IP Case Law Developments *

Transcription

1 Journal of Intellectual Property Rights Vol 12, November 2007, pp IP Case Law Developments * Zakir Thomas U24 Hudco Place Ext, New Delhi Received 21 October 2007 This article attempts to summarize some of the recently reported cases on intellectual property law to enable the readers to understand how the courts have applied the principles of intellectual property law to actual IP disputes. The cases are chosen from the cases reported in May and July 2007 issues of the Patents and Trade Marks Cases (PTC), a leading case law reporter on intellectual property laws. The June issue of PTC contains only index of cases. Keywords: Patents, injunction, trademark, concurrent user, design, passing off, infringement copyright, future works The concepts we read in intellectual property law acquire better clarity when understood in the context of application of the law by a court to a set of facts in a real life dispute. However, many of the readers of this magazine are scientists and do not get to read the regularly reported cases. The attempt in this article is to summarize some of the recently reported cases to enable the readers to understand how the courts have applied the law. Obviously it is neither practical nor necessary to narrate all of the reported cases. Some cases are chosen as they convey a certain principle. To ensure that readers do not get distracted, the issues other than the main principle being explained in the judgment are left out. This narration is intended only to kindle the interest of a knowledge seeking mind to go through the full text of the cases and is not intended to be a definitive statement of law or a complete summary of the judgments involved. Patents Sweet Patents If obtaining of patents and enforcement of the same by ordinary inventors (as opposed to big corporations) are an indicator of increased awareness of patent rights and its benefits, then K Ramu v Adayar Ananda Bhavan Muthulakshmi Bhavan, 2007 (34) PTC 689 (Mad) is an indicator of better times. zthomas@piercelaw.edu. The views expressed in this paper are purely of the author, an alumnus of Franklin Pierce Law Center, US, and also an IRS officer who has been the Registrar of Copyrights. *The feedback regarding this column can be sent to the editor, Madhu Sahni ( sahnim@niscair.res.in) or to the author. The plaintiff along with his daughter, Lavanya, is the owner of the product patent no and process patent no They found that fructose/levulose, a sweetener that does not have injurious effect of sugar produced from sugarcane can be used for making traditional Indian sweets. The plaintiff invented a process whereby fructose either singly or in combination can be used for manufacturing Indian sweets. The process involves fructose being prepared in a particular manner so as to prevent fructose from browning due to milliard reaction and caramelization when exposed to high temperature. The plaintiff along with his daughter applied for patent on 13 th February 2003 for the process for preparation of low glycaemic sweets. After filing the process patent application, they further invented the improved process to extend the said improved process for preparation of traditional Indian sweets without browning and filed a product patent application on 28 th July The patent office issued both process patent on 5 th December 2005 bearing no and product patent on 1 st May 2006 with number Plaintiffs started selling sweets made of fructose from their sweet shop since 6 th July The plaintiffs alleged that the defendants were violating their patent rights by selling sweets containing fructose. The products of the defendant are identical to the product of the plaintiff and therefore the defendant ought to be using the patented process. Hence they filed the suit for permanent injunction restraining the defendant from infringing the patents by making or selling sweets covered by the product

2 590 J INTELLEC PROP RIGHTS, NOVEMBER 2007 and process patents. The plaintiff also prayed for the destruction of all material and implements used by the defendants for manufacturing and for damages to the tune of Rs 10.5 lakhs. The defendants contended that the patented invention is not new and they are taking steps to revoke the patents. They denied that they are not copying the plaintiff s inventions, but are using fructose instead of sugar in the manufacture of traditional Indian sweets and the preparation does not involve anything new. In its reply affidavit, the plaintiff submitted that even if fructose is freely available in the market, the same could not be used to manufacture sweets without the process invented by the plaintiff, which avoids browning due to milliard reaction and caramelization. If fructose can be easily substituted for sugar for manufacturing sweets, then anyone could have made such sweets in the past very easily and that itself would prove that without using the process invented by the plaintiff such sweets could not be made or manufactured. The Court observed that since the plaintiffs have been issued patents, they have established prima facie case. In such circumstances Section 48 of the Patents Act 1970 will hold the field according to which a patent granted under the Act shall confer upon the patentee the exclusive right to prevent third parties from making, using, selling or importing the product to India, if the subject matter is a product patent. Similarly, if the subject matter of the patent is a process, the patentee has the exclusive right to prevent third parties from the act of using the process and from the act of using, selling offering for sale or importing for these purposes the product obtained by using the process. Therefore, the plaintiff being the holder of both the product and process patent has got the statutory right to prevent third parties from infringing those rights. When third parties infringe the rights granted under the Patent Act, then Section 108 of the Act will come into operation according to which, in the case of infringement, the Court may grant the relief including injunction and ordering the goods to be seized or destroyed. By virtue of patents issued to them, the plaintiffs have the exclusive rights to prevent third parties from using the process and manufacturing the products using that process. In Telemecanique & Controls (I) Ltd v Schneider Electric Industries SA, 2002 (240) PTC 632, the Division Bench of the Delhi High Court held that patents create a statutory monopoly protecting the patentee against any unlicensed user and once the violation is established it will not be possible to contend that the patentee is not entitled to any injunction. The defendants relied on Manicka Thevar v Star Plough Works, AIR 1965 Mad 327, wherein it was held that when the patent is a recent one and where there is controversy about the validity of the grant of patent, then the plaintiff is not entitled to grant of injunction. They also cited Ram Narain v Ambassodor Industries, AIR 1976 Delhi 87, where the Delhi High Court held that Court will be reluctant to grant injunction if the defendant disputed the validity of the grant and the patent is new and if its validity has not been established in a judicial process till then. The Court held that both the above decisions were rendered prior to the amendment to Section 48 and Section 108 of the Patents Act with effect from 20 th May The Court also observed that it has not been established that the process of making a sweet with fructose and the alternate low glycaemic sweets made in this process are known to the entire world. On the other hand until such sweets were made by the plaintiff no such sweets were ever made. It was also established that even the defendants started manufacturing sweets containing fructose only after plaintiff s sweets hit the market. The Court held that as the plaintiff has established a prima facie statutory right and the injury that would be caused, the Court ordered an injunction restraining the defendants from manufacturing the patented sweets. Comments Students of law may like to examine the impact of the amendment to Section 108 on the principles governing grant of injunction. They may also like to contrast this decision with the decision of Delhi High Court in Bilcare Ltd v Supreme Industries Ltd, 2007 (34) PTC 444 (Del). 1 Trademark That bit of Glucose! The Supreme Court has set right an apparent wrong legal interpretation of trademark principles in Heinz Italia v Dabur India Ltd [2007 (35) PTC 1 (SC)]. The trademark involved was the popular Glucon D.

3 THOMAS: IP CASE LAW DEVELOPMENTS 591 The plaintiff-appellants M/s Heinz Italia S R L is the proprietor of the trademark Glucon-D. This trademark was registered in the name of Glaxo Laboratories under Class 30 on 21 st May It was assigned to M/s Heinz Italia along with the rights in the artistic works, goodwill, etc, on 30 th September M/s Heinz Italia has been using this trademark and artistic work in packaging from 1994 onwards. In July 2002, they learnt that the defendant-respondent M/s Dabur India is marketing a similar product under the name Glucose-D by using packaging which is deceptively similar to the packaging of Glucon-D. The plaintiff served a notice on defendants through their advocates calling upon them to desist from using the mark and deceptive packaging. As no satisfactory reply was forthcoming, they filed a suit for permanent injunction and accounts for profit for infringement of trademark and for infringement of copyright in the artistic work. The defendant took the plea that the word Glucose is a generic expression of the product being sold and as such no monopoly could be claimed by the appellants or anyone else on the said word or its derivatives. It was also pleaded that there was no similarity between Glucon-D and Glucose D and the packaging was also dissimilar. The trial judge held that the word Glucose was a generic word and so the plaintiffs could not claim that the use of the word Glucose D violated their rights in the registered trademark Glucon-D. It also found that the packaging was not similar. The appellant filed an appeal before the Punjab and Haryana High Court which was also dismissed confirming the order of the trial Court. Before the Supreme Court the matter was confined to the refusal of ad-interim injunction claimed by the plaintiff under Order 39 Rules 1 and 2 CPC. The appellants argued that the trademark Glucon-D, used by Glaxo since the year 1940, has been registered as a trademark in 1975, while Dabur claimed the user of Glucose-D from the year 1989 only. As prior user was the cardinal test for infringement and passing off action, this fact alone would suffice for ad-interim injunction. It was also pleaded that since the packaging in green and depiction of happy family superimposed thereon has been used by Glaxo since the 70 s, the prior user should stand proved on record and injunction should necessarily follow. The mark, Glucon-D and its packaging had earned a reputation in the market and they pleaded that it was the intention of the respondents to dishonestly appropriate this goodwill. They asserted that the word, Glucon-D was not a generic word, but even assuming so an injunction would still follow in special circumstances as laid out in Godfrey Philips India Ltd v Girnar Food & Beverages (P) Ltd (2004) 5 SCC 257. The defendants pleaded that the application for adinterim injunction was declined by two Courts below and the respondents had been using the word, Glucose-D and the packaging since the year 1989 but the suit has been filed after many years which was a good reason for refusal of injunction. It was also pleaded that no evidence was brought on record to show that the word, Glucon-D and the packaging have acquired a unique reputation. It was also pleaded that the Courts below had held that the word, Glucose was a generic word and could not be appropriated by anybody and that even if its exclusive use could be justified in some extraordinary case, a decision could be arrived at after evidence has been recorded. They too relied on Godfrey Philips case. The Supreme Court observed that it has been held in Wander Ltd v Antox India P Ltd, 1991 PTC 1 (SC) that an interlocutory injunction under Order 39 Rules 1 and 2 is in the nature of discretionary relief and that interference should not be made when two Courts have gone against the party. But in that case the adinterim relief had been rightly refused as opposite party had claimed and proved prior user on which passing off action was based. However, the challenge in the present case is that the plaintiff had been a prior user of Glucon-D and the packaging while the defendant had admittedly used it later. Due to this reason, the Court rejected the defendant s argument that the findings of Courts below could not be interfered with. The Court then considered the arguments with regard to the prior user of the trademark, Glucon-D and the specific packaging. The Court observed it as an admitted fact that the word, Glucose-D, has been used by the respondents from the year 1989 and the packaging which is the subject matter of dispute from the year The Court observed that it has been repeatedly held that in an action for passing off, the plaintiff has to establish prior user and prove that the product has earned a reputation in the market and that this reputation has been sought to be appropriated by the other party. In Corn Products Refining Co v Shangrila Fod Products Ltd, AIR 1960 SC 142, it was held that the principle of similarity could not be

4 592 J INTELLEC PROP RIGHTS, NOVEMBER 2007 very rigidly applied and if it could be shown that there has been a dishonest intention on the part of the plaintiff in passing off goods, an injunction should follow. In Cadilla Healthcare Ltd v Cadilla Pharmaceuticals Ltd, 2001 PTC 306, it has been held that in passing off action, similarities rather than dissimilarities have to be taken note of by the Court and that the principle of phonetic similarity could not be ignored. The test laid out in that case is whether a particular mark has obtained acceptability in the market so as to confuse the buyer as to the latter mark he is purchasing. The Court observed that it needed to be reiterated that the mark Glucon-D has been used by Glaxo since 1940s whereas the word, Glucose-D, had been used for the first time in Both Glucon-D and Glucose-D are items containing glucose and there was remarkable phonetic similarity in the two words. The Court examined the packaging of both the products and found that the colour scheme of both Glucon-D and Glucose-D are identical with a happy family superimposed on both. The defendant s argued that the happy family in Glucose-D consisted of four members while in the case of Glucon-D it was only three and as such the two were dissimilar. The Court, however, held that it is the colour scheme and overall effect of the packaging that has to be seen. The Court examined the packaging and came to the conclusion that the packaging of Glucose-D and Glucon-D is so similar that it can easily confuse a purchaser. The Court also found that the respondents had time and again made small changes in their packaging to mislead the purchaser and make it difficult for the appellants to protect their mark. The records showed that Glucon-D had acquired an enviable reputation in the market which was sought to be appropriated by the defendants. The issue of prior user of the mark is a fact which needs no evidence in the present case. Based on these reasons, the Supreme Court set aside the order of the trial Court and the High Court and allowed ad interim injunction sought by the plaintiff. Comments Students of law may refer to the decision of Glaxo Operations (UK) Ltd, Middlesex (England) v Samrat Pharmaceuticals, Kanpur, AIR 1985 Delhi 265, wherein Glucon-D was the subject matter of dispute. Glucon-D had registered its copyright in 1977, while the defendant s Glaxose-D was in The getup, background and general appearance of both the products were similar. The Court granted an injunction in favour of the plaintiff. Concurrent Users Honest concurrent use of trademarks by more than one enterprise might lead to territorial limitation of the marks. This is the issue at the core of Satnam Overseas v Deputy Registrar of Trademark & Anr., 2007 (35) PTC 22(Del) (DB). Section 12 of the Trade Marks Act 1999 provides for registration in the case of honest concurrent use of trademarks in respect of same or similar goods or services. M/s Sant Ram & Co, one of the respondents in this case had obtained registration for the trademark Kohinoor in respect of rice in class 30 in The appellants M/s Satnam Overseas adopted the mark, Kohinoor, sometime in 1979 and applied for registration in 1985 in class 30. Another application in class 30 for rice was filed for export. The respondent, Sant Ram & Co objected. The appellant pleaded that the use of the trademark by the respondent was limited to only five cities in UP and therefore in terms of Section 46 (2) of the Trade and Merchandise Act 1958, the territorial restriction of the area in which the trademark could be used should be imposed. The Deputy Registrar of Trade Marks in his order held that the appellant M/s Satnam Overseas had bona fide adopted the trademark, Kohinoor, in respect of the whole of India and export whereas the respondent has been selling rice under this mark only in the cities of Faizabad, Maunath, Bhanjan, Jaunpur, Shahgang and Agra in the state of Uttar Pradesh. The Deputy Registrar held that there was honest and concurrent use by the appellant, Satnam as provided in Section 12(3) of the Act and hence Section 46(2) of the Act was applicable and modified the trademark, Kohinoor, of respondent M/s Sant Ram to be used for rice for sale in the cities of Faizabad, Maunath, Bhanjan, Jaunpur, Shahgangand and Agra in the State of Uttar Pradesh. On appeal by the respondent to the High Court, the single bench agreed with the Deputy Registrar on the finding of concurrent user and the applicability of Section 46(3) but held that the respondents were entitled for registration of trademark, Kohinoor, for rice in class 30 for the State of Uttar Pradesh and not merely six cities. The registration in favour of M/s Satnam Overseas was to incorporate except for the State of Uttar Pradesh. Appeal was filed before the Division Bench of the High Court pleading that when M/s Sant Ram & Co

5 THOMAS: IP CASE LAW DEVELOPMENTS 593 was carrying on business with the Kohinoor mark selling rice only in particular towns of UP, the single Bench had erred in ruling that the registration is valid for the State of Uttar Pradesh. The Division Bench held that the findings of Single Bench are based on practical consideration of facts and do not call for any interference. Manufacturers of products do not generally market their products by making direct deliveries to the retailer. A product is normally sold through dealers and distributors located in big cities who in turn sell the product to retail dealers in smaller towns and villages through whom the product reaches consumers. It is an admitted fact that the respondent M/s Sant Ram & Co is the prior user of the trademark, Kohinoor. They had been using it since 1971 and the registration in their favour was granted in 1975 for rice in class 30. In these circumstances, limiting the rights of the respondents to the use of trademark in just six cities was unjustified and arbitrary. The restriction imposed was contrary to the normal trade practises wherein distributors and dealers sell the products by effecting delivery to retail shopkeepers, who are located all over the state. These retail shopkeepers may belong to villages or towns located in the State of Uttar Pradesh. Hence putting geographical restriction on the respondent with reference to only six cities would have adversely affected the respondent, the prior user. The Court further observed that restricting the trademark to few cities would have created a lot of complications and litigation as to the exact boundary of a particular city or district. Rather it would be impossible for the respondent to ensure that its products are not sold to retail shopkeepers outside the six cities. Comments The decision and the reasoning of the Division Bench which confirms the ruling of the Single Bench is based on sound trademark principles which protect the reputation of the mark. It would have been difficult to protect the reputational aspects of the mark by restricting the mark to few cities as consumers do travel from villages to cities and back and also inter city. Deciding a State as a market makes trademark sense. Design, Copyright and Passing off Tupperware Designs Tupperware, the famous plastic container trademark was the subject matter in the suit in Dart Industries Inc, Anr v Techno Plast Ors, 2007 (35) PTC 129 (Del). There were two plaintiffs in this case, Dart Industries Inc, a company incorporated in US, plaintiff no.1 and M/s Tupperware India Pvt Ltd, its Indian subsidiary as plaintiff no.2. M/s Dart Industries claims ownership and possession of proprietary know how and intellectual property rights in the designs used for the manufacture of its products commonly known as Tupperware products. It was also claimed that these products are the result of artistic work in the form of product drawings, mould drawings and moulds and therefore copyright was also claimed therein. It was stated that the plaintiff no.1 had contractually granted the plaintiff no.2 the rights to use the proprietary and registered designs in India and also the right to use its moulds to manufacture Tupperware. The plaintiffs alleged that defendants copied the plaintiff s design for their products, namely, foodgrade plastic storage containers and in this manner infringed the plaintiff s design right in these products. Plaintiff no. 1 claimed that it has registered the proprietary designs of Tupperware products globally and in India. It was stated that the designs of Tupperware products are new and original and by virtue of extensive and longstanding use, reliability and high quality, Tupperware products have acquired considerable reputation in India. The products were marketed in India in 1996 and sales stood at Rs crores in financial year 2004 with advertisement expenditure at Rs 6.91 crores. Plaintiffs alleged that the design of the products of the defendants is identical to the products of the plaintiffs and pleaded that this action is illegal due to: (a) Design infringement under Section 20 of the Designs Act; (b) Copyright infringement under Section 55 of the Copyright Act; (c) Passing off of goods as that of the plaintiffs by copying trade dress and trade name which is confusingly similar to the plaintiffs goods; (d) Defendants have copied the designs by reverse engineering; (e) Impugned act of defendants amounts to unfair competition and unfair trade practice. The plaintiffs sought an ex-parte injunction which was granted and the matter came up for detailed hearing.

6 594 J INTELLEC PROP RIGHTS, NOVEMBER 2007 The defendants challenged that the suit under Section 22 of the Designs Act is not maintainable as the designs in question are prior published and not new and original. The maintainability of the suit under Section 55 of the Copyright Act was challenged stating that the plaintiffs obtaining of design registrations made them ineligible for rights qua the copyright, vide Section 16 of Copyright Act. They also stated that there is no infringement of trademark as there is no confusion as to the source. They are selling their products as Signoraware. Signora brand is the family trademark of the defendant. There is a lot of difference between the two trademarks, namely, Tupperware of the plaintiff and Signoraware of the defendants and so the question of confusion and deception does not arise. They also contended that passing off action under Designs Act is not even maintainable. The Court dealt with the submissions and counter submissions under the following heads: (i) Design infringement (ii) Re-copyright infringement (iii) Re-passing off of trade dress, trade name, etc. (iv) Unfair competition and unfair trade practice The discussion under each of the above head is summarized below: Design Infringement The plaintiffs contended that by virtue of registration of designs they have become owners of the copyright in the registered designs as per Section 11 of the Designs Act, 2000 and have thereby acquired an exclusive right to apply these designs to Tupperware products. The designs are new and original. They alleged striking similarity between Tupperware products and defendant s products which, according to them caused confusion in the minds of consumers, as evidenced by a market survey report by AG Neilson-Org Marg. They also filed an affidavit of the notary public who witnessed the reaction of consumers during his visit to the India International Trade Fair where defendant s products were exhibited. Defendants on the other hand claimed that the designs claimed to be registered in favour of plaintiff no.1 are invalid due to lack of novelty or originality by virtue of previous publication. They produced evidence that the designs involved were previously published in Tupperware catalogues and price lists. The plaintiffs challenged the claim of prior publication stating that the photographs shown in the catalogues do not show the designs as a whole. There is lack of depiction of the registered design, shape, pattern, etc, in these photographs. The pictures on the price list also show only a part of the product. The Court observed that the designs of which violation is alleged are registered under Designs Act Therefore the onus is upon the defendants to prove that they are pre published and not original as per Section 2(g) of the Designs Act. According to Section 4 of the Designs Act 2000, a design disclosed to the public anywhere in India or in any other country by publication in tangible form or by use prior to the filing date will lack originality and hence the designs in question cannot be registered due to prior publication. In an action brought by the plaintiff in a suit, the defendants can plead that the designs were not new or original. Registration constitutes only a prima facie evidence. The plaintiff has the advantage that if no evidence was given to the contrary, his right is established. The onus is upon the defendants to prove that the designs are not original as per definition in Section 2(g). If the designs were pre-published before registration was granted to the plaintiffs then such designs cannot be treated as original. The moot question is whether there is publication of the designs in dispute by way of prior use or sale or by display or publication in any other form before the registration. According to the Court, publication has not been defined in the Act but judicial interpretation has been developed. The test of prior publication laid down in Rosedale Associated Manufacturers Ltd v Airfix Ltd, 1957 RPC 239 is that a person with ordinary prudence while seeing the designs in question is able to see the design in his minds eye. The test thus is, when such a person sees the design he is able to say Oh! I have seen this before. In Gopal Glass Works Limited v Assistant Controller of Patents, Designs and Ors, 2006 (33) PTC 434, Calcutta High Court ruled that in order to destroy the novelty of a design registration, prior disclosure whether by prior publication, whether by use or by any other way, must be of the pattern, shape and or configuration applied on the same article. Based on the above test, the Court examined each of the products to determine whether they lack novelty due to prior publication with the caution that the matter is at the stage of preliminary injunction and

7 THOMAS: IP CASE LAW DEVELOPMENTS 595 at that stage, the Court needs to look into the matter to form an opinion on prima facie basis. The Court found that the products in question are published in The Tupperware Cook, revised new edition of There is no satisfactory explanation given to the publication of the designs in this book. Even if there is some improvement in the products in question over the designs shown in the publications, that would not, prima facie, make the work of the plaintiff original. The Court observed that a vivid description of the law on this aspect can be found in Ravinder Kumar Gupta v Ravi Raj Gupta & Ors, 1986 PTC 50 (Del). It was held that if the design was original then the designer must have conceived something new; if the design was a mere trade variation of a previous design, then the designer could be said to have kept an existing design in mind and made some mere changes to that. The Court has to consider and look at the designs in question with an instructed eye and say whether there is or there is not such a substantial difference between that which was published previously and the registered design so as to sustain the claim of originality. It was observed in that case that there must not be a mere novelty of outline but a substantial novelty in design having regard to the nature of the article. The design should be new in the sense that it is something that was developed which was not in existence earlier. Originality cannot be claimed to exist if there are only little variations from the products already existing. An addition of a curve here or there in shape which is well recognized shape of an article of common use in the market cannot make it an article new or original in design. Such claims are devoid of newness and originality. The Court concluded that, prima facie, the claim under Designs Act is not sustainable. Re-Copyright Infringement The plaintiffs claimed copyright in the products in question on the ground that the designs which are created involve making of product drawings based on which the mould drawings are made and ultimately the engravings in the form of moulds are created by the experts of the plaintiff during the course of their employment. These are artistic works as defined in Section 2 (c) (i) of the Copyright Act, which are owned by the plaintiff by virtue of Section 17 and by the operation of Section 13 and 14 plaintiffs are entitled to exclusive rights provided therein which have been infringed by the defendant. Plaintiffs argue that the infringing products are an obvious imitation of Tupperware products amounting to infringing copies as defined in Section 2(m) of the Copyright Act. It was also submitted that the manufacture of infringing products having striking resemblance to Tupperware products could have been achieved by reverse engineering using modern day computer techniques circumventing the tedious process of designing used by plaintiffs. Such reproduction amounts to infringement of copyright of the artistic works of the plaintiff in product drawings. This conduct of the defendants makes them liable under provisions of Section 51 read with Section 55 of the Copyright Act. The defendants contended that copyright of the plaintiff ceased to exist once they sought design registration as per the provisions of Section 15 of the Copyright Act. The Court observed Section 15 2 of the Copyright Act provides that once a design is registered under the Designs Act, copyright therein shall not subsist. Copyright in any design which is capable of being registered but has not been so registered shall cease as soon as the design is reproduced more than 50 times. The underlying message according to the Court is that copyright in an industrial design is governed by Designs Act, In such cases, once a design is registered, the protection given is not copyright protection but a true monopoly based on statute as designs were never protected as common law. Exceptions are in those cases where copyright came into existence in respect of artistic drawings and subsequently these drawings were used as models or patterns to be multiplied by an industrial process. In such cases till the drawings became capable of registration as design, copyright will not be forfeited. However, the intended industrial use of the work was contemporaneous with its coming into existence then Section 15 would apply. Therefore, prima facie, the claim of copyright in industrial drawings and designs which were being used for manufacturing purposes is not maintainable. However, the Court observed that Section 15 lays down only that copyright will not subsist on the designs as well as drawings. Therefore it is possible that when the moulded plastic article is made from a drawing, the drawing may qualify as original work for copyright protection and at the same time a registered design for the shape of the article would be protected under the Designs Act. Therefore if unauthorized

8 596 J INTELLEC PROP RIGHTS, NOVEMBER 2007 copy is made of the article, it may constitute an indirect copy of the drawing and may infringe the copyright. The Court observed that in a matter like this where there is a serious dispute which needs evidence to establish copyright in industrial drawings meant for industrial designs, where plaintiff can be compensated by monetary damages, it would not be proper to grant injunction. Re-Passing off Action It was submitted by plaintiffs that the new and original designs of Tupperware products have become popular in Indian market and worldwide and have acquired tremendous goodwill and reputation. The infringing products are goods meant for household purposes being targeted to be sold to same set of consumers as Tupperware products. At a first glance, the plaintiffs and defendants products give the impression of deceptive or near similarity. Plaintiffs alleged that there has been conscious and substantial imitation of colour combination, get up and lay out of the Tupperware products by defendants which creates confusion in the minds of the public. The defendants pleaded that there cannot be any question of confusion as the products of the plaintiff and the defendant are sold under totally different trademark, namely, Tupperware and Signoraware respectively. Designs Act is statutory in nature and no common law right of passing off is provided under the Designs Act. Plaintiffs argued that the right to sue for passing off is an independent common law right and is not dependant on the Designs Act. The Court agreed with this submission and held an independent common law right of passing off is available de-hors the Designs Act following the decision in M/s Smithkline Beecham Plc & Ors v M/s Hindustan Liver Limited & Ors, 2000 PTC (20) 83 (Del), where it was held that passing off action is available in case of design. In an action for passing off, the plaintiff has to show that there is such a striking resemblance between the two products that the consumer would buy the goods of the defendants thinking that it belongs to the plaintiff. The Court found that the defendants had not represented that their products belonged to Tupperware but were representing that they were Signoraware products, which were cheaper. The plaintiffs themselves had stated that the comparison of the products by their experts show that the goods of the defendants were not of the same quality as that of the plaintiff. The defendants were at the most puffing that their products looked alike the Tupperware products. Therefore the doctrine of caveat emptor or buyer beware would apply. There is no commonality of trademarks. The affidavit submitted by notary public also stated that the defendant were selling their product as Signoraware and their salesman did not misrepresent the product as Tupperware but only compared the prices. There is no misrepresentation by the defendant and therefore question of passing off would not arise. The Court observed that it would be an interesting question for determination if the design is no more protected under the Designs Act and is now in public domain whether passing off action would be maintainable. The Court also noted that the defendants are an established enterprise and not a fly by night company. The Court observed that when the case is primarily founded on the basis of rights under the Designs Act, and that right prima facie is not established, interlocutory injunction is not called for. It is a case where damages would be more appropriate remedy, if the plaintiffs ultimately succeed. For this reason, the Court did not find it necessary to consider the submission based on unfair competition at the interlocutory stage. Comments The detailed judgement in this case is reflective of the ability of Indian Courts to handle complex IP dispute cutting across statutes. One aspect which the students of IP law may like to examine is the holding of the Court that there may be an independent passing off action available de-hors the Designs Act. It may be noted that while discussing copyright infringement, the Court had observed that the right provided in the Designs Act is a statutory right. 3 Perhaps by answering the poser raised by the Court whether a passing off action is sustainable where rights under Designs Act have expired may lead to an answer to this question. It may be noted that the issue raised in this unanswered poser was one of the reasons why the Court did not find this a fit case for interim injunction. The issues depicted in this case is a good study material for IP management students as this case exposes the IP management strategy of a leading transnational brand which is invoking all IP rights possible to secure a monopolistic position in the market.

9 THOMAS: IP CASE LAW DEVELOPMENTS 597 Copyright Rights in Future Works Can the copyright holder obtain an injunction in respect of future works, works which have not yet been created? This was the issue in Time Warner Entertainment Company & Ors v RPG Netcom, 2007 (34) PTC 668 (Del) (DB). The appellant plaintiffs claim to be owners of copyright in cinematograph films either as producers or as assignees and they allege that their rights are violated by the defendant respondents who should be injuncted from broadcasting their films on their cable network. The Single Bench had granted an interim injunction in favour of the plaintiffs but restricted the injunction to the list of movies attached to the plaint. The Single Bench rejected the prayer of the plaintiffs that interim injunction order should also be passed in respect of cinematograph films which have not yet been produced and will be made in future. Against the refusal of the Single Bench of not passing injunction in respect of future films, the plaintiff appealed before the division bench. Deciding the appeal the Division Bench observed that the object of copyright law is to prevent copying of physical material and form of expression in the field of literature and art. It is essentially a negative right given to the author, in the sense that the Act does not confer on the owner a right to publish his work but a right to restrain third parties from doing what the rightholder is solely allowed to do under the Act. Copyright exists in material objects where an idea is expressed and not in the idea. The object of copyright is not to create any rights over an idea but in the final object or the work which is created as a result of the effort made to give a physical shape to the idea. Copyright exists in works as defined in Section 2 (y) of the Act which includes the cinematograph film. Section 13 of the Copyright Act grants the statutory rights in respect of cinematograph films. Section 13 provides that the right to claim copyright is subject to the provisions of that section and that no copyright exists de hors and outside the Act. It is a right created under the statute and no right outside the statute can be claimed. This becomes clear in the light of Section 14, 16 and 55 of the Act. Section 14 states that copyright means exclusive rights by virtue of and subject to the provisions of the Act. Section 16 of the Act further stipulates that no person shall be entitled to copyright or any other similar right in any work whether published or unpublished otherwise than and in accordance with the Act. Section 55 provides for civil remedies for infringement of copyright and authorizes the owner of copyright to remedies by way of injunctions/damages. In view of the above provisions, the Court refused to accept the contention of the plaintiff that they are entitled to injunction under the law of tort. The common law rights were explicitly abrogated by Section 31 of the Copyright Act, 1911 and Section 16 of the Copyright Act 1957 should be read in that light. 4 Section 18 of the Act provides that a prospective owner can enter into an agreement to assign rights in a future work but the assignment takes effect only when the work comes into existence. Likewise, the right to claim remedies for infringement under Section 55 of the Act has been given to the owner as defined in Section 17 and not to the prospective owner. In view of this it cannot be stated that films which have not been conceived or after being conceived are under production can become subject matter of an infringement action under Section 55 of the Copyright Act. Hence the Court held that the existing owners of cinematograph films can not get an omnibus interim injunction for cinematograph film of which they may become owners in future. The Copyright Act does not postulate any such rights. The Court observed that even otherwise grant of injunction in respect of prospective or future cinematograph films are fraught with difficulties and can lead to complication and litigation, A vague order of injunction which is likely to create confusion should not be passed, the Court observed. It would be impossible for Courts to ensure implementation and compliance to an order which relate to properties and rights which do not exist. References 1 Thomas Zakir, IP Case law developments, Journal of Intellectual Property Rights, 12(3) (2007) Section 15 of the Copyright Act The observation of the Court at page 153: If a design is registered under (Designs) Act it is not eligible for protection under Copyright Act. In such cases after the design is registered under the Designs Act, the protection given is not copyright protection but a true monopoly based on statute in as much as designs were never protected by common law. 4 Section 16 of the Copyright Act 1957 reads: No copyright except as provided in this Act. Section 31 of the Copyright Act 1911 reads: Abrogation of Common Law Rights.