘DB’) of the Delhi High Court, by its judgement dated December 9, 2016 in the case of Chancellor, Masters & Scholars of the University of Oxford & Ors v. Rameshwari Photocopy Services and Ors, disposed the appeal filed by the publishers against the order passed by the Single Judge on September 16, 2016. The DB held that photocopying of copyrighted materials for preparing course packs would be a permissible activity and would not constitute infringement so long as such copying was for purposes of educational instruction. The DB reaffirmed the following findings of the Single Judge on substantive points of law: (i) utilisation of the copyrighted work would constitute fair use to the extent justified for the purpose of education, irrespective of the quantity of reproduction; (ii) “course of instruction” under Section 52(1)(i) of the Copyright Act, 1957 was not limited to a lecture in a class room and extends to various acts of imparting instruction; (iii) reproduction of works under Section 52(1)(i) can be made by an intermediary, i.e., a photocopier, and need not be limited only to reproduction by a teacher / pupil; (iv) course packs will not adversely impact the market of the publishers since students are not potential customers; and (v) distribution of course packs would not amount to “publication” as the element of profit was missing in such publication.
The DB, however, partially overturned the judgment of the Single Judge and remitted the matter to the trial court for a fact specific determination of whether: (i) inclusion of the copyrighted works in the course packs was justified by the purpose for which course packs are prepared, i.e. for instructional use; and (ii) whether photocopying of entire textbooks (copied back to back) would be a permissible activity. This issue arose from the findings of the local Commissioner’s report highlighting that apart from the course packs that contained excerpts of various textbooks, eight books had been photocopied back to back.
In light of the legal determination above, the DB refused to grant the publishers an interim injunction. However, the photocopying agency was called upon to maintain records of the course packs photocopied by it and supplied to the students and also file a statement to this effect with the trial court every six months till the trial is completed.
 Chancellor, Masters & Scholars of the University of Oxford & Ors v. Rameshwari Photocopy Services and Ors., RFA(OS) 81/2016, Delhi High Court
 The Chancellor, Masters & Scholars of the University of Oxford & Ors v. Rameshwari Photocopy Services and Ors., CS(OS) 2439/2012, Delhi High Court (Judgement dated September 16, 2016).
National Intellectual Property Rights Policy
The National Intellectual Property Rights Policy (‘IPR Policy’), which was announced by GoI, Department of Industrial Policy and Promotion (‘DIPP’) on May 12, 2016, recognises that the Indian regime on intellectual property rights (‘IPRs’) is compliant with the standards specified by the World Trade Organisation under the Agreement on Trade-Related Aspects of IPRs, and has identified certain objectives to promote an ecosystem to catalyze the full potential of IPRs. These objectives include:
i. creating public awareness about the economic, social and cultural benefits of IPRs by launching campaigns linked to initiatives like “Make in India” and “Smart Cities”, specifically targeting industry and R&D entities, creating suitable course materials for educational institutions and sensitizing the media to IPRs;
ii. evaluating potential in specific sectors through comprehensive base line surveys, formulating and implementing targeted programs for creating and utilizing IPRs, and devising mechanisms that benefit medium and small scale enterprises, start-ups and grassroot innovators;
iii. carrying out appropriate legislative changes to update IPR laws in consonance with national needs and priorities and enhancing transparency and efficiency in administration and enforcement of laws, by undertaking adequate stakeholder consultation;
iv. modernising and strengthening IPR administration by, inter alia, increasing manpower and focus on training officers to ensure that Indian IPR offices operate efficiently, while providing user friendly services;
v. capitalizing the existing intellectual property assets in the country by, inter alia, setting up of a platform that functions as a common database of IPRs, which would allow interaction among potential users, buyers and funding institutions, thereby improving IP networking;
vi. sensitizing creators of IPRs of their rights to enforcement and protection measures, strengthening IPR-targeted forces in State police forces and conducting IPR workshops at judicial academies for facilitating effective adjudication of IPR disputes; and
vii. strengthening and expanding human resources, institutions and capacities for teaching, training, research and skill building in IPRs.
While the responsibility for actual implementation of the objectives will remain with the identified Ministries / Departments under the IPR Policy, DIPP will be the nodal point to coordinate, guide and oversee implementation and future development of IPRs in India.
Statutory License for Internet Broadcasting under the Copyright Act, 1957
DIPP issued an office memorandum dated September 5, 2016, clarifying that internet broadcasting companies are also covered, along with radio and television broadcasting organizations, within the statutory licensing regime prescribed under Section 31D of the Copyright Act, 1957 (‘CR Act’). This view was taken based on a broad interpretation of the words “any broadcasting organization desirous of communicating to the public” under Section 31D of the CR Act read with the definition of the term “broadcast” under Section 2(dd) of the CR Act and the definition of the term “communication to the public” under Section 2(ff) of the CR Act.
Diverging John Doe orders in relation to blocking URLs
The Bombay High Court (‘Bombay HC’) recently passed a number of orders dated June 16, 2016, July 1, 2016 and July 22, 2016 that have narrowed down the scope of John Doe orders. The Bombay HC refused to pass orders that would result in wholesale blocking of hundreds of websites that allegedly offered and hosted illicit links to the movies ‘Udta Punjab’, ‘Great Grand Masti’ and ‘Dishoom’. The Bombay HC held that an order to block entire website without demonstrating that the entire website contains infringing material cannot be granted and that specific uniform resource locators (‘URL’) containing infringing material must be identified and established.
On the other hand, in the case of Department of Electronics and Information Technology v. Star India Private Limited, a division bench of the Delhi High Court (‘Delhi HC’), by its judgement dated July 29, 2016, upheld a sweeping John Doe order for blocking 73 websites on the grounds that if only a single URL is blocked, the same website can very easily provide access to the blocked content through another URL.
 Balaji Motion Picture Limited & Anr. v. Bharat Sanchar Nigam Ltd. & 49 Ors., Notice of Motion (L) No. 1783 of 2016 in Suit (L) No. 633 of 2016.
 Balaji Motion Pictures Ltd. & Anr. v. Bharat Sanchar Nigam Ltd. & Ors., Notice of Motion (L) No. 1940 of 2016 in Suit (L) No. 694 of 2016.
 Eros International Media Ltd. and Anr. v. Bharat Sanchar Nigam Limited & Or., Notice of Motion (L) No. 2147 of 2016 in Suit (L) No. 751 of 2016.
 Department of Electronics and Information Technology v. Star India Private Limited, R.P.131/2016 in FAO (OS) 57/2015.
Diverging rulings by the Bombay HC and Delhi HS on the Issue of Jurisdiction in Trademark and Copyright Infringement Cases
Pursuant to the decision of the Supreme Court of India (‘SC’) in Indian Performing Rights Society Ltd. v. Sanjay Dalia and Anr.  (‘Sanjay Dalia Case’), the Bombay HC and the Delhi HC have had the opportunity to interpret this ruling and have adopted diverging views.
For instance, in the case of Manugraph India Limited v. Simarq Technologies and Ors the plaintiffs (having registered offices in Mumbai) brought a suit for trademark infringement before the Bombay HC, although the cause of action arose in Delhi for one set of plaintiffs, and in Kolhapur for the other set. The Bombay HC, however, ruled that it continues to have jurisdiction despite no cause of action having arisen in Mumbai on the reasoning that Sections 134 and 62 of the Trade Marks Act, 1999 and the CR Act allow plaintiffs to institute suits at the place where they carry on their business, irrespective of whether or not a cause of action arose in that place. Further, the Bombay HC held that the only mischief the SC was trying to remedy in Sanjay Dalia Case was the mischief of plaintiffs filing suits at far-flung subordinate offices where no cause of action had arisen.
However, a Division Bench of the Delhi HC has taken a contrary view in the case of Ultra Homes v. Purushottam Kumar Chaubey & Ors. In this case as well, the plaintiff instituted a suit before the Delhi HC on the ground that it carried on business in Delhi, i.e. its principal office was located in Delhi. However, the cause of action arose in Deogarh, Jharkhand (where the plaintiff’s subordinate office is located). Applying the principle laid down in the Sanjay Dalia Case, the Delhi HC held that the plaintiff would be deemed to carry on business at the place of his subordinate office and not at the place of the principal office and therefore, in such a situation, the plaintiff could sue only at the subordinate office and not at the place of its principal / registered office.
 Indian Performing Rights Society Ltd v. Sanjay Dalia and Anr., Civil Appeal Nos. 10643-44/2010 (arising out of Civil Suit FAO (OS) No. 359/2007)and Civil Appeal arising out of SLP [C] No. 8253/2013.
 Manugraph India Limited v. Simarq Technologies and Ors, Notice of Motion No. 494 of 2014 in Suit No. 516 of 2013, Bombay High Court (judgement dated June 15, 2016).
 Ultra Homes v. Purushottam Kumar Chaubey & Ors., FAO (OS) 494/2015, Delhi High Court (judgement dated January 20, 2016).
Photocopying for Course Packs Falls within “Fair Dealing” and Does Not Amount to Copyright Infringement
In the case of The Chancellor, Masters & Scholars of the University of Oxford & Ors v. Rameshwari Photocopy Services and Or., a suit was filed by five publishers against Delhi University and Rameshwari (a photocopying shop attached to Delhi University) alleging that by photocopying and distributing substantial extracts of academic text books for course packs, for sale, the defendants were infringing the publishers’ copyright in these books. However, the defendants’ main argument that photocopying of academic books for course packs fell under Section 52 of the CR Act, i.e. the fair dealing provisions, was upheld by the Delhi HC. On the grounds that the acts of the defendants fell under Section 52(1)(i) of the CR Act i.e. reproduction of a work by a teacher / pupil in the course of instruction, the Delhi HC held that: (i) this provision applies to an institution and its students and is not limited to an individual teacher and his / her student; (ii) the words “course of instruction” is not limited to a lecture in a class room and extends to various acts of imparting instruction throughout the academic session; (iii) the course packs were provided to students at nominal rates and only contained extracts of the books and, hence, would not be considered as competing with the books of the publishers; and (iv) such an interpretation would not violate the Berne Convention for the Protection of Literary and Artistic Works or the Agreement on Trade-Related Aspects of Intellectual Property Rights as these conventions have left this issue to be decided by their respective member countries. The publishers have filed an appealed on October 5, 2016 challenging this decision and the matter is pending before a Division Bench of the Delhi High Court.
 The Chancellor, Masters & Scholars of the University of Oxford & Ors v. Rameshwari Photocopy Services and Or., CS(OS) 2439/2012, Delhi High Court (judgement dated September 16, 2016).
Patent Amendment Rules, 2016 Come into Effect
The Patent (Amendment) Rules 2016 (‘Patent Amendment Rules’) were brought into force on May 16, 2016 to provide several incentives to ‘startups’ for facilitating IPR creation and protection, and clearing the huge backlog at the patent office, streamlining patent procedures and reducing the prosecution timelines. Some of the key amendments are mentioned below:
i. A new applicant category, i.e., ‘startup’ has been introduced. A ‘startup’ is defined to mean an entity where: (a) more than five years have not lapsed from the date of its incorporation or registration; (b) the turnover for any financial year out of the five years has not exceeded Rs 25 crores (approximately US$ 3.7 million); and (c) it is working towards innovation, development, deployment or commercialisation of new products, processes or services driven by technology or IPR;
ii. An applicant may request for expedited examination of the patent application within 48 months from the date of priority on the permitted grounds.
iii. The timeline for filing the response to the first examination report has been reduced from 12 months to six months;
iv. At the time of filing a national phase application (in India) corresponding to an international application filed under the Patent Cooperation Treaty, the applicant may now be allowed to delete claims; and
v. The Controller General of Patents Designs and Trademarks will be required to dispose of the request for a foreign filing license within 21 days from the date of request. In case of inventions relating to defence or atomic energy, the period of 21 days would be considered from the date of receipt of consent from the Central Government.
Division Bench of the Bombay High Court restrains Wockhardt from using the mark ‘CHYMTRAL FORTE’
In the matter of Torrent Pharmaceuticals Ltd. (‘Torrent’) v. Wockhardt Ltd. & Anr. (‘Wockhardt’), by way of order dated November 17, 2017, the Division Bench of the Bombay HC set aside the order of the Single Judge dated March 15, 2017 following an appeal filed by Torrent and granted an interim injunction restraining Wockhardt.
Torrent filed a suit inter alia for infringement and passing-off against Wockhardt based on their registrations for the marks CHYMORAL and CHYMORAL FORTE with rights dating back to the year 1962, and Wockhardt’s subsequent adoption, use and registration of the mark CHYMTRAL FORTE (‘Impugned Mark’). The key arguments relied upon by Wockhardt were that: (i) both the rival marks were derived from the active ingredient TRYPSIN – CHYMOTRYPSIN and the prefixes CHYM and CHYMO are publici juris; (ii) the Impugned Mark was not deceptively similar to CHYMORAL FORTE; (iii) Torrent failed to prove any misrepresentation by Wockhardt; and (iv) there has been significant delay as well as acquiescence as the Impugned Mark had been registered and allegedly coexisted in the market with Torrent’s product CHYMORAL FORTE for a period of eight years.
The Single Judge dismissed Torrent’s application for an interlocutory injunction against Wockhardt and held that the three tests in the classical trinity of passing off, i.e. reputation, misrepresentation and likelihood of damage, had not been satisfied, and that Torrent (and its predecessors) were also held to have acquiesced in the use of the Impugned Mark by Wockhardt as it failed to oppose or object to the use and registration for a considerable period of time.
The Division Bench allowed the appeal, inter alia, on the basis that Torrent had satisfied the tests for establishing passing-off. The Division Bench held that in order to prove ‘misrepresentation’, the plaintiff does not have to prove any mala fide intention and the act of putting the goods in the market with a deceptively similar trademark, is enough to constitute misrepresentation. The Division Bench also held that an incorrect test had been applied to determine ‘reputation’ and that association of the product with its source or the maker is not required to prove reputation. Further, the Division Bench observed that the tests laid down in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. should be adopted while determining possibility of confusion between medicinal products and accordingly, Wockhardt ought to be restrained from continuing the use of the same. On the issue of delay and acquiescence, the Division Bench opined that there was no proof of a positive act attributable to Torrent and mere inaction or delay must not be confused with acquiescence.
Wockhardt has now challenged this order of the Division Bench by way of a Special Leave Petition before the Supreme Court, which is currently pending.
 Commercial Appeal No. 125 of 2017 in Notice of Motion of (L) 35 of 2017 in Commercial Suit (L) 32 of 2017.
Trade variations of footwear / sandals should not be given exclusive monopoly: Delhi High Court denies interim protection for Crocs registered designs
In the matter of Crocs Inc. USA (‘Crocs’) v. Liberty Shoes Limited & Ors. and other footwear manufacturers in India (‘Defendants’), the Delhi High Court (‘Delhi HC’) rejected Crocs’ applications for interim injunctions for piracy of copyright in their registered design.
Crocs had obtained design registrations under the Designs Act, 2000 for its perforated and non-perforated clog-type slippers/shoes in May of 2004. Crocs brought various infringement suits against the Defendants who were manufacturing and selling sandals with clog-type designs largely similar to Croc registered design. The Delhi HC was of the opinion that the registered designs ought not to have been registered in the first place and the registrations were liable to be cancelled as these designs were published and disclosed prior to their registration dates. This finding was arrived at on the basis of internet archival pages dated 2002 (which disclosed similar designs) from the website of Holey shoes. Evidence was also gathered from Crocs’ own website prior to 2004 which also revealed largely similar designs. On the issue of novelty and originality, the Court was of the view that the designs registered by Crocs were neither original nor novel as they were not significantly distinguishable from products already existing in the market and were mere ‘trade variants’ of a sandal, which did not deserve any exclusivity or monopoly.
The Trade Marks Rules, 2017 (‘New Rules’) and the public notice dated May 22, 2017 issued by the Trade Marks Registry inter alia provide for a mechanism whereby brand owners can file an application with the Registrar of Trademarks (‘Registrar’) for determination of a trademark as ‘well known’. The key provisions in connection with this mechanism have been briefly summarized below:
i. The application to the Registrar for determination of a trademark as ‘well-known’ will have to be based on, inter alia, the following criteria:
a. knowledge or recognition in the relevant section of the public;
b. duration, extent, geographical area of use and promotion / advertisement;
c. duration and geographical area of any registration of or any application for registration reflecting use or recognition of the trade mark;
d. record of successful enforcement of the rights by any court or the Registrar; and
e. number of actual or potential consumers / person involved in the distribution of the goods or services.
The application will have to be accompanied by documentary evidence for each fact that is sought to be claimed including evidence as to use of the trademark, including publicity and advertisement, applications for registration made or obtained in India and outside, annual sale turnover based on the trademark etc.
ii. If the Registrar determines that the trademark is well-known and after deciding on the objections received (if any), the Registrar will publish the mark in the Trademark Journal and include it in the list of well-known trademarks. An appeal lies to the Intellectual Property Appellate Board (‘IPAB’) within three months from the date of any decision of the Registrar.
The New Rules do not provide for a specific time frame within which the Registrar will determine if the mark is well-known. One of the main advantages of the ‘well known’ mark status in India, if the mark is registered, is the availability of a remedy of dilution under Section 29(4) of the Trade Marks Act, 1999.
 The term ‘well-known trade mark’, in relation to goods or services, is defined under Section 2(1)(zg) of the Trade Marks Act, 1999 to mean a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.
Copyright Board Merged with the IPAB
Sections 160 and 161 of the Finance Act, which have come into force on May 26, 2017, amend the provisions of the Copyright Act, 1957 and the Trade Marks Act, 1999 to pave way for the merger of the Copyright Board with the IPAB. As a result, all the functions of the Copyright Board (including adjudicating disputes in relation to assignment of copyright, granting of compulsory licenses and statutory licenses in relation to certain types of works) will now get transferred to the IPAB.
Pursuant to powers granted under the Finance Act, the Central Government has promulgated and brought into force the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017 (‘Tribunal Rules’) which govern the qualifications, experience and other conditions of service of the members of various tribunals, including the IPAB. According to the Tribunal Rules, a search-cum-selection committee would be responsible for the recruitment of members for the IPAB.
Given the fact that the Copyright Board has not been functional for quite a few years now, the merger of the Copyright Board with the IPAB gives a forum to the concerned stakeholders to seek redressal of their grievances. However, it still remains to be seen how effectively the IPAB will be able to perform the tasks, roles and responsibilities erstwhile carried out by the Copyright Board, given the huge backlog of pending matters at the IPAB.
Summary Judgment by the Delhi HC in a Trademark Suit
In the case of Ahuja Radios v. A Karim, filed under the Commercial Courts Act, 2015, the Delhi HC, by its order dated May 1, 2017, passed a summary judgment granting a permanent injunction restraining infringement of trademark, passing off and delivery in favour of the plaintiff, i.e. Ahuja Radios.
The plaintiff had procured an interim injunction on March 6, 2013 against the defendant restraining the defendant from dealing in products (being public address systems and audio equipment) bearing the plaintiff’s model number ‘SSA 250 M’ under the ‘AHUJA’ trademark or those which were deceptively similar. Thereafter, upon the inspection of the defendant’s premises by a local commissioner on April 3, 2013, amplifiers of 250 W [Model No. SSA 250 M] were recovered and the Commissioner’s report mentioned that the defendant had admitted to the amplifiers not being original. Despite of the defendant’s allegation that the recovered amplifiers were fraudulently implanted at its premises, the Delhi HC determined that the plaintiff is the undisputed registered proprietor of the trademark in question and that the defendant is not entitled to use the same. The Court noted that the defendant has no real prospect of resisting the decree of injunction and also has little prospect of succeeding in its defense.
 Ahuja Radios v. A Karim, CS(OS) 447/2013, Delhi High Court (order dated May 01, 2017).
Summary Dismissal of Suit for infringement
In the matter of Jaideep Mohan v. Hub International Industries & Anr., the Delhi High Court (‘Delhi HC’) summarily dismissed the suit for trademark infringement at the initial stage of framing of issues.
Jaideep Mohan (‘Plaintiff’) had instituted the suit, inter alia, for permanent injunction to restrain Hub International Industries and NV Distilleries & Industries Pvt. Ltd. (‘Defendants’), from using the trade mark ‘GOLDSMITH’ on the grounds that the same is deceptively similar to the Plaintiff’s registered trademark ‘BLACKSMITH’ in respect of identical goods i.e., alcoholic beverages.
The Defendants contended that the Plaintiff cannot claim exclusivity in the mark ‘SMITH’ as the application for registration of the mark ‘SMITH’ in class 33 (which covers alcoholic beverages) was still pending, and, accordingly, argued that the Plaintiff’s suit was liable to be dismissed under Section 17 of the Trade Marks Act, 1999. The Defendants also contended that there are many entities which have been using the word ‘SMITH’ and ‘BLACKSMITH’ prior to the use of the word by the Plaintiff and that the overall packaging and get-up of the rival goods are completely different.
The Delhi HC, relying on Godfrey Philips India Ltd v. PTI Pvt Ltd, summarily dismissed the suit for infringement and passing off and took the view that the terms ‘BLACKSMITH’ and ‘GOLDSMITH’ have a definite meaning and are clearly understood by most of the population of the country, including those who are not conversant with the English language, and hence there was no infringement and the suit was not likely to succeed. The Delhi HC was also persuaded by the fact that more than 90% of the sales of the Plaintiff were effected through defense and police canteens, where the relevant public was unlikely to get confused merely by the commonality of the term ‘SMITH’.
 2018 (74) PTC 154 (Del).
 2017 SCC OnLine Del 12509.