Landmark Cases of Intellectual Property Rights
The article examines significant judgments that have influenced Intellectual Property Rights laws in India.
Intellectual Property Rights (IPRs) serve as legal safeguards provided to individuals to protect their intellectual creations, ensuring creators possess exclusive rights over their works. This encompasses a spectrum of protections such as Copyrights, Trademarks, Patents, and more.
Let's dive into some significant legal rulings that have influenced Intellectual Property Rights (IPR) laws in India.
Landmark Cases of Intellectual Property Rights
1. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals, Appeal (Civil) 2372 of 2001
Facts: This case involved two pharmaceutical companies namely Cadila Healthcare and Cadila Pharmaceuticals. Both companies brought out a medicine with a deceptively similar name for treating a disease, Falciparum Malaria. The medicines used to treat the said disease were Falcigo by Cadila Healthcare Ltd and Falcitab by Cadila Pharmaceuticals Ltd. However, Cadila Healthcare (in this case the Appellant) came out with the medicine before the other.
As a result, the appellant filed a suit against Cadila Pharmaceuticals (in this case the respondent) for using their trademark as the name of the medicine was deceptively similar to the appellant’s medicine.
The suit was filed in the Vadodara District Court. However, the suit was dismissed on grounds that it was improbable that the two medicines would bring in any confusion, further the medicines were of such nature that they were only to be given on showing of a prescription prescribing the same. As a result, the appellant went to the High Court which also gave the same result. The Appellant then appealed in the Hon’ble Supreme Court.
Judgment: The Supreme Court did not wish to interfere however it gave some directions for the trial court to take into consideration while deciding the case. The Supreme Court stated that just because there were higher categories of medicines it is not improbable that the medicine or drugstore will commit a mistake. The Supreme Court also stated that there must be a clear or certain distinction between two drugs or medicines. The Hon’ble Supreme Court laid certain considerations to decide on whether two trademarks are similar. Some of the considerations are the degree of similarity, nature of goods, similarity in character etc. Therefore the Supreme Court gave its valuable observation but did not intervene.
2. R.G Anand v. M/S. Delux Films & Ors, AIR 1978 SC 1613
Facts: Mr. R.G Anand, the Appellant, wrote a play in the year 1953 which received huge appreciation from the public which led him to think of making the play into a film. M/s Deluxe Films was a film-producing company. The company came forward to Mr Anand intending to make the play into a film. However, the discussion wasn’t carried forward by the company.
The company later made a film named ‘HUM HINDUSTANI’ which according to Mr Anand was a copy of his play. About which he filed a suit in the Delhi Trial Court for violation of his copyright. He filed for an injunction on the film for the apparent violation, however, the Trial Court on the ground that there were no similar elements in the movie did not grant the injunction. He later filed an appeal in the Delhi High Court. The Delhi High Court also did not grant the same. Eventually, the Appellant appealed in the Hon’ble Supreme Court.
Judgment: The Supreme Court here dealt with the idea-expression dichotomy. Copyright seeks to protect the expression of ideas and not the idea itself. The Supreme Court held that the drama and movie were not similar, they were very different from each other. The Court further held that a layman would not understand any difference between the drama and movie and hence it can't be said that there was a violation of copyright.
3. Star India Pvt. Ltd. v. Moviestrunk.com & Ors., CS(COMM) 408/2019
Facts: In this case, the plaintiff, Star India Pvt Ltd. filed a case against such websites which was into illegal streaming of their film named ‘Mission Mangal’ without the permission of the plaintiff who had the rights over the movie. Here the Plaintiff filed the suit against 67 websites and some government departments for blocking the websites. The plaintiffs had also sent notices to the websites to stop such illegal streaming however they did not respond to the same.
The suit was filed against the illegal streaming of the movie named above, over which the plaintiff has exclusive rights and to prevent the same with the help of a permanent injunction.
Judgment: The Hon’ble Court held that the websites were violating the copyright of the Plaintiff. The Court also issued directions to the various Government departments who were also a part of the defendants, to send notice for blocking such websites which are also known as rogue websites. The Court disposed of the suit with the costs of the suit to the plaintiff.
4. Parle Products (P) Ltd. v. J.P. and Co., Mysore, AIR 1972 SC 1359
Facts: In this case, the plaintiff was a biscuit manufacturer. The plaintiff had a biscuit whose wrapper was registered for trademark. However, the respondent also sold biscuits whose wrapper was very similar to the plaintiff’s. Thereafter the plaintiff filed a suit for trademark infringement. The Trial Court held that there was no infringement as both the wrappers were not similar and had distinct features. The same view was also taken by the Hon’ble High Court. Thereafter, the Plaintiff appealed in the Supreme Court.
Judgment; The Hon’ble Supreme Court held that there had indeed been a trademark infringement due to the similarity of the wrappers. The Court further granted the injunction against the use of similar wrappers for any kind of biscuit. The Court therefore set aside the ruling of the Trial Court as well as the High Court.
5. Novartis AG v. Union of India, 2013 (6) SCC 1
Facts: The Plaintiff, Novartis was a pharmaceutical company. The company had created a cancer drug namely ‘Glivec’ or ‘Gleevee’. The company wanted it patent the same drug in India. The Madras Patent Office did not accept the application, as a different drug had been patented before which was similar to the present drug.
The Patent Office cited the lack of improvement in ‘therapeutic efficacy”. As a result, the company filed a petition in the High Court of Madras which was denied. Further, the case was transferred to the Intellectual Property Appellate Board, however even they denied granting the patent. The Company finally appealed in the Supreme Court.
Judgment: The Hon’ble Supreme Court also held that the drug which the Appellant sought to patent was just a different version of an already existing drug and the same in no way seeks to be a better alternative. The Supreme Court held that if a drug does not exceed the earlier efficacy then the same cannot be patented.
Read Case Analysis: Novartis AG v. Union of India, (2013) | Affordable Access to Medicines
6. Bajaj Electricals Ltd. v. Gourav Bajaj & Anr., 2020 (82) PTC 40 (Bom)
Facts: TRespondent in this case had stores with the names “APNA BAJAJ STORE” and “BAJAJ EXCELLENT”. The word BAJAJ was a trademark which had been used by the plaintiffs Bajaj Electricals for a very long time. The plaintiff therefore filed a suit to stop the defendant from using the trademark ‘BAJAJ’.
Judgment: The Bombay High CourtCourt held that the defendant’s use of the trademark BAJAJ was infringement. The same also constituted passing off, which means a way by which involves wrongly showcasing one good as that of the others. Therefore the Court granted an injunction for the same.
7. Yash Raj Films Pvt Ltd v. Sri Sai Ganesh Productions and Ors., AIROnline 2019 Del 1017
Facts: The Plaintiff Yash Raj Films is a famous Indian Production house. In the year 2010 they released a movie named BAND BAJA BARAAT. The plaintiff therefore had exclusive rights over the film. Sri Sai Ganesh Productions, the defendants, was a Telugu Production house that thought of making a film which was a copy of the Plaintiff’s movie. The Plaintiff had sent notices after knowing the same as well. However, the defendants went on to release the trailer of the movie JABARDASHT. The movie turned out to be the exact copy of the Plaintiff’s movie. Thereafter the Plaintiff filed a suit for infringement of copyright.
Judgment: Delhi High Court Court held that the movie was a replica of the Plaintiff’s movie as they had similar fundamental characteristics. As the main or fundamental elements of a movie have no difference then the same is said to be a copy of the other. Therefore the Court ruled in favour of the Plaintiff and passed an injunction order against the defendants with damage
8. Bayer Corporation v. Union of India, Writ Petition No.1323 of 2013
This landmark judgment is the first-ever case in India dealing with the granting of a compulsory license under an application made under Section 84 of the Patents Act, 1970.
Facts: The petitioner, Bayer Corporation Ltd incorporated in the USA invented and developed a drug named ‘Nexavar (Sorafenib Tosylate)’ used in the treatment of persons suffering from Kidney Cancer (RCC). The drug was granted an international patent in 45 countries including India. Under normal circumstances, a third party can manufacture and sell the patented drug only with the permission or license granted by the patent holder.
Natco, a drug manufacturer had approached Bayer for a grant of a voluntary license to manufacture and sell the drug at a much lower price of Rs. 10,000/- per month of therapy as against the price of Rs. 2, 80,428/- per month of therapy charged by the petitioner.
The request was denied and hence they made an application to the Controller under section 84 of the Act for a compulsory license on the ground that the petitioner had not met the reasonable requirement of the public in respect of the patented drug. It was granted on the condition that the applicant had to sell the drug at Rs 8,800/- per month and was directed to pay 6% of the total sale as royalty to the petitioner. Natco was also directed to sell the drug only in India and to make the drug available to at least 600 needy patients each year free of charge.
Aggrieved by the order, the petitioner approached the Intellectual Property Appellate Board (IPAB) contending that the order passed was contrary to the provisions of the Act since the drug was made available at a lower price by Cipla. The board, however, rejected the contention by holding that the drug was not made available at a cheaper price by the petitioner and that the petitioner’s stance was detrimental to the public at large who needed the drug. Hence, the petitioner preferred an appeal to the High Court.
The major issues for consideration by the High Court were:
- Has the requirements under Section 84(1) been satisfied for granting a compulsory license?
- Whether supplies by infringers of a patented drug to be considered/taken into account to determine the satisfaction of reasonable requirement test?
Judgment: With regard to Issue No.1, the Court held that all the three requirements under clauses (a), (b) and (c) of Section 84(1) for granting compulsory license have been satisfied in this case.
The court opined that the question of whether the reasonable requirement of the public has been satisfied under Section 84(1) (a) is to be determined after examining the evidence produced by both parties.
In the present case, after examining the figures given by the Petitioner in affidavits it is clear that the requirements haven’t been met by the petitioner. It was held that the dual pricing system under the Patient Assistance Programme would not satisfy the conditions of Section 84(1) (b) and hence the drug was not considered to be available at a reasonable price to the public.
On the question of whether the patented drug has been worked in the territory of India, the Court held that when a patent holder is faced with an application for a Compulsory License, it is for a patent holder to show that, the patented invention/drug is worked in the territory of India by the manufacturer or otherwise. It is not compulsory that “Worked in India” should include “manufacture” if the patent holder can furnish valid reasons before the authorities for not manufacturing in India keeping Section 83 of the Act in mind.
On Issue No. 2, the Court answered the question negatively and held that the supply by the infringers, Cipla and Natco could not be taken into account since their supply could stop any day. It is only when the patent holder grants a de facto license could infringer’s supplies be taken into account. The obligation to meet a reasonable requirement of the public is of a patent holder alone either by itself or through its licensees.
Section 84(7) of the Act, provides a deeming fiction which provides that the reasonable requirement of the public is not satisfied, if the demand for a patented article is not met to an adequate extent in which regard the patent holder has failed in the present case.
The decision, in this case, will go a long way to ensure that the interests of the public are drowned by reason of the personal interests of the patent holder in necessary circumstances.
9. Diamond v. Chakrabarty, 447 U.S. 303 (1980)
This was the historical decision in which the US Supreme Court considered the patentability of a living micro-organism. The decision would have a huge impact on the field of Biotechnology.
Facts: Ananda Chakrabarty, a microbiologist filed patent claims for the human-made, genetically engineered bacterium that was capable of breaking down multiple components of crude oil. A patent examiner rejected the patent because it was outside of the scope of the patentable subject matter under 35 U.S.C. §101.
The Patent Office Board of Appeals affirmed and ruled that living things are not patentable subject matter under Section 101. The Court of Customs and Patent Appeals reversed this decision holding that the fact that micro-organisms are alive is insignificant for patent law. Diamond, the Commissioner of Patents, petitioned the United States Supreme Court for certiorari against the decision of the Court of Appeals.
The main issue before the Court was whether the respondent’s micro-organism qualifies as patentable subject matter.
Diamond raised the argument that with the enactment of the Plant Patent Act, 1930 and Plant Variety Protection Act, 1970 Congress implicitly understood that living organisms were not within the scope of 35 U.S.C. §101. He also relied upon the judgment in Parker v. Flook wherein it was held that courts should show restraint before expanding protection under 35 U.S.C. §101 into new, unforeseen areas.
Judgment: Section 101 of Title 35 U.S.C. provides for the issuance of a patent to a person who invents or discovers “any” new and useful “manufacture” or “composition of matter.” The court held that a live, human-made micro-organism is a patentable subject matter under Section 101 and that the respondent’s microorganism constituted a “manufacture” or “composition of matter under the statute. The court opined that the organism was a product of human ingenuity “having a distinctive name, character, and use”.
Moreover, the Court rejected the appellant’s argument by holding that the patent protection afforded under the Plant Patent Act, 1930 and Plant Variety Protection Act, 1970 was not evidence of Congress’ intention to exclude living things from being patented. The court pointed out that genetic technology was not foreseen by Congress do not make it non-patentable unless expressly provided. The Court held that the language of the Act was wide enough to embrace the respondent’s invention.
10. Yahoo! Inc. v. Akash Arora & Anr, 78(1999)DLT285
This landmark judgment is the first case relating to cybersquatting in India. Cybersquatting has been defined as the registration, trafficking in, or use of a domain name that is either identical or confusingly similar to a distinctive trademark or is confusingly similar to or dilutive of a famous trademark.
Facts: The plaintiff is a global internet media who is the owner of the trademark ‘Yahoo!’ and the domain name ‘Yahoo.Com’, which are very well-known and render services under its domain name. While the application of the plaintiff for registration of the trademark was pending in India, the defendant Akash Arora started providing similar services under the name ‘Yahoo India’.
The present case is brought out by the plaintiff for passing off the services and goods of the defendants as that of the plaintiff by using a name which is identical to or deceptively similar to the plaintiff’s trademark ‘Yahoo!‘ and prayed for a permanent injunction to prevent the defendant from continuing to use the name.
Issues Involved:
- Whether an action for passing off could be maintained against services rendered?
- Whether a domain name is protected under the Trade and Merchandise Marks Act, of 1958?
- Whether the use of a disclaimer by the defendant will eliminate the problem?
Judgment: The Delhi High Court extensively examined the issues and rejected the defendant’s contention that an action for passing off could only be brought against goods and not services rendered by Section 2(5), Sections 27, 29 and Section 30 of the Act. It was held that the passing off action could be maintained against the service, as the service rendered could be recognized for the action of passing off.
The law relating to passing off is well-settled and clear. The principle behind the same is that no man can carry on his business in a way that can lead to believing that he is carrying on the business of another man or has some connection with another man for the business. The plaintiff is entitled to relief under Section 27(2) and Section 106 of the Act which is governed by principles of Common law.
The Court relied upon the landmark judgment of Monetary Overseas v. Montari Industries Ltd. and reiterated that “When a defendant does business under a name which is sufficiently close to the name under which the plaintiff is trading and that name has acquired a reputation and the public at large is likely to be misled that the defendant’s business is the business of the plaintiff, or is a branch or department of the plaintiff, the defendant is liable for an action in passing off.”
With regard to Issue No. 2, the Hon’ble Court relied on the US case Card Service International Inc. vs. McGee, and held that the domain name serves the same function as a trademark and is hence entitled to the same protection.
While discussing the impact of the disclaimer issued by the defendant, the Court held that it would not eliminate the problem because of the nature of Internet use. The users might not be sophisticated enough to understand the slight difference in the domain name to distinguish between the two.
The Court addressed each of these issues and concluded that Yahoo Inc. had a good reputation in the market and that the name adopted by the defendants was deceptive and misleading causing damage to the reputation of the plaintiff and undue gain for the defendants. In consequence, the court granted an injunction in favour of the plaintiff under Rules 1 and 2 of Order 39 of CPC, 1908.
11. Coca-Cola Company v. Bisleri International Pvt. Ltd. and Ors., (2009) 164 DLT 59
This case is better known as the "MAAZA War case". This was decided by the Delhi Court.
Facts: The plaintiff (Coca-Cola) is the largest brand of soft drinks operating in 200 countries whereas Defendant No1 earlier known as Acqua Minerals Pvt. Ltd. used to be a part of the Parle Group of Industries. The owners of Bisleri had sold the trademarks, formulation rights, know-how, intellectual property rights, and goodwill etc. of their product MAAZA amongst others to the plaintiff by a master agreement.
In March 2008, when the plaintiff filed for registration of the MAAZA trademark in Turkey, the defendant sent a legal notice repudiating the Licensing Agreement thereby ceasing the plaintiff from manufacturing MAAZA and using its trademarks etc. directly or indirectly, by itself or through its affiliates. In consequence, the plaintiff claimed permanent injunction and damages for infringement of trademark and passing off. The plaintiff also alleged that the defendant had unauthorisedly permitted the manufacture of certain ingredients of the beverage bases of MAAZA to be manufactured by a third party in India.
Issues Involved:
- Does the Delhi High Court have jurisdiction in the present case?
- Is there any infringement of the trademark or passing off?
- Is the plaintiff entitled to get a permanent injunction?
Judgment: It was held that the Court had jurisdiction to decide the case if a threat of infringement exists. It was pointed out that an intention to use the trademark besides direct or indirect use of the trademark was sufficient to give jurisdiction to the court to decide on the issue.
The court held that it is a well-settled position of law that exporting products from a country is to be considered as a sale within the country wherefrom the goods are exported and it amounts to infringement of the trademark.
The Court granted an interim injunction against the defendant from using the mark in India as well as in the export market to prevent the plaintiff from irreparable loss and injury and quashed the appeal by the defendant.
12. D.C. Comics v. Towle, 802 F.3d 1012 (2015)
This very interesting case is a recent landmark judgment in the field of copyright law.
Facts: DC Comics (DC) is the publisher and copyright owner of comic books featuring the story of the world-famous character, Batman. Originally introduced in the Batman comic books in 1941, the Batmobile is a fictional, high-tech automobile that Batman employs as his primary mode of transportation. The Batmobile has varied in appearance over the years, but its name and key characteristics as Batman’s personal crime-fighting vehicle have remained consistent.
Since its creation in the comic books, the Batmobile has also been depicted in numerous television programs and motion pictures. Two of these depictions are relevant to this case: the 1966 television series Batman, starring Adam West, and the 1989 motion picture Batman, starring Michael Keaton.
Defendant Mark Towle produces replicas of the Batmobile as it appeared in both the 1966 television show and 1989 motion picture as part of his business at Gotham Garage, where he manufactures and sells replicas of automobiles featured in motion pictures or television programs for approximately “avid car collectors” who “know the entire history of the Batmobile.” Towle also sells kits that allow customers to modify their cars to look like the Batmobile, as it appeared in the 1966 television show and the 1989 motion picture.
DC filed this action against Towle, alleging, among other things, causes of action for copyright infringement, trademark infringement, and unfair competition arising from Towle’s manufacture and sale of the Batmobile replicas. The district court passed a summary judgment in favour of DC.
The main question for consideration is whether BATMOBILE is entitled to copyright protection. The Court of Appeal relied on a number of historical decisions in deciding this case. The court held that copyright protection extends not only to the original work as a whole but also to “sufficiently distinctive” elements, like comic book characters, contained within the work.
Although comic book characters are not listed in the Copyright Act, courts have long held that, as distinguished from purely “literary” characters, comic book characters, which have “physical as well as conceptual qualities”, are copyrightable. The court relied on the judgment in Hachiki’s case where it was held that automotive character can be copyrightable. Moreover, it has been held that copyright protection can apply to a character even if the character’s appearance changes over time.
The U.S. Court of Appeals for the Ninth Circuit, in this case, developed a three-part test for determining protection of a character appearing in comic books, television programs or films under the 1976 Copyright Act, independent of any specific work in which it has appeared and irrespective of whether it “lacks sentient attributes and does not speak” as explained above.
Judgment: The court held that the present case satisfied the three-part test DC had the right to bring suit because it had reserved all merchandising rights when it granted licenses for the creation of the 1966 Batman television series and the 1989 Batman film.
It was held that the 1966 program and 1989 film were derivative works of the original Batman comics and that any infringement of those derivative works also gave rise to a claim for DC, the copyright owner of the underlying works.
It was found that Towle’s replicas infringed upon DC’s rights hence the Court also upheld the District Court’s refusal to allow Towle to assert a laches defense on DC’s trademark claims because the infringement was found to be willful.