List of Cases Decision/ Ratio Decidendi Page

No.
Hawkins Cookers Ltd. v. The main objective of the Copyright Act is to give protection to the owner of the copyright from the dishonest manufacturers, who 41
Magicook Appliances Co. try to confuse public and make them believe that the infringed products are the products of the owner. Further, it wants to
discourage the dishonest manufacturers from enchasing the goodwill of the owner of the copyright, who has established itself in
the market with its own efforts.
M/s Mishra Bandhu Karyalaya Held that the laws of copyright do not protect ideas, but they deal with the particular expression of ideas. 41
& Others v. Shivaratanlal Koshal
Tata Sons Ltd. vs. Manu Kosuri Any mark used business entity in the trade or business in any form, for distinguishing itself from other, can qualify as trademark. 43
& Ors. [90 (2001) DLT 659] and Cases in which the judiciary has been proactive in protection of trademarks to domain names.
Yahoo Inc. vs. 1999 PTC 201
Sony Corporation vs. K. Facts: 51
Selvamurthy  Plaintiff wanted an order of permanent injunction to be passed against the defendant, from using their mark ‘SONY’
 Defendant was an Indian national engaged in the business of transport services and car rental services under the name and
style of M/s. Sony Tours and Travels at Ulsoor, Bengaluru.
 Defendant’s contention - SONY is the nick name of his wife Smt. Kavitha and the name sony as origin in india and sony in
tamil and telugu languages means beauty and it is the name of a female/girl.
 The name of his business concerns i.e. Sony Tours and Travels does not cause any manner of confusion or likelihood of
confusion the business and services of defendant is entirely defendant from that of the plaintiff’s business corporation.
Issues:
 Whether the plaintiff Sony corporation establishes that the use of the mark by the defendant as Sony Tours and Travels in
its travel business would take unfair advantage of or is detrimental to the distinctive character or repute of its registered
trade mark “Sony” and thereby a registered mark is infringed by the defendant?
Decision:
 The nature of business of defendant is entirely different from that of the goods manufactured by the plaintiff SONY
corporation. The trade mark of plaintiff corporation is “Sony”. Whereas the defendant is using the name as “Sony Tours
and Travels”.
 The use of Sony tours and travels by the defendant in respect of its travel business would not be detrimental to the
reputation of the trade mark of the plaintiff herein in any manner.
 No average man of ordinary prudence can even think of connecting the same with the plaintiff’s manufacturing business.
Raj Kumar Prasad & anr vs. Whether a registered proprietor of a trademark can sue another registered proprietor of a trademark alleging deceptive 53
Abbott Healthcare Pvt Ltd similarity? – YES

Facts:
 Plaintiff (Abbott) was registered proprietor of the mark ‘ANAFORTAN’ claiming a user since 1988 through it’s predecessor
in interest.
  Defendant started selling ‘AMAFORTEN’ since 2012 and had a registration for the same in the year 2011.
 Plaintiff filed a suit for permanent injunction restraining infringement of Trade Mark and passing off.
 Defendant pleaded that as per Section 28 (3) of the Trade Marks Act, 1999, the Plaintiff cannot sue the Defendant as the
Defendant is the registered proprietor of the mark ‘AMAFORTEN’.
Decision of Single Judge:
On the ground of passing off the Hon’ble Single Judge restricted the Defendant from using the impugned trademark ‘AMAFORTEN’
or any other trademark deceptively similar to the trademark of the plaintiff ‘ANAFORTAN’.
Decision of Division Bench:
The Division Bench held that a registered proprietor of a trademark can sue another registered proprietor of a deceptively similar
trademark. Upheld the decision of the Single Judge.
Vringo Infrastructure Inc. &  Who can be qualified to be a scientific advisor under Patent Law? 54
Anr. vs. Indiamart Intermesh Issues:
Ltd. & Ors  Whether the plaintiffs are suffering irreparable loss?
 Should the injunction be granted in favour of plaintiffs due to alleged infringement?
Decision:
 An irreparable loss is a loss which cannot be compensated in terms of money. That the plaintiffs will not suffer an
irreparable loss in case injunction granted stands vacated.
 (Last 3 points mentioned in the case in page 56 is the answer to the 2 nd issue).
‘Tirupati laddu’ GI Status This case debates the issue of GI tag in favour of Tirupati Laddu. Points for defence are: 56
Controversy 1. GI is granted for protection of communal right.
2. GI’s goal is to advance the economic well-being of local producers.
3. GI is granted for a product with specified properties that are related to its unique location.
Dassault Systems Solid Works Software infringement case. 57
Corp. vs. Spartan Engineering Issues:
Ind  Whether the copyright of the software programme belongs to the plaintiffs and is infringed by the defendant?
Decision:
Court held that- “Software infringement is a serious issue, and deserves to be nipped in the bud.” The Court issued an interim
order in favour of Dassault preventing Spartan from using, duplicating, or disseminating any of Dassault’s illegal, unlicensed, or
pirated software projects. Additionally, the decision ordered Spartan to format and delete any data that would facilitate the
infringement of Dassault’s copyright.
Mr. Anil Gupta and Anr. vs. Mr. “Swayamvar” reality show case. 58
Kunal Dasgupta and Ors. Issues:

 Can there be a copyright in an idea, subject matter, themes, and plots, which existed in the public domain?
 Could there be a violation of copyright if the theme is the same as that which existed in the public domain but is presented
and treated differently?
Decision:
Firstly, bare idea cannot be copyrighted under law; instead, once developed into a concept with required details shall be registered
under copyright act. The court observed that conceptualization on swayamvar similar to mythological concept through developing
its own creative way by plaintiff’s amounts to novelty; therefore it attracts protection under copyright law.

This amounted to infringement of Plaintiff’s Copyright if any act done by defendant towards telecasting TV show based on
Plaintiff’s Concept notes. Accordingly, the Court ordered temporary injunction restraining Defendants from telecasting till disposal
of suit.

Homag India Pvt. Ltd. vs. Mr.  Mr. Ulfath Ali Khan had to maintain, as per the signed letter of appointment, confidentiality of the information of plaintiff’s 59
Ulfath Ali Khan and IMA AG business both during the course of employment and also thereafter. He was not expected to take up employment with any
Asia Pacific PTE. Ltd competitor of Homag India for a period of one year after termination of his employment or resigning from services.
 But Mr Ulfath Ali Khan committed breach of the terms of employment by working for IMA AG Asia Pacific when the
services of Mr. Khan with the plaintiff was subsisting.
Decision:
The court took into account the materials relied upon by Homag India, in particular the letter of agreement and agreement of
contract between the first and the second defendant, to prima facie establish that the second respondent IMA AG Asia Pacific has
infringed the legal rights of the appellant Homag India.
Maharashtra Hybrid Seed Co Whether sale or disposal of hybrid seeds will amount to sale or otherwise disposal of the “propagating or harvested material” of 60
and Anr vs. Union of India and the parent lines and consequently destroy their novelty under Section 15(3) (a) of the Act?
Anr, on 9th January, 2015
(Protection of Plant Varieties (Answers expressly provided in page 60 and 61)
and Farmers’ Rights
M/s Chembra Peak Estates As per Section 24, an SBB has the power to restrict certain activities in the state that might be going against the objectives of 62
Limited vs. State of Kerala & conservation. In the context, the court hinted that if the Government were to consider the inputs of the SBB on concerns of
Others W P (Civil) No. 3022 of biodiversity conservation, the authorities may be compelled to reconsider the land acquisition of a biodiversity-rich area for
2008 (I) (Bio-Diversity) commercial activities.
 PATENTS
Bishwanath Prasad Radhey  It was held by the Hon’ble Supreme Court of India that the object of Patent law is to encourage scientific research, new 98
Shyam v. Hindustan Metal technology and industrial progress.
Industries  Grant of exclusive privilege to own, use or sell the method or the product patented for a limited period, stimulates new
inventions of commercial utility.
 The price of the grant of the monopoly is the disclosure of the invention at the Patent office, which after expiry of a fixed
period of the monopoly passes into the public domain.
Raj Prakash v. Mangat Ram  An invention is to find out something or discover something not found or discovered by anyone before. 107
Choudhary  It is not necessary that the invention should be anything complicated. The essential thing is that the inventor was first to
adopt it.
Ganendro Nath Banerji v.  Novelty need only be established in the process of manufacturing, not in the article produced. Novel combination of two 108
Dhanpal Das Gupta known ideas may be sufficient to establish novelty of subject matter in this respect.
Ram Narain Kher v. M/s  Essential that the party claiming Patent should specify what particular features of his device distinguish it from those which 108
Ambassador Industries had gone before and show the nature of the improvement which is said to constitute the invention.
 A person claiming a Patent has not only to allege the improvement in art in the form but also that the improvement
effected a new and very useful addition to the existing state of knowledge.
Novartis AG v. Union of India &  The primary purpose of section 3(d) is to prevent “evergreening”. 111
Ors.  “Evergreening” is a term used to label practices that have developed in certain jurisdictions wherein a trifling change is
made to an existing product, and claimed as a new invention. The coverage/protection afforded by the alleged new
invention is then used to extend the patentee’s exclusive rights over the product, preventing competition.
Bishwanath Prasad Radhey  Mere collocation of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify 112
Shyam v. Hindustan Metal for the grant of a patent.
Industries
Lallubhai Chakubhai v.  If the result produced by the combination is either a new article or a better or cheaper article than before, the combination 112
Chimanlal and Co. may afford subject-matter of a patent.
 Where a slight alteration turns that which was practically useless into what is useful and important, it is fit subject matter
for a patent
Rampratap v. Bhabha Atomic  When two or more features of an apparatus or device are known, and they are juxtaposed without any interdependence 112
Research Center on their functioning, they should be held to have been already known.
LML Ltd vs . BAJAJ Auto Ltd.  LML Limited is an Indian company incorporated under the Companies Act, 1956 carrying out their business for several 116
[IPAB] years in the field of motor vehicles including two - wheeled motor vehicles such as motorcycles, motorscooters, mopeds
and the like.
 They received a cease and desist notice from respondent (Bajaj) on 12th April 2004.
 Application was dismissed as the parties could not prove to IPAB the following grounds:
1. That the claimed patent is nothing more than a mere workshop improvement.
 2. There is no complete specification that sufficiently and fairly describes the invention.
Imperial Chemical Industries  In respect of one single invention there must be one single patent. A patent may be in respect of a substance or in respect 119
Ltd. v. Controller General of of a process.
Patents, designs & Trade Mark  But it is not possible to bifurcate a patent and state that it relates to the substance and the other to the process. In order
& Another to have a complete patent, the specifications and the claims must be clearly and distinctly mentioned.
In re: National Carbin Co.  Controller of patents is not technically a court or a tribunal exercising judicial functions in the legal acceptation of terms 128
Incorporated but that does not make it untrue to say that so far as he has a duty imposed upon him to hear and determine objections to
applications for leave to amend, there is a fair analogy between his position and the position of the court.
Accenture Global service GMBH  The method to create a data mapping account was the claimed innovation in this case, and the argument against it was 144
vs. Assistant Controller of that it was difficult to identify the method’s technological outcome. Following investigation, it was determined that the
Patents and Designs invention is not software in and of itself but rather a system that combines software and online services. Therefore, it
was given a patent because it did not fall under the exception of Section 3k of the Patents Act, 1970.
Facebook Patent, Google and  144
Apple Patent
Shogun Organics Ltd. vs. Gaur  Plaintiff (Shogun Organics Ltd.) is a company engaged in the research, manufacture, and sale of mosquito repellents. The 152
Hari Guchhait & Ors. (Mosquito Defendant (Manaksia Ltd.) is a competitor of the Plaintiff. The plaintiff filed patent application in the year 2007 and was
Repellant Case) granted the same in the year 2009. The Defendant filed a pre-grant opposition in the year 2007 which was dismissed.
 Plaintiff came to know that the Defendant is using its patented technology. To restrain the Defendant and other aiding
parties from causing any further damage to the Plaintiff, a suit for grant of permanent injunction was filed against the
Defendants.
 The Plaintiff submitted that it has been granted registration under section 9(3) of the Insecticides Act, 1968 in the year
1997. The defendant has been granted registration under section 9(4) of the act in the year 2009. The plaintiff’s contention
was that the Defendant’s registration is merely a follow-on registration.
 The Plaintiff submitted that there were various methods for producing D-trans Allethrin but they all had certain
disadvantages attached to it. It was not until the Plaintiff developed a six-step synthesis process which was highly efficient
and eliminated such disadvantages.
 As long as prior use of D-trans Allethrin is concerned, it is not denied that it was not used before the patent was filed for,
but the process employed before for its production was totally different from the patented process.
Issues:
 Registration under the Insecticides Act would constitute as prior publication or not?
 Whether the Defendants have infringed Plaintiff’s Patent or not?
Decision:
 Permanent injunction was granted.
 The Defendants failed to submit the process of manufacturing used by the Defendants after given constant reminders by
the Court. Hence, there was no evidence on record that could rebut the plaintiff’s case of infringement.
 Defendant’s argument pertaining to Prior/Public Use - the court dismissed it after relying on the reasoning mentioned in
 Lallubhai’s case. Lallubhai’s case held that “if you have an article manufactured under a secret process and that article is of
such a character that nobody by examining it can find out the secret of that manufacture, then the sale of that article in
public cannot amount to public user of the process”. Hence, although the Plaintiff was using and selling D-trans Allethrin
prior to the grant of patent but since nobody can ascertain the process of manufacturing by mere examination of the
product it does not amount to Public Use.
 The Hon’ble High Court after analyzing section 30 of the Patent Act and perusal of certain relevant judgments held that
“disclosure to a Government Department or to any other authority, not just of the patentee, but by any other person
would not constitute prior publication”.
Bajaj Auto Limited vs. TVS  Speedy disposal of Intellectual property rights cases 154
Motor Company Limited  The Supreme Court of India by this landmark judgment has directed all the courts in India for speedy trial and disposal of
intellectual property related cases in the courts in India.
 The Supreme Court directed that hearing in the intellectual property matters should proceed on day to day basis and the
final judgment should be given normally within four months from the date of the filing of the suit.
Bayer Corporation vs. Union of  Writ petition filed instead of suit for infringement in patent case. 154
India
Novartis AG v. Union of India &  Rejection of a patent for a Drug which was not ‘inventive’ or had an superior ‘efficacy’ 154
Ors.  - Novartis filed an application to patent one of its drugs called ‘Gleevec’ by covering it under the word invention mentioned
in Section 3 of the Patents Act, 1970.
 Supreme Court rejected the application on 2 grounds:
1. There was no invention of a new drug, as a mere discovery of an existing drug would not amount to invention.
2. Under Indian Patent Act for grant of pharmaceutical patents apart from proving the traditional tests of novelty,
inventive step and application, there is a new test of enhanced THERAPEUTIC EFFICACY for claims that cover
incremental changes to existing drugs which also Novartis’s drug did not qualify.
 So, in this case, the company should have proven that the new version works better for treating diseases than the old
one. The term "efficacy" is crucial here.
 If a new invention does not pass the Section 3(d) test, it cannot get a patent. They also clarified that this case does not
mean Section 3(d) blocks all small improvements.
 The Court finally held that beta crystalline form of Imatinib Mesylate is not a new form of known substance and dismissed
the appeal by Novartis AG.
Nuziveedu Seeds Ltd. And Ors.  Whether the summary invalidation of Monsanto’s patent was valid? 155
vs. Monsanto Technology LLC  The Supreme Court allowed the appeal filed by Monsanto and held that summary adjudication of a technically complex
and Ors. suit requiring expert evidence also, at the stage of injunction in the manner done, was certainly neither desirable nor
permissible in the law
Dr Snehlata C. Gupte vs. Union  What shall be the actual date of grant of a patent? 156
of India & Ors  The court held that the date of the grant of a patent is the date on which the controller passes an order to that effect on
the file i.e. on the day in which the Controller makes a decision to grant a patent. The issue of a certificate at a later date is
 then nothing more than a mere formality.
Global cases of cross licensing  Nokia & Lenovo 170
 Google and Samsung
 Google and SAP
 Apple and Microsoft
Biswanath Prasad Radhey  The most important case in inventive step jurisprudence in India. 195
Shyam v. Hindustan Metal  The court stated that the patented invention was merely an application of an old invention, known for decades before
Industries 1951, for the traditional purpose of scraping and turning utensils, with a slight change in the mode of application, which
was no more than a ‘Workshop improvement’.
 The invention, according to the court, was a normal development of an existing manner of manufacture not involving
something novel which would be outside the probable capacity of a craftsman. According to the Court, the invention
would have been obvious to any skilled worker in the field in the light of existing knowledge. As the invention involved a
mere addition of a lever and bracket, which did not involve a substantial exercise of the inventive power or innovative
faculty by the inventor, the Court stated that the invention was obvious.
 Furthermore, as the invention was publicly used by the patent holder before the date of filing of the patent application,
the Court observed that the novelty of the invention was negated.
 In the light of its analysis, the court concluded that the invention lacked novelty and inventive step.
Press Metal Corporation  The invention is described in an obscure and ambiguous language, and on this ground, the patent is liable to be refused. 205
Limited V. Noshir Sorabji
Pochkhanawalla
M/s. Crompton Greaves Ltd.  A mere statement by the opponent company that they are the first in the field of manufacturing alone cannot stop the 216
Mumbai vs. M/s. Bharat Heavy applicant company from obtaining a patent unless the opponents establish that they were manufacturing an identical
Electricals Ltd. product before the date of filing.
 (The photocopies furnished by them were not evidential enough).
Monsanto company v.  It was held that the invention was publicly known since its formula was published in the report of the International Rice 216
Coramandal Indag Products (P) Research Institute in the year 1968 and its common name But achlor was published in the same report in the year 1969.
Ltd.  It is not necessary that it should widely be used to the knowledge of the consumer public. It is sufficient if it is known to
the persons who are engaged in the pursuit of knowledge of the patented product or process either as men of science or
men of commerce or consumers.
Pfizer Products Inc. vs. The  PAB in this case stated that in order to have valid objection about anticipation by prior claiming, the following has to be 218
Controller of Patent and established:
Designs 1. That there is an invention for which an application for patent has been made in India (hereinafter referred to as
‘the first application’).
2. The second invention for which a patent has been granted is “claimed in any claim” of the complete specification
of the first application.
 3. The first application is published after the priority date of the claim of the patentee.
4. The claim of the first application has a priority date that is earlier than the claim of the patentee.
TATA Global Beverages Limited  In this case it was held that the sufficiency requirement is met if at least one way of working the invention is clearly 221
vs. Hindustan Unilever Limited indicated enabling the skilled person to carry out the invention.
and Ors.
Farbewerke Hoechst  In this case, the Court while discussing the sufficieny of disclosure stated the Halsbury’s branches of insufficiency of 222
Aktiengesellschaft Vormals description
Meister Lucius and Bruning a (1) the complete specification must describe “an embodiment” of the invention claimed in each of the claims and that the
Corporation and Ors. vs. description must be sufficient to enable those in the industry concerned to carry it into effect “without their making
Unichem Laboratories and Ors. further inventions”; and
(2) that the description must be fair i.e. it must not be unnecessarily difficult to follow.
Ravi Kamal Bali vs. Kala Tech  First case of position of ‘Doctrine of Equivalence’ 232
and Ors.  The plaintiff contended that Kala Tech’s accomplish the same task, in basically the same manner and delivers the same
outcome so contributing to the infringement.
 Regardless of the fact that the interim injunction was not granted, the significance of the case resides in the fact that it was
the first time the theory of equivalents was debated in India, despite the temporary injunction not being granted.
Lektophone Corporation vs. The  Doctrine of Colorable Variation 233
Rola Company  A patent holder’s patents were of sound-reproducing instruments for phonographs. According to the patent application,
size and dimensions of the invention were the essence of the patent. The patent holder claimed that a radio loud speaker
manufactured by the defendant (manufacturer) infringed the patents. The manufacturer’s devise also had a central paper
cone, but the cone was smaller than that of the patented devise and that constituted colorable alteration. The court held
that because colorable alterations of the manufacturer’s devise, it would not accomplish the object specified in the patent
claims and hence did not infringe upon the patent holder’s claims.
F. Hoffmann-La Roche Ltd. and  In February 2007, Roche after claiming that it had been granted a patent for ‘Erlotinib’ started selling the drug under the 240
Anr. v. Cipla Limited brand name TARCEVA.
 In January 2008, it was reported that Cipla is planning to launch a generic version of ‘Erlotinib.’ This made Roche initiate
infringement proceedings against Cipla.
 Roche claimed that Cipla had infringed Patent in 774 also known as ‘Erlotinib Hydrochloride’ which is licensed to Roche.
 Roche lost the above suit as the Honorable court felt that stopping Cipla’s manufacture would be against public interest
and so the balance of convenience was in Cipla’s favor.
 The court was of the opinion that as between the two competing public interests, i.e. the public interest in granting an
injunction to the patentee, as opposed to the public interest in access to a lifesaving drug for the people, the balance has
to be tilted in favor of the latter. The court also opined that the patients in India can ill- afford high priced imported
versions of the drug like “Tarceva”.
 On appeal, the Division Bench upheld the decision but focused more on the failure of Roche to establish a prima facie case
of infringement.
  The SLP filed by Roche against the decision was declined as well.
 The parties then returned to the single judge to the trial on main relief; the judge delivered judgment and Roche could not
sufficiently prove that Cipla’s manufacture of Erlocip infringed its patent IN774.
 The case was then taken to the Division Bench where the case went in favor of Roche.
Biswanath Prasad Radhey  Guidelines to determine Infringement of a patent 242
Shyam vs. Hindustan Metal  They are-
Industries (i) Read the description and then the claims;
(ii) Find out what is the prior art;
(iii) What is the improvement over the prior art;
(iv) List the broad features of the improvement;
(v) Compare the said broad features with the defendant’s process or apparatus;
(vi) If the defendant’s process or apparatus is either identical or comes within the scope of the plaintiff’s process or
apparatus, there is an infringement.
Anton Piller KG vs.  Essentials to be considered while considering issue of Anton Piller Order 242
Manufacturing Process 1. The Plaintiff must have a strong prima facie case;
2. The potential or actual damage must be of a serious nature;
3. The Defendants must be shown to have incriminating documents or items in their possession, and there must be clear
evidence that they may destroy such evidence before further legal action is taken against them; and
4. The issuance of such an order must not harm the Defendant or his case.
Bucyrus Europe Ltd. vs. Vulcan  Court held that Anton Piller order can be passed in the following situations : 243
Industries Engineering Co Pvt (i) where the plaintiff has an extremely strong prima facie case,
Ltd. (ii) where the actual or potential damage to the plaintiff is very serious, and
(iii) where it was clear that the defendant possessed vital evidence,
(iv) there was a real possibility that the defendant might destroy or dispose of such material so as to defeat the ends
of justice, and
(v) the purpose of Anton Filler order is the preservation of evidence.
Taj Television Ltd. and ors. vs.  John Doe Order Case 244
Rajan Mandal and ors.  The Hon’ble Delhi High Court issued the first-ever John Doe decision prohibiting the streaming of the FIFA World Cup by
unlicensed cable providers. The first ex-parte interim order, known as John Doe’s/Ashok Kumar’s order, was issued,
enabling the plaintiff to search and seize the tools and devices of unidentified defendants. This was the beginning of the
practise of issuing orders against unidentified defendants. Also, an injunction order was issued against unidentified parties
who might be in a position to violate the plaintiff’s legitimate rights.
Norwich Pharmacal Co. vs.  Norwich Pharmacal was an American corporation that owned the patent for a chemical compound called “furazolidone.” 244
Customs and Excise  Its U.K. subsidiary and licensee, Smith Kline & French Laboratories, alleged that a large volume of the counterfeited
Commissioners, compound was being imported to the U.K. by unknown individuals.
 Intending to hold those importers accountable for patent infringement, Norwich and its subsidiary made a formal request
 to the U.K. Customs and Excise to release the names and addresses of the importers.
 The customs officials refused to do so, explaining that with the exception of publishing statistics showing the total
quantities of the imported product, the names and addresses of the importers were confidential.
 The U.K. House of Lords, reversing a Court of Appeal decision, established that a party may request the court to order the
disclosure of information where there has been or may have been wrongdoing by a third party and where the information
is required in order to seek justice in respect of that wrongdoing. The appellant owners and licensees of a chemical
compound patent brought an action against the Customs and Excise Commissioners to obtain the names and addresses of
importers that they intended to sue for infringement. The House of Lords reasoned that justice requires a person who
unwittingly facilitates the perpetration of a wrong to disclose relevant information unless there is some consideration of
public policy that prevents that.
Indoco Remedies Ltd vs. Bristol  In the recent case of the Delhi High Court granted an interim injunction, finding that Indoco’s drug ‘Apixabid’ infringed 247
Myers Squibb Holdings Bristol Myers’s patented drug associated with ‘Apixaban.’ After the injunction was issued, Indoco approached the court on
the grounds of public interest, requesting permission to sell 58,000 strips of their drug, since they had manufactured them
before the injunction order came about.
 Indoco also argued that the pandemic conditions necessitated a higher demand for the drug, since it was necessary for
Covid-19 treatment. They also argued that applying for a compulsory license under Section 84 of the Indian Patents Act,
1970, would have been time consuming given the circumstances.
 The Delhi High Court was not sympathetic to Indoco’s arguments, and refused to lift the injunction. According to the Court,
Indoco had not provided enough evidence to demonstrate that there was an actual shortage of ‘Apixaban’ in India, or that
it was reasonably unaffordable. The court specifically said that the material placed before them did not show any
‘overwhelming’ public interest. It also clarified that ‘perceived’ or ‘supposed’ public interest is an insufficient ground for
lifting an injunction, unless the injunction order is prima facie unsustainable on merits.
BAJAJ Auto Limited vs. TVS  Bajaj Auto filed a suit seeking a permanent injunction under Section 108 of the Patents Act, 1970, claiming that TVS Motor 247
Motor Company Limited JT had infringed upon their patented technology used in two and three-wheelers, specifically targeting the proposed 125-CC
FLAME motorcycle. Concurrently, TVS Motor filed a suit against Bajaj Auto, alleging groundless threats of infringement and
seeking a permanent injunction to protect their product, TVS Flame, from interference.
 The court observed that the defendants had incorporated improvements in their product, such as the use of three valves
instead of two, which distinguished it from the patented technology of the plaintiff. The court held that these
modifications constituted an inventive step, resulting in a non-infringing product.
Bayer Corporation vs. Union of  The Indian Patent Office awarded a patent to Bayer Company (Plaintiff) in 2008 for its cancer medicine “Sorafenib 248
India Tosylate,” which is used to treat liver and kidney cancer.
 The Drug Controller of India (Defendants) subsequently issued the first-ever Compulsory License to Natco Pharma in 2012
so that it may create a generic version of this medication.
 The medicine was being sold by the plaintiff for Rs. 2,80,000 each month for a course, and the defendant pledged to simply
make it available for Rs. 8,800. Plaintiff filed a request for a stay of the licence with the Intellectual Property Appellate
Board (IPAB), claiming that the licence granted by the DGCI was defective, illegitimate, and unsustainable.
 Plaintiff was upset that Natco had received a Compulsory License. The IPAB, however, denied the plaintiff’s appeal,
concluding that the license’s reduced price points that made it more accessible to individuals meant that it had been
granted in the public interest. The plaintiff then appealed the decision to the Bombay High Court (HC).
 The Writ Petition was dismissed. The Petitioner filed a Special Leave Petition before the Hon’ble Supreme Court of India,
challenging this decision. However, the Hon’ble Supreme Court did not interfere with the decision of the Bombay High
Court and dismissed the Special Leave Petition.
 TRADEMARKS
N.R. Dongre and Ors. Vs  Whirlpool Corporation obtained the registration of the trademark ‘Whirlpool’ in India in 1956 for cloth dryers, dish 260
Whirlpool Co. washers, washing machines among other appliances.
 In 1986 Mr. N.R Dongre filed for registration of trademark ‘Whirlpool’. After the publication, TVS Whirlpool Ltd opposed
the said registration. But it was dismissed on the grounds of Nonuse and non-reputation of trademark ‘Whirlpool’ in India
and on the ground that no confusion is likely to arise if Mr. N.R Dongre and his company is allowed to sell out products
bearing the name’ Whirlpool’.
 The TVS Whirlpool Ltd filed for an appeal against the order of the Assistant Registrar before the Delhi High Court. The
Single Judge Bench held in favour of TVS Whirlpool Ltd that they had been selling their products to the U.S embassy and
ATO in India before Dongre even came into the market.
 Also they have given advertisements in various international magazines being circulated in India about the products under
the trademark and name ‘Whirlpool’. And hence, a temporary injunction was granted stating that there were no reliable
and conclusive evidence of Mr. N.R Dongre and Co. having carried out marketing of their washing machines bearing the
trademark 'Whirlpool' for any considerable time prior to the date of grant of injunction.
 Thereafter an appeal was filed before the division bench of the High Court and the decision of the Single Judge bench was
upheld. Then in a Special Leave Petition before the Supreme Court under Article 136 of the Indian Constitution, the court
upheld the decision of the Learned Single Judge as well as that of the Division Bench.
 Thus, in this manner the concept of 'Trans-Border Reputation' was recognized by the Supreme Court.
Vivekananda Match company v.  It has been held that if there is omission of the name of any partner in TM-1 (i.e. application to register a trade mark for a 266
Jupiter Match Works specification of goods or services) or corresponding new application form, the omission can be corrected when supported
by necessary documents. Such corrections will not constitute change in the proprietorship of the mark.
 However, any new addition or deletion of name of a partner subsequent to the date of application will mean change in the
partnership.
Consolidated Foods  A trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods 269
Corporation v. Brandon & Co. irrespective of the length of such user and the extent of his trade. Priority in adoption and use of a trade mark is superior
Pvt. Ltd to priority in registration.
Commissioner of Income-tax v.  The Supreme Court has held that the expenditure incurred on registration of trade mark is capital expenditure thus 269
Finlay Mills Ltd. allowable deduction under the Income-tax Act.
Ramdev Food Products (P) Ltd.  Apex Court held that the registration of trade marks is envisaged to remove any confusion in the minds of the consumers. 269
v. Arvind Bhai Rambai Patel If, thus, goods are sold which are produced from two sources, the same may lead to confusion in the mind of the
consumers. In a given situation, it may also amount to fraud on the public. A proprietor of a registered trade mark
indisputably has a statutory right thereto. In the event of such use by any person other than the person in whose name the
trade mark is registered, he will have a statutory remedy in terms of Section 21 of the Trade & Merchandise Marks Act,
1958. Ordinarily, therefore, two people are not entitled to the same trade mark, unless there exists an express licence in
that behalf.
M/s J K Oil Mills v. M/s Adani  To constitute infringement under the provisions of Section 29 of the Trade Marks Act, it would be necessary to show that 276
Wilmar Ltd impugned trade mark (label) is identical or deceptively similar to the registered trade mark.
Parle Products v. J P & Co  Apex Court observed that in this case the packets are practically of the same size, the colour scheme of the two wrappers is 276
almost the same; the design on both, though not identical, bears such close resemblance that one can easily be mistaken
for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other
with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence.
The words “Gluco Biscuits” on one and “Glucose Biscuits” on the other occupy a prominent place at the top with a good
deal of similarity between the two writings.
 Anyone who has a look at one of the packets on a day, may easily mistake the other if shown on another day as being the
same article which he had seen before.
Hearst Corpn. v. Dalal Street  Esquire and Esquare magazine case. 277
Communication Ltd
Brooke Bond India v. C. Patel &  Taj Tea trademark infringement case 277
Co
Cox Distillery v. McDowell & Co.  COX DIPLOMAT trademark case 277
East and Hosiery Mills Pvt. Ltd.  Moti and Sacha Moti 277
v. Agarwal Textiles Mills
Infosys Technologies Ltd. v.  INFOSYS name infringement case 278
Adinath Infosys Pvt. Ltd. & Ors
Easygroup IP Licensing Ltd &  Easygroup IP Licensing Ltd (Plaintiff) filed a suit for permanent injunction restraining infringement of registered trademark, 279
Anr vs. Easyjet Aviation Services passing off, delivery up and damages against Easyjet Aviation Services Pvt Ltd (defendant) in respect of the alleged
Pvt Ltd & Anr infringement and passing off of the plaintiff’s registered trademark “easyJet”.
 The plaintiffs allege that defendant is malafidely using the aforesaid trademark “EasyJet” in relation to services that are
identical to those covered by the classification in which the plaintiffs mark “easyJet” is registered.
Decision:
The suit was decreed for the following reasons:
(i) plaintiff’s mark “easyJet” was first registered in the United Kingdom in 1995 in respect of class several classes
including class 39 which covers the services offered by the plaintiffs and the defendants.
(ii) The plaintiff’s website www.easyJet.com, went live in 1995. The said website has been accessible to Indians who
wish to travel on the plaintiff’s airline on its operational routes abroad since 1998. If the plaintiffs have customers
in a country, it can be presumed that they enjoy a reputation in that country.
(iii) It is also pertinent to note that the suit trademark is a coined word. No explanation has been offered by the
defendants as to why they chose the suit trademark. The defendants have chosen not to contest the present
proceedings and, therefore, the only valid inference that can be drawn is that the defendants adopted the
impugned trademark to ride on the plaintiffs’ goodwill and popularity.
 (iv) In the present case too, the plaintiff and the defendants are operating in the same sphere of activity. The services
provided by the plaintiff and defendants are identical in nature. Therefore, the likelihood of confusion and
deception is strong.
Hawkins Cookers Ltd vs.  Hawkins Cookers Limited are the proud registered owners of the trademark “Hawkins”, in respect of Pressure Cookers, and 280
Murugan Enterprises all parts thereof, including Gaskets, and as far as pressure cookers are concerned, is a renowned and reputed brand.
 Murugan Enterprises, the respondents were manufacturing pressure cooker gaskets and selling them under the Trademark
‘MAYUR’. The grievance of the appellants however pertains to the fact that the gaskets were sold in packages which
contained the words ‘suitable for HAWKINS pressure cookers,’ emphasizing upon the word Hawkins, by printing it in red, in
contrast to the other words printed in black.
 The Appellants contented, this was an infringement of the appellants’ trademark, as the gaskets were suitable for any
pressure cooker manufactured by any manufacturer and has no special relation to Hawkins. Hence, the specific usage of
the word Hawkins is done by the respondents to pass off their product under the Hawkins goodwill.
 Single Judge Bench rejected the appellant’s plea, stating that it was not an infringement as the usage of the word ‘Hawkins’
was only to indicate that the Murugan gaskets were capable of being used in ‘Hawkins’ Pressure Cookers and not to
indicate any connection of their company to the trade of Hawkins.
 Division Bench impugned the decision of the Single Judge Bench and held the defendants responsible for infringement of
trademark, asking the defendants to discard the offending packaging within three months, and to indicate that their
gaskets were suitable for all pressure cookers available in the market, without targeting a single brand to avoid future
troubles.
Larsen & Toubro Limited (L&T)  The plaintiff, Larsen & Toubro Ltd. (L&T), a company owning the trademark/logo L&T (in a circle), is a renowned and 282
vs. Leuci Communications & Or established multi-national business organization that has been carrying on its business in India for many years. It has an
impressive sales figure to flaunt and also spends large sums of money in advertising its mark and products.
 A sales engineer of L&T has come across a mobile charger made in China being sold with the L&T logo (in a circle) engraved
on it. Following this, L&T has brought an action against the defendant company alleging, inter alia, infringement of
trademark, likelihood of causing confusion, passing-off and deliberate misrepresentation to the public.
Issues:
(i)Whether use of the mark L&T by the defendant has infringed plaintiff’s registered mark?
(ii)Whether use of the mark L&T by the defendant is likely to cause confusion and give an impression to the public
that the defendant is associated with the plaintiff-company?
(iii)Whether the defendant intended to pass off its own products as those of the plaintiff and to represent to the
public that it is in some way connected with the plaintiff-company?
Decision:
An ex-parte decree was passed against the defendant by the Delhi High Court restraining the defendant from manufacturing,
selling, exporting, distributing or marketing any mobile charger using the registered mark/logo of the plaintiff company either on
the product or on its packaging. Punitive damages amounting to Rs.50,000/- were also awarded to the plaintiff and all the chargers
and packaging, which bear the registered mark/logo of the plaintiff company, were ordered to be destroyed within eight weeks.
 No order as to costs was made.

Reason:
The registration of trademark/logo LT (in a circle) has been granted to the plaintiff-company not only in respect of telephones, but
also their parts and accessories. It is difficult to dispute that mobile phones would be included in the list of telephones. A charger
of a mobile telephone is an essential accessory and the mobile telephone cannot be charged without using the charger meant for
the purpose. Hence, it cannot be disputed that the plaintiff-company holds copyright in mark/ logo LT (written in a circle) in respect
of mobile phone chargers and this right is being held by the plaintiff-company continuously since 24th January, 2003, the
registration being valid for 10 years.
S.V. Venugopal vs. Ushodaya  Appellant – business of incense sticks – under the name “Eenadu” since 1993. 283
Enterprises Ltd. & ANR  Respondent carrying on business of publishing newspapers in Telugu entitled as “Eenadu” since 1974. The Respondent was
the second-largest regional daily circulating in India and the largest in Andhra Pradesh.
 The City Court passed an ex-parte ad interim injunction restraining the Appellant from using the expression “Eenadu” for
their goods and the same was confirmed on 27th December 1999. Thereafter aggrieved by the said order, Appellant
moved the High Court of Andhra Pradesh. The High court suspended the interim injunction.
 High Court disposed of the same in the favor of the Respondent stating Copyright Infringement by the Appellant.
Aggrieved by the decision of the High Court the Appellant filed an appeal before the Supreme Court.
Supreme Court’s Observations:

1. “Eenadu” newspaper and TV are extremely well known and almost household words in the State of Andhra Pradesh. The
word `Eenadu’ may be a descriptive word but has acquired a secondary or subsidiary meaning.
2. Appellant started using the name `Eenadu’ for its Agarbathi and used the same artistic script, font and method of writing
the name which obviously cannot be a co-incidence.
3. In this background, Appellant cannot be referred or termed as an honest concurrent user of the mark “Eenadu”.
4. The adoption of the words “Eenadu” is ex facie fraudulent and mala fide from the very inception. By adopting the mark
“Eenadu” in the State of Andhra Pradesh, the Appellant wanted to ride on the reputation and goodwill of the Respondent.
5. Permitting the Appellant to use the mark would result in the approval of the court dishonest, illegal and clandestine
conduct of the Appellant.
6. Allowing the Appellant to use the name “Eenadu” for their business would create confusion in the mind of the consumer
as they would associate the Appellant’s product with that of the Respondent. In other words, the Appellant wanted to
derive the benefit from the reputation and goodwill of the Respondent’s company. In such a situation, it is the bounden
duty and obligation of the court not only to protect the goodwill and reputation of the Respondent but also to protect the
interest of the consumers.
7. Permitting the Appellant to sell its product in the State of Andhra Pradesh would amount to encouraging the Appellant to
practice fraud on the consumers.
8. Permitting the Appellant to carry on his business in the name of `Eenadu’ in the State of Andhra Pradesh would lead to
 eroding extra-ordinary reputation and goodwill acquired by the Respondent company over a passage of time.
9. Appellant’s deliberate misrepresentation has the potentiality of creating serious confusion and deception for the public at
large and the consumers have to be saved from such fraudulent and deceitful conduct of the Appellant.
10. Permitting the Appellant to sell his product with the mark `Eenadu’ would be encroaching on the reputation and goodwill
of the Respondent company and this would constitute invasion of proprietary rights vested with the Respondent company.
11. Honesty and fair play ought to be the basis of the policies in the world of trade and business.
12. The law is consistent that no one can be permitted to encroach upon the reputation and goodwill of other parties.
13. The matter was disposed of with the aforesaid observations and directions.
M/s. Bademiya, Mumbai & Ors  Plaintiffs have prayed for an order and injunction restraining the defendant from in any manner using in relation to any 285
vs. Mubin Ahmed Zahurislam business of manufacturing and selling or dealing in eatables the trading name “BADEMIYAN” or any other trading name
consisting of the word “BADEMIYA” written in any script.
 The defendant contended that
(a) that the plaintiffs’ partnership firm is unregistered and hence the suit is not maintainable;
(b) that the plaintiffs’ trademark is registered under Class-29 for goods and not under Class-42 for rendering services and
as the defendant is rendering the services by providing food items, the plaintiffs’ trademark is not infringed by using the
impugned trademark;
(c) that the plaintiffs are carrying on an illegal business without any licenses; and
(d) that the defendant’s impugned mark is distinct and different from the plaintiffs’ trademark.

Decision: Injunction granted.

The impugned trademark of the defendant is thus visually and phonetically identical or deceptively similar to the plaintiffs
registered trademarks. The defendant is, therefore, guilty of infringing the plaintiffs’ trademarks registered under Clauses- 29 and
42 of the Trademarks Act, 1999.
Greaves Cotton Limited vs.  Infringement of trademark: In order to constitute infringement, it is not necesthat the impugned trademark should be 286
Mohammad Rafi & Ors. an absolute replica of the registered trademark
 The plaintiff Company (“GREAVES COTTON LIMITED”) engaged in the manufacture of a wide range of industrial products
and equipment had a registered trademark “GREAVES” in its name. Defendant No.1 who is the proprietor of Defendant
No.2, made an application for registration of the trademark “GREAVES INDIA” claiming use of aforesaid mark since
1.12.2004 in respect of products which are exactly of the same type as the pumps of the plaintiff company. The plaintiff
company sent a legal notice dated 26.12.2007 to the defendant No.1 calling upon it to cease and desist from using the
aforesaid mark.
 The High Court of Delhi passed an order for permanent injunction on the following grounds:
i) The word/mark “GREAVES” is an essential and prominent feature of plaintiff’s trade name, corporate name and
business style and also the trademark GREAVES is the surname of the founder of the plaintiff s predecessor GREAVES
COTTON AND COMPANY LIMITED.
 ii) By using the word “GREAVES INDIA” the defendant No.1 lifted and adopted the whole of the registered trademark of
the plaintiff company, thereby causing infringement of that trade mark.
iii) Mere use of the word “INDIA” would make no difference since the word “GREAVES” is not only an essential but also
the main component of the trademark “GREAVES INDIA” being used by the defendant No.1. Use of the word “INDIA” as a
suffix and not as a prefix is also a strong indicator that the defendant No.1 wanted to encash upon the popularity, goodwill
and reputation of the word “GREAVES.”
Hindustan Unilever Limited vs.  The plaintiff is a registered proprietor of the marks “SUN”, “SUNLIGHT” and “SUNSILK” under Class 3. The plaintiff seeks a 288
Ashique Chemicals & Ors perpetual injunction, restraining the defendant from using the mark “SUNPLUS” or the word “SUN” with any prefix or
suffix or any other deceptively similar labels in relation to soaps or detergents. The plaintiff has admittedly not used the
mark “SUN” in India but the other marks used by the plaintiff are associated with the word mark “SUN”.
 The suit has been dismissed due to the following reasons:
1. The Defendant has been using the mark “SUNPLUS” since the year 1997 and developed a reputation in the State of
Kerala. The mark “SUN” has not been used by the plaintiff for over 60 years.
2. There is a possibility that if plaintiff’s mark had acquired reputation in the State of Kerala, it would have come
across the plaintiff’s mark which has been widely advertised in a variety of ways.
3. In that event, the plaintiff would have noticed the defendant’s mark and adopted proceedings earlier.
4. As the defendant has been using the mark for almost fifteen years now, the plaintiff’s action for infringement of
the registered mark “SUN” cannot succeed.
5. Nor it is considered that “SUNPLUS”, as used by the defendant, is deceptively similar to the plaintiff’s mark
“SUNLIGHT”.
6. The marks “SUNPLUS” and “SUNLIGHT” are phonetically and visually distinct. Moreover, “SUNPLUS” is written in a
stylized manner.
7. In the circumstances, the Notice of Motion is dismissed with costs fixed at Rs.10, 000/-.

South African Breweries Facts: 289

International (Finance) BV &  Plaintiff No. 1 applied for registration of CASTLE (label) on 29th April, 1995 and the word mark CASTLE on 6th February,
Anr vs. Mohan Goldwater 1996.
Breweries Ltd. & An  A notice was sent by the defendants to the plaintiff claiming ownership of the trademark CASTLE PILSNER in respect of
beer. They also claimed that the trademark OLD CASTLE and CASTLE were registered in their favour on 30th May, 1972 and
22nd October, 1973 respectively and also claimed that the plaintiffs were passing off their goods as those originating from
the defendants and, thereby infringing their registered trademark.
 On enquiry, the plaintiffs came to know that the trademark registrations in favour of the defendants had been removed
from the record of Registrar of Trademarks and in fact, the defendants never sold any product bearing the trademark
CASTLE.
 The plaintiffs have sought an injunction, restraining the defendants from manufacturing, selling, offering for sale or
advertising any beer or alcoholic beverages, using the trademark CASTLE.
 Decision: Permanent injunction granted.

Reason:
 Since it is the plaintiff company which first used the trademark CASTLE in India and the registrations in favour of defendant
No.1 have already been cancelled, defendant No.1 Company has no right to use this mark and thereby pass off its goods as
that of the plaintiff.
 As regards the trade mark OLD CASTLE, since this mark includes the whole of the trademark of the plaintiff company, the
customer coming across beer being sold under the trade mark OLD CASTLE may buy this product assuming, on account of
use of the word CASTLE, it to be a product of the plaintiff company.
 Injunction can be sought not only in a case of actual use but also in a case of threatened use of a trademark.
 In the case before this Court, the plaintiff did have a valid cause of action to seek injunction since the defendants
themselves gave a cease and desist notice to the plaintiff, with respect to use of the mark CASTLE.
Infosys Technologies Ltd vs.  In Infosys Technologies Ltd v Jupiter Infosys Ltd, the Supreme Court has set aside a decision of the Intellectual Property 290
Jupiter Infosys Ltd & Anr Appellate Board (IPAB) in which the latter had ordered the cancellation of Infosys Technologies Ltd’s registrations for the
mark INFOSYS on the grounds of non-use.
 The court held that:
1. The grievance of the applicant must not only exist at the date of the application for rectification, but must continue
to exist until the application is decided.
2. If, during the pendency of the application, the applicant’s grievance does not subsist, "there may not be any
justification for rectification, as the registered trademark cannot be said to operate prejudicially to [the
applicant’s] interest".
K. Narayanan & Anr. vs. S.  A-One Banana Chips trademark case 292
Mural  Court held that: A cause of action will arise only when a registered trade mark is used and not when an application is filed
for registration of the trade mark.
Gupta and Gupta Pvt. Ltd. vs.  In an ex-parte interim injunction order, Delhi High Court directed the proprietor of food supply apps- Zomato and Swiggy 293
Khan Chacha Hyderabadi to delist 24 entities for using, advertising or promoting their outlets as “Khan Chacha”, which is registered in favor of the
Biryani and Ors. Plaintiff.
Renaissance Hotel Holdings Inc.  In this case, appeal was filed against the observation of High Court that they did not see any infringement of the 293
vs. B. Vijaya Sai and Ors. Appellant’s trade mark “RENAISSANCE” with that of “SAI RENAISSANCE” of Respondents-Defendants.
 Also, that no evidence of a trans-border reputation for its mark or of any damage to reputation was presented. Therefore,
this appeal was presented.
 Supreme Court held that that High Court has erred in their opinion and that respondents/ defendants had infringed on the
appellant/trademark plaintiff’s “RENAISSANCE”.
Theos Food Pvt. Ltd. and Ors.  The dispute, in the case, relates to two marks being ‘THEOBROMA’ and ‘THEOS’/’THEO’S’ used in respect of bakery related 293
vs. Theobroma Foods Pvt. Ltd products, patisseries, confectionery etc.
 Both the parties amicably decided to settle their disputes. Terms of settlement stated that- “Theobroma is free to expand
 its outlets under the mark/name ‘THEOBROMA’ across the country. However, Theos shall be restrained to the Delhi-NCR
region, insofar as its goods and services provided under the mark/name ‘THEOS’/’THEO’S’ is concerned.
Airtec Electrovision Pvt. Ltd. vs.  “EAIRTEC” and “AIRNET” 294
Sunil Kumar Saluja  Court dismissed the present appeal on the grounds of no merit and stated that there is no way that anybody can get
confused between two marks upon seeing the manner in which they have been used owing to their use, their phonetic
similarity, or their log
International Society for  ISKON case 295
Krishna Consciousness vs.  Plaintiff is a trust for Lord Krishna. k ISKCON, apart from being the abbreviated business name of the Plaintiff, is also used
Iskcon Apparel Pvt. Ltd. and and/or appears on all the advertising material such as calendars, magazines, cards, literature, religious books, t-shirts,
Ors. clothing, garments, etc.
 Defendant carrying on business of manufacturing of clothing, textiles, garments, clothing accessories, etc. under the
impugned mark/trading name ISKCON Apparel Private Limited containing the expression ISKCON as its only leading,
essential and prominent feature. It is stated that a perusal of the said website shows that Defendant may have changed its
name from Iskcon Apparel Pvt. Ltd. to Alcis Sports Pvt. Ltd. but is still using the expression “Formerly known as Iskcon
Apparel Pvt. Ltd.” on its website.
Marico Limited vs. Abhijeet  PARACHUTE oil case – Parachute oil vs Youtuber 295
Bhansal
Starbucks Corporation vs.  It is claimed that the registered trademark “FRAPPUCCINO” has continuously and extensively been used by the Plaintiff 296
Copamocha Cafe & Restaurant company for more than 24 years and is recognized as a well – known trademark falling within the meaning of Section 2(1)
& Anr CS (zg) of the Trademarks Act, 1999
 Court permanent injunction against the Defendant and ruled in favour of the Plaintiff. Additionally, cost of ` 7,34,100/- was
awarded in favour of the plaintiff and against the Defendants. This decision further establishes the validity of brand
owners’ reliance on their intellectual property rights.
Starbucks Corporation vs.  In this case, in 2001, Starbucks, in India, registered their trademark with a word-mark pronounced as STARBUCKS along 297
Sardarbuksh Coffee & Co. & with a logo visualising “crowned maiden with long hair”. Whereas, the defendant, being a local vendor, initiated his
Ors., CS (COMM) 1007/2018 business in 2015, with a name called “Sardarbuksh Coffee & Co”.
 The wavy lines on the sides of a turban-clad commander’s face were part of Sardarbuksh’s emblem, which was encircled
by a black circle.
 The Delhi High Court ordered the defendants to change their name from “Sardarbuksh Coffee & Co.” to “SardarjiBakhsh
Coffee & Co.” for 20 locations that have not yet opened. However, the court allowed the use of the current name
“Sardarbakhsh Coffee & Co.” for their two running stores.
 Now, the defendant operates with the name uttered as “Sardarji-Bakhsh Coffee and Co”.
Coca-Cola Company vs. Bisleri  The court-ordered interim injunction against the defendant not to use the trademark named “Maaza” in India or abroad. 298
International Pvt. Ltd. and Ors.
Toyota Jidosha Kabushiki Kaisha  The Delhi High Court held that plaintiff is not entitled to the discretionary relief as prayed for by him. 304
v. Deepak Mangal & Others  He has not been able to make any prima facie case in his favour for injuncting the defendant from using the trade mark
“PRIUS” on which the defendant is admittedly the registered proprietor and owner since 2002.
 The balance of convenience in fact lies in favour of the defendant. If at this stage i.e. after business growth of more than
seven years, the defendant is injuncted from using his trade name under which he is selling his auto accessory products, he
would suffer huge business loss which would probably bring to a close not only his business reputation but all his
legitimate financial expectations.
 On the other hand no irreparable loss or injury will be suffered by the plaintiff as admittedly the plaintiff is not in the
market.
 The application of the defendant under Order 39 Rule 4 CPC is accordingly allowed and the interim ex parte injunction
granted is set aside.
Proctor & Gamble Co. & Anr v.  Delhi High Court held that it is not in dispute that the defendant has been using the trade mark SAFE GUARD for sale of 304
Shipra Laboratories antiseptic creams. There is practically no difference between the trade mark SAFEGUARD and SAFE GUARD since no person
is likely to notice the space between the words SAFE and GUARD
Milment Oftho Industries v.  The respondent is the owner of trade mark ”Ocuflox” in respect of an eye care product containing ‘Ofloxacin’ and other 305
Allergan Inc. compounds. The trade mark was registered in various countries except India.
 The respondent company had no intention to come to India. The appellant, on the other hand, was selling its product
’Ocuflox’ on a medicinal preparation containing Ciprofloxacin HCL to be used for the treatment of the eye and ear.
 The appellants contended in the suit that it had coined the word ‘Ocuflox’ by taking the prefix ‘Ocu’ from ‘Ocular’ and
‘Flox’ from ‘Ciprofloxacin’ which was the base constituent of the product and that it had been granted registration by the
Food & Drug Control Administration and that its application for the registration of the trade name ‘Ocuflox’ was pending.
 Trial court refused injunction and Division Bench allowed injunction.
 Supreme Court’s Decision:
In the instant case, the marks were the same. They were in respect of pharmaceutical products. The mere fact that the
respondents had not been using the mark in India would be irrelevant if they were the first in the world market. The
Division Bench had relied upon material which prima facie showed that the respondents’ product was advertised before
the appellants entered the field. On the basis of that material, the Division bench had concluded that the respondents
were first to adopt the mark. If that be so, then no fault could be found with the conclusion drawn by the Division Bench.

However, it was submitted on behalf of the appellants that the respondents were not the first to use the mark. It was
submitted that there was no proof that the respondents had adopted the mark and used the mark before the appellants
started using the mark in India. These were matters which would require examination on evidence. Considering the fact
that for all these years, because of the injunction order, the appellants had sold their product under some other name, the
balance of convenience was that the injunction order be continued and the hearing of the suit be expedited. If on evidence
it was proved that the respondents had adopted the mark prior to the appellants’ doing so, on the settled law, then the
respondents would become entitled to an injunction. However, if on evidence it was shown that the respondents had not
adopted the mark prior to its use in India by the appellants, then, undoubtedly, the trial court would vacate the injunction.
 The Trial Court would undoubtedly then assess the damage which appellants had suffered for having wrongly not been
allowed to use the mark for all these years. With the above said directions, the appeal stands disposed of.
Reliance Healthcare Pvt. Ltd. vs.  Court held that- We are of the opinion that the word name “Reliance” is a generic and common word and is not a coined 307
Reliance Medipharma word and/or the word used for a particular project, the plaintiff is not entitled to injunction as prayed for solely on the
ground that plaintiff has got word name “Reliance” registered in their favour.
Cadila Health Care Ltd. vs.  Both the appellant and the respondent were pharmaceutical firms. In a suit for injunction the appellant claimed that a 308
Cadila Pharmaceuticals Ltd. medicine being sold by the respondent under the name of Falcitab was similar to the drug being sold by it (the appellant)
under its brand name of Falcigo and that the drug would be passed off as the appellant’s drug Falcigo which is used for the
treatment of the same disease in view of the confusing similarity and deception in the names, more so because they were
medicines of last resort.
 Decision:
The trial court held that the two drugs Falcitab and Falcigo differ in appearance, formulations and price, that they are sold
to hospitals and institutions and that there was thus no chance of deception or of confusion specially as the drug was sold
to hospitals and institutions and is not meant to be sold to any individual. The appellant’s appeal was dismissed by a single
Judge of the High Court holding that there was no chance of any passing off one product for the other.

Supreme Court did not interfere with the decision of the High Court.

However, Supreme Court provided factors to be kept in mind while deciding the question of deceptive similarity:
(a) nature of marks, that is, whether the marks are word marks or label marks or composite marks;
(b) degree of resemblance between marks phonetically similar and hence similar in idea;
(c) nature of the goods in respect of which they are used as trademarks;
(d) similarity in the nature, character and performance of the goods of rival traders;
(e) class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence
and a degree of care they are likely to exercise in purchasing and/or using the goods;
(f) mode of purchasing the goods or placing orders for the goods and any other surrounding circumstances which may be
relevant in the extent of dissimilarity between the competing marks.
Amritdhara Pharmacy v. Satya  The full bench of the Hon’ble Supreme Court held that the marks ‘Amritdhara’ and ‘Lakshmandhara’ are similar and thus 309
Deo. overruled the decision of the Allahabad High Court and upheld the decision of the Registrar of Trade Marks. In coming to
the said conclusion, the Court relied on:
(i) the test of comparison of marks, which states that the question of comparison of two marks has to be approached from
the point of view of a man of average intelligence and imperfect recollection. The Court held that-
“a critical comparison of two names may disclose some points of difference but an unwary purchaser of average
intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the
nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a
previous occasion with a similar name”; and
 (ii) acquiescence by the Appellant to the use of the Respondent of the mark ‘Lakshmandhara’.
Dyechem Ltd. v. Cadbury (India)  Supreme Court observed that ‘where common marks are included in the common trademarks, more regard is to be paid to 310
Ltd. the parts not common and the proper course is to look at the marks as a whole but at the same time not to disregard the
parts which are common’.

Note: Commenting on these observations the Supreme Court held in the instant case that the principle applied in Dyechem was
not correct for the reason that the ‘dissimilarities have to be more important than the phonetic similarity in the use of the words
Piknik and Picnic. The Court disagreed with the view that ‘the principle of phonetic similarity has to be jettisoned when the manner
in which the competing words are written is different and the conclusion so arrived at is clearly contrary to the binding precedent
of this court in Amritdhara case where the phonetic similarity was applied by judging the two competing marks’. The Court held
that the decision in Dyechem did not lay down the law correctly.
Gulshan Khatri vs. Google Inc  Google and Googlee case 316
Starbucks corporation v.  The respondent’s domain name www.starbucks.co.in was confusingly similar to the complainant›s domain name 319
Mohanraj www.starbuscks.in, it was contended that the domain name of the respondent is identical and confusingly similar to the
complainant’s domain name. It was also contended that the respondent has no legitimate interest in the domain name.
Further it was contended that the mark was used by the respondent in bad faith. The learned arbitrator held that the
disputed domain name was confusing, similar and identical to the complainant and that they had right in the trademark.
The respondent had registered the domain name in bad faith and so the domain name should be transferred to the
complainant
Rediff Communication v.  In this case the defendant had registered the domain name radiff.com which was similar to rediff.com. The Court was of 319
Cyberbooth the opinion that internet domain names are of importance and can be a valuable corporate asset and such domain name
is more than an Internet address and is entitled to protection equal to a trade mark. The court gave the decision in favor of
the plaintiff.
Satyam Infoway Ltd. vs. Sifynet  In this case, the appellant, Satyam Infoway Ltd., alleged that the respondent, Sifynet Solutions Pvt. Ltd., deliberately 320
Solutions Pvt. Ltd. registered and ran a domain name that was confusing and similar to the one owned by them. The appellant had
registered various domain names in 1995 such as: www.sifynet,www.sifymall.com,www.sifyrealestate.com.

 In this case, the appellant, Satyam Infoway Ltd., alleged that the respondent, Sifynet Solutions Pvt. Ltd., deliberately
registered and ran a domain name that was confusing and similar to the one owned by them. The appellant had
registered various domain names in 1995 such as: www.sifynet,www.sifymall.com,www.sifyrealestate.com.

 The Apex Court held that the Trademark Act, 1999 will be applicable to the domain names in this case relying on several
other cases judged in India before this case. The decision was given in support of Satyam Infoway on this issue.
 The Supreme Court observed that domain names are subject to the same rules which are applied to trademarks under the
Trade Marks Act, 1999, although there is no law in India that has specific provisions for domain names.
Yahoo!, Inc. vs. Akash Arora  Yahoo.com was registered by Yahoo Inc in1995, which facilitates web services. The trademark Yahoo owns the legal status 321
and Ors in 65 countries, excluding India.
 The defendant, i.e. Akash Arora, started to facilitate services identical to Yahoo.com under the name Yahoo India. Yahoo
Inc had sued the accused of using a trademark identical to its own & passing off this service identical to the plaintiff.
 Yahoo Inc argued that the defendant acquired the domain name (A domain name is a form of IP address that is used for
finding websites on the internet) of Yahoo to render services identical to those of Yahoo Inc & had strived to cash in on the
reputation earned by Yahoo.

 Decision:

The court judged that where the brand name is similar to another name of another company, people are likely to get confused by
using that a brand name can lead to consequent damage to the Plaintiffs.

The court granted an ad interim injunction in favour of the plaintiff as against the defendants which refrains the defendants from
operating any business, sale, advertising or dealing in service or goods on the internet or under the trademark/domain name
‘Yahooindia.com’ or any other trademark/domain name which is similar to the plaintiff’s trademark till the disposal of the suit.
 COPYRIGHT
M/s Mishra Bandhu Karyalaya  The laws of copyright do not protect ideas, but they deal with the particular expression of ideas. 335
& Others v. Shivaratanlal Koshal
Rupendra Kashyap v. Jiwan  Held that CBSE is a public undertaking; examination papers are literary work made under the direction and control of 338
Publishing House CBSE and applicability of Section 17(dd) of Copyright Act is squarely attracted to the facts of the case. CBSE is the first
owner of the copyright in the examination papers on which examinations are conducted by it.
Nav Sahitya Prakash & Others v.  It is evident from the provisions of section 44 that registration of the work under the Copyright Act is not compulsory and 350
Anan Kumar & Others is not a condition precedent for maintaining a suit for damages, if somebody infringes the copyright. Registration is not a
prerequisite for acquisition of a copyright.
Penguin Books Ltd., England v.  It was observed that whenever there is misappropriation of intellectual property of which the primary beneficiary is the 351
M/s India Book Distributors & copyright owner there is infringement of copyright.
Others
Associated Electronic &  A bare look at these two artistic works ‘Sharp’ and ‘Sharp tools’. Moreover, the work ‘sharp’ in the work of the appellant is 352
Electrical Industries (Bangalore) embedded in a semi-circle design with rays emitting from it as if it were a rising Sub; whereas, in the respondent’s work it
Pvt. Ltd. v. M/s Sharp Tools is plainly ‘Sharp Tools’ with no design super imposing it. Judging by the eye alone, they appear to Court to be totally
different. One does not think that anyone looking at these two works would say that they are similar in any manner nor do
any one would say the design, the lay-out and the manner in which the words written in the works of the respondent was
on obvious imitation, much less an imitation of the appellant’s work. Applying the various tests set out above, it cannot be
said that the respondent had committed an act of piracy by way of copying the copyright of the appellant. As rightly
pointed out by the Copyright Board that there can be no copyright in the word or words, but the right can only be in the
artistic manner in which the same is written, and in this case the works were totally dissimilar. [
Zee Telefilm Limited v. Aalia  There was a dispute relating to transfer of copyright in TV serial ‘India’s Most Wanted’. It was held that in the absence of 357
Productions & Others any specific rights assigned by the defendants in respect of concept/script/story/synopsis/structure and/or format of
programme, the plaintiffs cannot seek injunction against the defendant. The assignment agreement executed between the
plaintiff and the defendants as regards structure, format, concept, synopsis and script vague and uncertain, the plaintiffs
are not entitled to any interim relief.
Hawkins Cookers Ltd. v.  Discussed the grant of permanent injunction to the plaintiff for restraining the defendant from using a label for pressure 357
Magicook Appliances Co cookers, which was deceptively similar to the registered trade mark ‘HAWKINS’ of the plaintiff – On non-appearance of the
plaintiff, an ex-parte order was passed and it was ruled that, the unjust enrichment by the infringing party, was a mischief
and the plaintiff was to be protected from it as per Section 55 of the Copyright Act, 1957. Hence permanent injunction was
granted.
Eastern Book Company & Ors.  The Petitioners, Eastern Book Company, a partnership firm, and EBC Publishing Private Limited were engaged in the 358
vs . D.B. Modak & Anr. Appeal publication of ‘Supreme Court Cases’ (SCC).
 This publication has existed since 1969 and consisted of all non-reportable, reportable and short judgements, orders,
records of proceedings and directions of the Supreme Court. They published copy-edited versions of these judgments
 along with certain additions such as formatting, numbering, cross-referring, and other contributions that rendered it user-
friendly. It also incorporated headnotes, footnotes, and long notes.
 In 2004, the Respondents, Spectrum Business Support Limited, (also called Respondent-1) and Regent Datatech Private
Limited (Respondent-2) put out a software titled ‘Grand Jurix’ and ‘The Laws’ respectively. These companies were alleged
to have copied the entire module from SCC onto CD-ROMs, thereby infringing the appellants’ IP rights.
 The Petitioners contended that they have copyright in their version of the judgements compiled in SCC, which is a product
of their skills, ability, labour and capital. They did not intend to claim monopoly over the judgement, but the specific
format in which they publish them. The Petitioners further claimed that their work was infringed by the Respondents
because all the modules contained in the CD-ROM were similar to their work and they had replicated the Petitioners’ way
of publishing the legal reports with the exact arrangements, sequences, and choices of cases. It was further alleged that
the Respondents copied the entire judgement as put forth in the Petitioners’ law report with the same formatting,
paragraph numbers, copy-editing and footnotes.
 The Respondents, however, presented that the Petitioners’ product is not eligible for protection under copyright law as it
is merely a derivative work of Supreme Court’s judgments. Since it does not portray independent creation, it is not an
original work.
 Decision:
The Respondents were ordered to refrain from copying the paragraphs made by the Petitioners for internal referencing
and to stop using the Petitioners’ views on dissent and concurring opinions of the cases. The final judgement was in favour
of the Petitioners, giving them an exclusive right over their content, prohibiting the utilisation of the same.
Win Medicare Pvt Ltd. vs. K. Facts: Plaintiff is the manufacturer of BETADINE and also the owner of the design of the bottle and the labels. Defendant also 359
Pharmaceutical Works manufactured similar product and marketed the same. The shape of the bottle and the artwork, color combination of the labels
etc., were identical with that of the plaintiff. Plaintiff sued for infringement and consequent damages.

Decision: Suit decreed.

Reason: A comparison of the bottles, of the plaintiff and defendant, clearly shows that the defendant substantially copied the
bottle of the plaintiff.
Bucyrus Europe Ltd. v. Vulcan The court observed that an Anton Piller order can be passed in the following situations: 360
Industries Engineering Co. Pvt. – Where the plaintiff has an extremely strongly prima facie case;
Ltd – Where the actual or potential damage to the plaintiff is very serious;
– Where it was clear that the defendant possessed vital evidence; and
– There was a real possibility that the defendant might destroy or dispose of such material so as to defeat the ends of justice.
The purpose of Anton Piller order is the preservation of evidences.
Taj Television Ltd. & Anr. vs. Ten Sports – Sports channel rights violated by cable operators’ case. 361
Rajan Mandal & Ors.
ESPN Software India Private ICC matches cable operators rights violation case. 361
Ltd. vs. Tudu Enterprise and
Ors.
Tata Consultancy Service vs. Issue: Whether an intellectual property contained in floppies, disks or CD- ROMs would be ‘goods’ within the meaning of Andhra 365
State of Andhra Pradesh 2006 Pradesh General Sales Tax Act, 1957?

Decision: Software falls under the category of goods.

Warner Bros. Entertainment Issue: Whether the act of importing and hiring or renting within India amounts to infringement of copyright? 368
Inc. and Ors. vs. Santosh V.G.
Decision: The defendant’s action, giving on hire or rent in India, copies of cinematograph films authorized for sale or rental in a
particular territory outside India, in which cinematograph films the plaintiffs claim copyrights, would constitute infringement of
copyright under Section 51(b) (iv), as long as the plaintiff’s authorization is not secured."
John Wiley and Sons Inc. and  In this case, John Wiley & Sons Inc., based in New York, claimed to be the owner of the copyrights in the books in question 368
Ors. vs. Prabhat Chander Kumar and introduced these books for low prices in India and other Asian countries. Thus, books which were otherwise costly
Jain and Ors. were made available in India and other Asian countries in low prices with a disclaimer that the books shall be available for
sale only in Bangladesh, Myanmar, India, Indonesia, Nepal, Pakistan, Sri Lanka and Vietnam. Hence, the book should be for
sale in the country to which it is first consigned by Wiley India Pvt. Ltd. and shall not be re-exported.

 The Plaintiffs alleged Defendants for making available their books for sale at low prices in the countries for which the
books were not meant for like USA, UK and others. Hence, the same amounted to infringement of their copyright under
Section 51 of the Copyright Act, 1957.

 The Hon’ble Delhi High Court while ruling in favor of the Plaintiffs.
The Chancellor, Masters and The case "The Chancellor, Masters and Scholars of the University of Oxford and Ors. vs. Rameshwari Photocopy Services 369
Scholars of the University of and Ors." involved a legal battle over copyright infringement. International publishers, including Oxford University Press,
Oxford and Ors. vs. Rameshwari sued Rameshwari Photocopy Services and the University of Delhi in 2012 for unauthorized reproduction and distribution of
Photocopy Services and Ors. excerpts from their books in the form of course packs sold to students.

The Delhi High Court initially issued a temporary injunction against Rameshwari Photocopy Services, halting the sale of the
course packs and ordering the seizure of infringing copies. However, in 2016, Justice Rajiv Sahai Endlaw dismissed the
lawsuit, allowing the photocopy shop to resume its operations, ruling that copying for educational purposes did not
constitute copyright infringement. A subsequent court ruling allowed the trial to proceed, maintaining that such
reproduction was permissible for educational reasons.

The case attracted significant support for Rameshwari Photocopy Services from academics and students, who saw it as a
fight for affordable education. In 2017, stakeholders from Oxford University urged Oxford University Press not to appeal
 the decision, emphasizing the importance of educational access.
M/s Knit Pro International vs. Initiation of Proceedings: M/s Knit Pro International filed an application under Section 156(3) of the CrPC to direct the 371
the State of NCT of Delhi & Anr registration of an FIR against Respondent No. 2 for offences under Sections 51, 63, and 64 of the Copyright Act and Section
420 of the IPC. The Chief Metropolitan Magistrate approved the application on October 23, 2018, leading to the filing of
the FIR.

High Court Appeal: The accused submitted a writ petition to the Delhi High Court, seeking to dismiss the criminal
proceedings on the grounds that the offence under Section 63 of the Copyright Act is non-cognizable and non-bailable.

High Court Ruling: The High Court granted the petition, holding that the offence under Section 63 of the Copyright Act is a
non-cognizable offence, leading to the quashing of the criminal proceedings.

Supreme Court Issue: The primary issue before the Supreme Court was whether the offence under Section 63 of the
Copyright Act is cognizable (as considered by the Trial Court) or non-cognizable (as held by the High Court).

Supreme Court Decision: The Supreme Court observed that the punishment for the offence under Section 63 of the
Copyright Act can extend up to three years. According to Part II of the First Schedule of the CrPC, offences punishable by
imprisonment for three to seven years are cognizable. Therefore, the Court held that the offence under Section 63 is
cognizable and non-bailable.

Outcome: The Supreme Court quashed the High Court's judgment, reinstating the criminal proceedings and FIR against
Respondent No. 2 for offences under Sections 63 and 64 of the Copyright Act, treating them as cognizable and non-
bailable.
Sanjay Soya Private Ltd. vs. Background: Sanjay Soya, a producer of various edible oils, including soyabean oil, claimed to be the successor-in-title of SK 372
Narayani Trading Company IA Oil Industries, which had adopted a distinctive label, mark, and artwork for edible oils in May 2003. This label, named SOYA
DROP, became the subject of a copyright dispute with Narayani Trade, a one-person business.

Defendant's Arguments: Narayani Trade argued that their label was different from Sanjay Soya's and that Sanjay Soya, as a
corporation, did not qualify as an "author" under the Copyright Act. They also claimed that Sanjay Soya could not seek
remedies under the Copyright Act without registering the label and that a trademarked label could not be protected as an
artistic creation.

Plaintiff's Claims: Sanjay Soya accused Narayani Trade of completely copying and illegally reproducing the original and
distinctive artwork of their SOYA DROP label.

Legal Issue: The core issue was whether Narayani Trade had infringed on Sanjay Soya's copyright.
Court's Ruling: The Bombay High Court ruled that registration of copyright is not mandatory to seek relief under the
Copyright Act. Protection is automatic upon creation of the work. The court criticized Narayani Trade's actions, stating that
their application for registration under both the Trademark and Copyright Acts was problematic and implicitly
acknowledged the originality of Sanjay Soya's work.

Conclusion: The court held that Narayani Trade's conduct warranted no leniency, affirming that Sanjay Soya's label was the
original work and Narayani Trade's subsequent label was an infringement of that copyright.
 INDUSTRIAL DESIGNS
Ampro Food Products v. Ashok Facts: Ampro Food Products manufactured biscuits with "AP" embossed, while Ashok Biscuit Works produced biscuits with 394
Biscuit Works "AB" embossed.
Issue: Alleged piracy of design.
Ruling: The court issued a temporary injunction against the defendant, stating that the defense could not argue the design
was not new or original without prior steps to cancel the design registration.
Hindustan Lever Ltd. v. Nirma Facts: Hindustan Lever alleged infringement of its trademark, passing off, and copyright of original artistic work against 394
Pvt. Ltd. Nirma.
Defense Argument: The label was a design eligible for registration under the Designs Act, and lack of such registration
invalidated the copyright.
Ruling: The court ruled that a label on a carton is not a design under the Designs Act.
B Chawla & Sons v. Bright Auto Facts: The dispute was over a mirror claimed to be a new design. 394
Industries: Ruling: The court held that minor additions to an existing design do not constitute a new or original design.
Cello Household Products v. Facts: Cello claimed design infringement and passing off against Modware for copying its PURO bottle design. 395
Modware India & Ors.: Ruling: The court found in favor of Cello, granting an injunction and damages, noting the deceptive similarity of Modware's
KUDOZ bottle.
Crocs Inc. USA v. Liberty Shoes Facts: Crocs alleged infringement of its registered shoe design against multiple defendants. 395
Ltd. & Ors.: Defense Argument: The design lacked newness or originality.
Ruling: The Delhi High Court held that Crocs' design did not qualify as new or original, leading to the cancellation of its
registration. The Supreme Court upheld this decision.
Bharat Glass Tube Limited vs. Registration of Designs: The respondent registered designs for diamond-shaped glass sheets under the Designs Act, 2000, 402
Gopal Glass Works Limited acquiring exclusive rights for their manufacture and marketing.

Alleged Infringement: The appellant and its associate began imitating the registered designs, leading to a legal dispute
filed by the respondent in the District Court of Mehsana, Gujarat.

Cancellation Application: The appellant filed an application seeking cancellation of the design registration, alleging prior
publication of the design in India and abroad.

Controller's Decision: The Controller framed issues regarding the novelty and originality of the design, ultimately canceling
the registration based on lack of newness or originality.

Appeal to High Court: The respondent appealed to the High Court of Calcutta, where a learned Single Judge reversed the
Controller's findings.
 Supreme Court's Observations:
Purpose of Designs Act: The Act aims to reward individuals for their research and labor in creating new designs.
Burden of Proof: The burden lies on the appellant to demonstrate that the design is not original or new.
Interpretation of "New or Original": The term implies that the design has not been previously published or made known to
the public.

Application of Law to Facts:

The design had never been reproduced on glass sheets by any other entity, establishing its novelty.
Exclusive rights were granted to the respondent for applying the designs to glass sheets, despite existing on engraved
rollers.
Conclusion: The Supreme Court found no merit in the appeal, dismissing it and imposing costs on the appellant.

Legal Precedent: This ruling reinforces the importance of originality in design registration and highlights the burden of
proof in cancellation proceedings.

Impact: The decision upholds the respondent's exclusive rights to their registered designs and sets a precedent for future
cases involving design infringement and cancellation disputes.
Glaxo Smithkline CH GmbH & Background: The plaintiffs, a German company, sought an injunction against the defendant for allegedly infringing their 404
Co. vs . Anchor Health & registered toothbrush design (No. 170554) with a similar design under the brand name 'Anchor Flexi Grip'.
Beautycare P. ltd.
Allegations: The plaintiffs claimed fraudulent similarity between the defendant's toothbrush design and their registered
design, arguing that it constituted obvious imitation.

Counterclaims: The defendant denied infringement, asserting that the registered design lacked novelty and originality.
They contended that similar toothbrush designs were already in the market, rendering the plaintiff's design not new.

Prior Litigation: The defendant cited previous litigation where the plaintiffs admitted prior publication of similar designs,
suggesting that the plaintiffs had no right to monopolize the design.

Issues: The court considered whether the plaintiffs had made out a prima facie case of infringement and whether their
newly registered design had any novelty.

Court's Decision:
Prima facie, the court found that the changes in the plaintiff's new toothbrush design were minor and did not constitute a
new or inventive design.
The court noted that the zig-zag S bend, a utilitarian aspect of the design, did not qualify as a distinctive design element.
 The plaintiff's failure to disclose prior litigation and the existence of similar designs in the market amounted to misleading
the court.
The court concluded that the plaintiffs' attempt to obtain a fresh registration for a design already in the public domain was
fraudulent.
Implications: The court revoked the injunction in favor of the plaintiffs, emphasizing that novelty in design should be
genuine and not a pretext. Both parties were deemed to have a fair competition in the market.

Legal Precedent: The ruling underscores the importance of transparency in legal proceedings and highlights the need for
genuine novelty in design registrations.

Impact: This decision serves as a cautionary tale against attempting to monopolize designs already in the public domain
through minor modifications and non-disclosure of relevant information.

Conclusion: The court's decision reflects a commitment to upholding the integrity of design registration laws and ensuring
fair competition in the marketplace.
Whirlpool of India Limited vs. Allegations: The plaintiff alleged that the defendant's washing machine, branded as "Videocon Pebble," closely resembled 406
Videocon Industries Limited their own product in design, features, and color scheme. They claimed infringement of their registered designs, passing off,
and sought damages.

Legal Issues:
Can a suit for infringement be filed against a registered proprietor?
Was there infringement or passing off?

Court's Decision:
The court clarified that the term "any person" in relevant sections of the Act includes even a registered proprietor.
Upon comparing the products, the court found the defendant's washing machine almost identical in shape, configuration,
and appearance to the plaintiff's, leading to potential confusion.
The plaintiff had substantial goodwill and reputation, supported by significant sales figures, which constituted actionable
goodwill.
The court agreed with the plaintiff's contention that the defendant's product was a fraudulent imitation.
The defense claiming functional necessity for certain design features was rejected. The plaintiff's registered designs
focused on aesthetic aspects, not functional elements.
The court noted that while demonstrations might dispel confusion for some customers, there was still a risk of deception
for those with imperfect recollection, associating the plaintiff's design with the product.

Implications: The ruling underscores the importance of protecting registered designs and preventing deceptive imitation in
 the marketplace. It highlights the need for clarity in distinguishing between functional and aesthetic design elements.

Conclusion: The court upheld the plaintiff's claims of infringement and passing off, emphasizing the potential for confusion
among consumers and the importance of safeguarding goodwill and reputation in commercial disputes.
Relaxo Footwears Limited vs. Background: The plaintiff, a footwear manufacturer, claims to have started as a small enterprise in 1976 and has since 407
Aqualite Industries Pvt. Limited grown into a large-scale producer with significant market presence and turnover. They allege that the defendant
unlawfully imitated and pirated the design and overall trade dress of their footwear products.

Allegations: The plaintiff asserts that the defendant deliberately imitated their products, copying unique and distinctive
elements, with fraudulent intentions to capitalize on the plaintiff's goodwill and reputation.

Legal Issue: Whether the defendant is guilty of copying the designs of the plaintiff.

Court's Decision:
The court noted that certain design elements, like diagonal ribs on a hot water bottle, could be both appealing and
functional. However, the functionality did not depend on specific design orientations.
While acknowledging the limited flexibility for novelty in footwear design, the court affirmed that the Designs Act, 2000
applies to footwear.
The defendant claimed prior use of the plaintiff's design, citing other footwear designs. However, the lack of clear launch
dates for these designs undermined the defendant's argument.
Upon visual examination, the court found prima facie differences between the defendant's and plaintiff's designs.
The defendant's claims regarding the lack of originality in the plaintiff's designs and the existence of prior art were deemed
inconclusive at this stage.

Conclusion: The plaintiff established a prima facie case, and the balance of convenience favored them. The defendant was
restrained from using the plaintiff's registered designs or any deceptively similar designs for specific footwear products.
 GEOGRAPHICAL INDICATION (GI)
Darjeeling Tea Significance of Darjeeling Tea: Darjeeling tea, grown in the hilly regions of West Bengal, is renowned for its quality, flavor, 430
and global reputation. Its distinctive characteristics stem from both geographical origin and processing methods.

Historical Background: The history of Darjeeling tea traces back to the 1840s when a British captain named Lloyd
discovered its potential during a visit to the region. Dr. Campbell introduced the China variety of tea seeds in 1841,
initiating tea cultivation in Darjeeling.

Export and Ownership: Darjeeling tea is primarily exported to countries like Japan, Russia, the US, and the UK. Initially
owned by the British, most tea gardens came under Indian ownership by the late 1970s.

Legal Protection: To safeguard Darjeeling tea from fraudulent practices and ensure its authenticity, the Indian Tea Act of
1953 incorporated a system for certifying exported Darjeeling tea. This system mandates dealers to obtain a license from
the Tea Board of India.

Importance of Geographical Indication (GI) Protection: GI protection is crucial to prevent misuse of the Darjeeling tea
brand. Tea from other countries, like Kenya or Sri Lanka, has been falsely sold as Darjeeling tea, posing a threat to
consumer trust and the industry's financial health.

Evolution of Legal Protection: The Tea Board of India initiated protection measures in 1983 by creating the Darjeeling logo
and obtaining trademark registration. In 2003, with the enactment of the Geographical Indication Act, the Tea Board
applied for GI protection, which was granted in 2004, making Darjeeling the first GI registered in India.

Rasogulla – A bitter battle over The sweet dessert "Rasgulla" has sparked a dispute between West Bengal and Odisha over its origin. Both states have 431
a sweet received Geographical Indication (GI) status for their respective versions of the dish: "Banglar Rasogulla" for West Bengal
and "Odisha Rasagola" for Odisha.

Historical Background: West Bengal claims the Rasgulla originated in the 1860s when Nobin Chandra Das, a renowned
sweet producer, created it in Kolkata. Odisha traces its roots back to the 12th century, where it was used as an offering in
the Jagannath Temple during Rath Yatra.

Differences: The two versions have distinct characteristics. Banglar Rasogulla is white, spongy, and syrupy sweet, while
Odisha Rasagola is brown, soft, tender, and less sweet.

GI Status: West Bengal obtained GI status for Banglar Rasogulla, emphasizing its ancient traditions and distinctiveness.
Odisha's application was initially rejected, but later, Odisha Rasagola received GI status based on its unique flavor, texture,
 color, and historical references.

Justification for Separate GI Tags: Awarding separate GI tags acknowledges the distinctiveness of each state's Rasgulla
variant, safeguards the interests of food producers, prevents fraud against consumers, and promotes economic
development. It also mitigates future disputes over the use of homonyms.

In conclusion, the issuance of separate GI tags for Banglar Rasogulla and Odisha Rasagola reflects the unique culinary
heritage of each state and ensures the protection and promotion of their respective versions of this popular dessert.
Tea Board, India vs. ITC Limited In this case, the plaintiff sought to restrain the defendant from using the name "DARJEELING LOUNGE" or any similar mark 432
that could be associated with Darjeeling tea. However, the court ruled against the plaintiff, stating that the defendant's use
of the name did not constitute infringement under the Trade Marks Act, 1999, or the Geographical Indications of Goods
Act, 1999.

Here are the key points from the court's decision:

Certification Trade Mark: The plaintiff only had a certification trade mark for Darjeeling tea, which certifies that a
particular tea originates from Darjeeling. However, this certification trade mark does not confer the same rights as a
regular trade mark. The plaintiff's rights are limited to certifying that a tea is Darjeeling tea, and the defendant did not
certify any tea with the use of the "DARJEELING LOUNGE" name.

Geographical Indications Act: The Geographical Indications Act only applies to goods, and the defendant's lounge services
do not fall under this category. Therefore, there was no infringement under this act.

Passing Off: The plaintiff alleged passing off and unfair competition, but failed to provide sufficient evidence to
substantiate these claims. Mere statements in the plaint were not enough to prove passing off.

Limited Rights: The rights acquired under the certification trade mark are limited to certifying the origin of goods, in this
case, Darjeeling tea. The Geographical Indications Act is aimed at promoting goods bearing Indian geographical origin for
export, and the plaintiff's claim did not fall under this act.

Overall, the court concluded that the plaintiff's suit was misconceived and not maintainable under the Geographical
Indications Act. The defendant's use of the name "DARJEELING LOUNGE" did not infringe on the plaintiff's rights, and the
issues referred to were answered in the negative.
Scotch Whisky Association vs. In this case, the plaintiff, representing Scotch whisky, sought to prevent the defendant from misleadingly advertising their 434
Unibev Limited whisky as Scotch whisky with a higher age statement. The defendant was using phrases like "blended with up to 18 years
old Scotch and Matured Indian Malts," which could mislead consumers into believing the whisky contained only 18-year-
 old Scotch.

The court found that the defendant's use of such phrases could deceive consumers into thinking the whisky contained only
18-year-old Scotch, neglecting the possibility of other Scotch whiskies with lower age denominations being used in the
blend. This could mislead consumers about the quality and composition of the whisky.

The court concluded that the defendant's actions constituted an attempt to pass off their whisky as being of higher quality,
which could harm the reputation and goodwill of Scotch whisky. As a result, the court granted an interim injunction in
favor of the plaintiff, directing the defendant to accurately disclose the minimum age of the Scotch whisky blended with
Indian malts on their advertisements and labels. This decision aimed to prevent consumer deception and protect the
integrity of Scotch whisky.
Madhya Kshetra Basmati In this case, the petitioners sought to challenge the order and seek the cancellation of the Geographical Indication (GI) on 434
Growers Association Samiti vs. 'Basmati Rice' registered by the Agricultural and Processed Food Products Export Development Authority (APEDA). They
Intellectual Property Appellate argued that the GI tag unreasonably included areas beyond those traditionally associated with Basmati rice cultivation,
Board, Chennai encompassing portions of multiple states and districts that do not grow Basmati rice.
Supreme Court ruled that the High Court made a mistake by not considering the specific areas mentioned in the
application for the Basmati rice Geographical Indication (GI). The Court overturned the previous decision and said that the
petitioners cannot challenge the inclusion of areas in other states through their current petitions. They must address these
issues within the framework of the GI application process.
 Layout – Designs of Integrated Circuits
M/S Puneet Industrial Controls The plaintiff claims that their products, which incorporate unique electric and electronic circuits printed on circuit boards 459
vs. M/S Classic Electronics & (PCBs), qualify for protection under the Semiconductor Integrated Circuits Layout Design Act, 2000 (SICLD Act). This Act
Anr specifically addresses the layout designs of semiconductor integrated circuits.

However, the defendant argues that the plaintiff's products do not fall under the purview of the SICLD Act. They contend
that while the plaintiff's products may contain semiconductor integrated circuits, the design and layout of these circuits
are different from the layout designs protected under the SICLD Act.

The court's ruling addresses this dispute. It emphasizes that the SICLD Act is a specialized law that governs semiconductor
integrated circuits, distinct from the Copyright Act, which is a more general statute. The court cites legal precedents to
support the principle that specific laws like the SICLD Act take precedence over general laws like the Copyright Act when
they conflict.

However, the court acknowledges that the SICLD Act was not in existence when the plaintiff filed the lawsuit. Therefore,
the plaintiff could not have anticipated its application at the time of filing. As a result, the court decides that the question
of whether the plaintiff's products qualify for protection under the SICLD Act requires a factual determination based on
evidence and trial proceedings.

In essence, the court's ruling underscores the importance of applying the appropriate legal framework to determine the
scope of protection for intellectual property rights. It also highlights the need for evidence-based decisions rather than
dismissing claims based on speculative or uncertain grounds.
 Protection of Trade Secrets
Zee Telefilms Limited vs. Facts: The plaintiff, a firm involved in video and television production, presented the idea of "Kanahiya" to the defendant 470
Sundial Communications in 2002, intending to develop it into a television program. Both parties understood the idea's originality and the
Private Limited defendant's obligation to maintain confidentiality.

Issue: Whether the defendant's utilization of the plaintiff's idea constitutes a breach of confidentiality and copyright
infringement.

Court's Analysis:

1. Nature of Confidential Information: The court assessed the confidential nature of the information, emphasizing its
potential harm if disclosed or beneficial to competitors. The plaintiff regarded the idea as proprietary, seeking
protection against unauthorized use.
2. Belief in Confidentiality: It was determined that the plaintiff genuinely believed the information to be confidential
and not in the public domain. This belief formed the basis for asserting confidentiality and justified legal
protection.
3. Reasonableness of Belief: The court scrutinized the reasonableness of the plaintiff's belief in the idea's
confidentiality. This ensured that the assertion of confidentiality was grounded in logical reasoning, not mere
speculation.
4. Industry Standards: Evaluation of the information considered industry norms and practices, determining the level
of confidentiality expected within the video and television production sector.
5. Distinction from Copyright: While copyright protection applies to works in a fixed form, the breach of
confidentiality extends beyond this, encompassing situations where information is shared under an expectation of
confidentiality, irrespective of its form.

Conclusion: The court ruled in favor of the plaintiff, recognizing the breach of confidentiality by the defendant. The
defendant's utilization of the plaintiff's idea without consent constituted a breach of confidence, entitling the plaintiff to
legal recourse.
Stellar Information Tech Private In this case, the Plaintiff accuses the Defendant, a former employee, of violating confidentiality agreements by leveraging 470
Ltd vs. Rakesh Kumar proprietary information to solicit clients. Specifically, the Plaintiff contends that the Defendant's actions, including
forwarding emails related to potential business opportunities with a client shared by both parties, constitute a breach of
contract. However, the Defendant argues that the information in question is not confidential as it is publicly available, and
soliciting clients does not breach confidentiality agreements. The court deliberated on the definition of "confidential
information" outlined in the agreements and ruled that publicly accessible data cannot be considered confidential.
Additionally, the court determined that soliciting clients, even those shared with the Plaintiff, does not inherently breach
confidentiality agreements. Consequently, the Plaintiff's request for an injunction against the Defendant was dismissed.

John Richard Brady & Ors vs.  Plaintiffs' Allegations: Plaintiffs seek an injunction against Defendants, claiming infringement of their copyright and breach 480
Chemical Process Equipment P of confidentiality agreements. They allege that Defendants manufactured machines replicating the design, manuals, and
Ltd & Anr drawings of Plaintiffs' Fodder Production Unit, obtained under a confidentiality agreement.
 Defendants' Actions: Defendants, despite an agreement not to disclose confidential information, purportedly replicated
Plaintiffs' Fodder Production Unit design and specifications. Plaintiffs discovered this when Defendants failed to provide
the required thermal panels, prompting an investigation into Defendants' activities.
 Legal Precedent: The court referenced the Saltman Engineering Co. v. Cambell Engineering Co. case, affirming the
enforceability of maintaining secrecy in business arrangements. It emphasized the obligation, implied by law, to treat
confidential information confidentially, even without explicit contractual provisions.
 Prima Facie Case: The court found a prima facie case of copying by Defendants, noting striking similarities between
Defendants' machines and Plaintiffs' drawings. Despite functional differences claimed by Defendants, their rapid
production process and lack of evidence on their machine's development supported the inference of copying.
 Balance of Convenience: Considering the irreparable harm to Plaintiffs' business if Defendants continue manufacturing
and selling infringing machines, the court ruled in favor of granting an injunction. It aimed to prevent further harm to
Plaintiffs and uphold the confidentiality of technical information shared with Defendants.
 Conclusion: The court granted an interim injunction in favor of Plaintiffs, restraining Defendants from manufacturing,
selling, or dealing in machines resembling Plaintiffs' Fodder Production Unit. It emphasized the importance of protecting
intellectual property rights and preventing unfair competition resulting from the misuse of confidential information.

Tata Motors Limited & Anr vs.  Petitioners' Claims: The petitioners asserted that information provided to the Government of West Bengal and a 482
State of Bengal corporation regarding the manufacture of the 'Nano' car was of a commercially confidential nature. They emphasized that
this information, including critical details on costing, was shared under the understanding of confidentiality and would
harm their competitive position if made public.
 Request for Non-Disclosure: The petitioners requested the Government and the Corporation not to disclose any part of
the information to third parties without their consent. Both entities confirmed, through letters, their intention to respect
this request, subject to the laws of the land and their accountability to the legislature.
 Lease Agreement: Subsequently, a lease agreement was executed between the Corporation and the first petitioner for the
 lease of land at Singur for a period of 90 years, further solidifying the confidentiality expectations surrounding the
information.
 Legal Interpretation: The court referred to the definition of trade secrets in Black's Law Dictionary, emphasizing the
economic value derived from maintaining confidentiality and the reasonable efforts made to keep the information secret.
Section 8(1)(d) of the Right to Information Act exempts the disclosure of information if it includes commercial confidence,
trade secrets, or intellectual property that could harm a third party's competitive position.
 Court's Decision: The court concluded that the denial of disclosure by the public authority indicated the presence of
clauses related to commercial confidence, trade secrets, or intellectual property in the agreement. Therefore, the
information was exempt from disclosure under the Right to Information Act, given the potential harm it could cause to the
competitive position of the petitioners.

Bombay Dyeing and  Defendant's Employment Agreement: The defendant, a former whole-time director of the plaintiff-company, had signed 482
Manufacturing Co. Ltd. vs. an employment agreement agreeing not to disclose confidential information belonging to the company.
Mehar Karan Singh  Alleged Divulgence of Information: The defendant is accused of disclosing confidential information, specifically a manual
of customized software for real estate business, to a competitor, Dawnay Day India Land Private Limited (DD), via email.
This software was acquired by the plaintiff at considerable cost from the software producer Oracle.
 Legal Action: The suit filed by the plaintiff sought injunction against divulgence of confidential information, along with
claims for damages and refund of excess salary paid to the defendant during his tenure as a director.
 Criteria for Trade Secrets: The court outlined factors to identify trade secrets, including the extent of knowledge outside
and inside the business, precautions taken to guard secrecy, value to the holder, efforts and expenses incurred, and
difficulty for others to acquire and duplicate the information.
 Decision on Confidential Information: Emailing the manual of the software, purchased at significant cost by the plaintiff,
was considered a breach of confidence. The court emphasized that even without an express clause in employment
agreements, employees were obligated not to disclose such confidential information.
 Court's Ruling: While acknowledging the defendant's acquisition of skills during employment, the court held that certain
aspects, such as contract rates and conditions, did not qualify as trade secrets. It emphasized that excellence and skills
acquired by an individual were not proprietary rights of the company, but the result of personal development and
experience.
 Biological Diversity
Divya Pharmacy vs. Union of  Petitioner's Identity: Divya Pharmacy, a business entity under the "Divya Yog Mandir" Trust, contested a demand from the 516
India Uttarakhand Biodiversity Board (UBB) under the head of "Fair and Equitable Benefit Sharing" (FEBS).
 Legal Dispute: The petitioner argued that as an Indian entity, it is not obligated to contribute under FEBS, as it does not
require prior approval from the National Biodiversity Authority (NBA), a prerequisite for FEBS contribution.
 Defendant's Position: The UBB contended that FEBS applies to both foreign and Indian entities, aiming to align with
international conventions and treaties such as the Nagoya Protocol.
 Interpretation of FEBS: The court rejected the petitioner's argument, stating that regulating commercial activity through
fee demands, such as FEBS, is within the legal purview of regulatory authorities like the UBB. FEBS is not confined to the
Act's definition alone but S. Jagannath vs. Union of India & Ors on 11 December encompasses broader conservation
objectives and international commitments.
 Authority of NBA and SBB: The court affirmed that NBA has the power to frame regulations for benefit sharing, including
monetary compensation, and SBB, under its regulatory authority, can collect FEBS. Thus, the petitioner's challenge to the
validity of regulations related to FEBS was dismissed.
 Court's Decision: The court concluded that SBB has the authority to demand FEBS from the petitioner, as outlined in the
Act and related regulations. The challenged regulations were deemed valid and consistent with the Act's provisions.

S. Jagannath vs. Union of India  Background of the Case: The case addressed the shift from traditional rice/shrimp rotating aquaculture to more intensive 519
& Ors on 11 December methods, leading to large-scale commercial shrimp farming in ecologically fragile coastal areas of India.
 Petitioner's Demands: The petitioner sought enforcement of coastal zone regulations, cessation of intensive and semi-
intensive shrimp farming in coastal areas, prohibition of wetlands for shrimp farming, and the establishment of a National
Coastal Management Authority.
 Supreme Court's Analysis: The Supreme Court examined ecological and social implications, including loss of agricultural
land and mangroves, obstruction of natural drains, salinization, chemical use, groundwater extraction, and loss of
biodiversity. It emphasized the threat posed by intensified shrimp farming to the environment and ecology.
 Guiding Principles for Sustainable Development: Sustainable development was highlighted as the guiding principle for
shrimp aquaculture, with emphasis on environmental impact assessments, social impacts, and inter-generational equity.
Compensation for affected individuals and communities was deemed necessary.
 Court's Directives: The Central Government was directed to establish an authority to protect ecologically fragile coastal
areas, implementing the Precautionary Principle and Polluter Pays Principle. Construction of new shrimp culture ponds
within the coastal regulation zone was prohibited, except for traditional technologies. Existing shrimp culture industries in
the coastal zone were ordered to be demolished, and conversion of agricultural, salt pan, mangrove, and forest lands for
shrimp farming was prohibited. Shrimp culture industries outside the coastal regulation zone required prior approval and
assessment of ecological damage and compensation.
 Protection of Plant Varieties
Pepisco vs. Gujarat Farmers  Plaintiff's Claims: The plaintiff seeks permanent injunction to restrain infringement of their registered potato plant variety 553
(also known as Pepsico vs. Bipin "FL 2027" under the Protection of Plant Varieties and Farmers’ Rights Act, 2001, and alleges passing off by the defendant.
Patel & Ors.) The plaintiff, a breeder of the variety, contends that the defendant has illegally grown, produced, and sold the variety
without permission, violating their statutory rights.
 Background of the Variety: The "FL 2027" variety, also known commercially as FC5, is a hybrid of FL 1867 and Wischip
varieties. It was first commercially used in 2009 and is traded under the trademark FC5 by the plaintiff. The plaintiff
obtained registration for the variety in 2016 and has licensed it to farmers under a buyback system.
 Legal Dispute: PepsiCo, the owner of the registered variety, obtained an interim injunction against farmers suspected of
growing the variety without authorization. However, farmers argue that they acquired the seeds from the grey market and
assert protection under Section 39(1)(iv) of the Act, claiming the seed was already on the market before PepsiCo's
registration.
 Legal Basis for Action: PepsiCo cites Section 64 of the Act, alleging violation of rights established under the Act when a
person sells, exports, imports, or produces a variety without the breeder's consent. Farmers argue that they have the right
to grow the variety under Section 39(1)(iv).
 Resolution and Withdrawal: Following public outcry and pressure, PepsiCo withdrew its claims against the farmers,
dismissing the legal action on May 10th, indicating the influence of public opinion and political pressure on the decision.

Maharashtra Hybrid Seed Co.  Background: The petitioners challenge an order by the Registrar, Protection of Plant Varieties and Farmers’ Rights 554
vs. Union of India and Anr Authority, which held that parent lines of known hybrid varieties could not be registered as "new" plant varieties under the
Protection of Plant Varieties and Farmers’ Rights Act, 2001. The dispute revolves around whether the parent lines of extant
hybrid varieties can be considered novel plant varieties for registration.
 Petitioners' Argument: The petitioners argue that hybrid seeds obtained from crossing parental lines are distinct from the
parent lines in traits and characteristics. They contend that since regeneration of hybrid seeds results in a new hybrid
variety, the parent lines cannot be considered the same as the hybrid variety.
 Interveners' Argument: The interveners argue that the Act does not require harvested material of a variety to be a variety
itself or capable of reproducing the parent variety. They contend that the distinction between US/European laws and the
Act is erroneous and that the word "deemed" in the Act must be interpreted in context.
 Court's Analysis: The court interprets Section 15(3)(a) of the Act, which defines novelty criteria for registration of new
varieties. It holds that if the harvested material of a variety has been sold or disposed of prior to the specified period, the
variety ceases to conform to the novelty criteria. The court emphasizes that the intention of the legislature must be
discerned from the plain language of the statute.
 Decision: The court concludes that if the seeds of parent lines have been commercially sold, the breeders cannot claim the
parent lines to be novel. It states that a purposive interpretation that furthers the intention of the legislature must be
adopted, which is to protect the rights of farmers and plant breeders. Therefore, the court dismisses the petitions, finding
 no reasons to interfere with the impugned order.

Monsanto Technology LLC vs.  Facts: 556

Nuziveedu and Ors The plaintiffs seek a permanent injunction against the defendants from using the trademark "BOLGARD" and "BOLGARD II"
brand cotton technology, which violates the plaintiffs' registered patent. They also seek to restrain the defendants from
selling or using seeds/hybrid seeds bearing the patented technology, along with an account rendition. The parties had
previously entered into a sublicense agreement allowing the defendants to develop genetically modified hybrid cotton
planting seeds using the plaintiffs' technology. However, disputes arose regarding payment of license fees, leading to the
termination of the agreement by the plaintiffs.
 Issue:
Whether Section 3(j) of the Patents Act, 1970 prohibits patenting gene sequences mentioned in the claims of GM hybrid
cotton seeds.
 Held:
The court opined that the Division Bench should have limited its adjudication to whether granting an injunction was
justified, rather than examining the counterclaim itself. Summary adjudication of a technically complex suit requiring
expert evidence at the injunction stage was neither desirable nor permissible. The suit involved complicated mixed
questions of law and facts regarding patentability and exclusion of patents, which could be examined based on evidence.
Section 64 of the Act provides for revocation of a patent based on a counterclaim in a suit, presupposing a valid
consideration of claims in accordance with the law, not summary adjudication. The Supreme Court upheld the Single
Judge's judgment and gave it time to decide the patent case elaborately based on expert testimony.
Sungro Seeds Ltd. vs. Union of Facts: The petitioners challenge a common order passed by the Registrar, Protection of Plant Varieties and Farmers’ Rights 556
India Authority, which held that parent lines of known hybrid varieties could not be registered as "new" plant varieties under the
Protection of Plant Varieties and Farmers’ Rights Act, 2001 (the ‘Act’). The order stated that if the hybrid falls under the category of
extant variety, then its parental lines cannot be treated as novel.

Arguments:

 Petitioners argue that hybrid seeds obtained from crossing parental lines are distinct from the parent lines and cannot be
considered as propagating material of the parental line varieties.
 They contend that the characteristics of the hybrid variety are different from the parental lines, thus the parent lines
cannot be considered the same as the hybrid variety.
 Interveners argue that hybrid seeds produced by crossing parental lines are the propagating or harvested material of each
parental line, and commercial exploitation of such hybrid seeds prior to the application date would make the parent lines
ineligible for registration.
 Issue: Whether the parent lines of extant hybrid varieties can be considered as novel plant varieties for registration under the Act?

Held: The court holds that if the seeds of parent lines have been commercially sold, breeders cannot claim the parent lines to be
novel. Even if the language of Section 15(3) of the Act is ambiguous, it must be interpreted in a manner that furthers the legislative
intent, which is to protect the rights of farmers and plant breeders. The Act provides for exclusivity of rights for a specified period,
and extending protection to parent lines as suggested by the petitioners would effectively prolong this period significantly.
Therefore, the court upholds the interpretation that parent lines of extant hybrid varieties cannot be considered as novel plant
varieties for registration under the Act.
Business Concerns in Commercializing Intellectual Property Rights
United States vs. Microsoft  The case involved allegations of Microsoft abusing its monopoly power by bundling its operating system 568
Corporation (Windows) with its web browser (Internet Explorer), thereby stifling competition.
 Microsoft's practice of selling Windows with Internet Explorer made it difficult for other web browser
competitors to enter the market.
 Microsoft argued that Internet Explorer was a separate entity and that other versions existed for different
operating systems.
 The court found that Microsoft had utilized its dominant position to impede competition, violating Sections 1
and 2 of the Sherman Anti-Trust Act through monopolization.
 Microsoft appealed the decision, leading to the requirement that Microsoft be split into two separate
components—one for the browser and another for the operating system.

Aamir Khan Productions Private  The petitioners contested show cause notices issued by the Competition Commission, arguing that the 569
Limited vs. Union of India (UOI) Commission lacks jurisdiction to initiate proceedings concerning films due to the exhaustive provisions of the
and Ors. Copyright Act, 1957.
 The court noted that the petitioners essentially sought to reinterpret the language of sub-section (5) of Section 3
of the Competition Act, 2002, suggesting that it should exempt copyright matters from the purview of the
Competition Act. However, sub-section (5) merely ensures that the provisions of Section 3 do not infringe upon
the rights granted under the Copyright Act.
 The court clarified that sub-section (5) of Section 3 does not bar the Competition Commission from adjudicating
matters related to copyright. Instead, it allows individuals to assert defenses before the Commission that they
could also raise before the Copyright Board.
 The question of whether the Competition Commission has jurisdiction in cases involving films is a mixed
question of law and fact, which the Commission is competent to decide. The court expressed confidence that
 the Commission would consider all contentions raised by the petitioners, including those based on sub-section
(5) of Section 3 of the Competition Act.
Performing Right Society Ltd vs.  The case revolved around the interpretation of an assignment clause in contracts between a claimant collecting 573
B4U Network (Europe) Ltd organization and its composer members.
 Specifically, the issue was whether the assignment clause resulted in an immediate transfer of copyright in future
musical works commissioned by third parties as works for hire.
 An example cited in the case was the song "Shukran Allah," which was composed by two Indian composers who had
previously made deals with the collecting organization (PRS).
 The composers were later commissioned to write the score for a movie, and the commissioning agreement stated that
the film producer would control all copyright.
 Subsequently, the producer entered into sublicence agreements allowing the defendant to broadcast the work in the
United Kingdom.
 The court ruled that the assignment to the movie producer failed because the collecting organization (PRS) had
already been assigned the copyright.
 Despite differences in the wording of the agreements, their effects were deemed the same upon construction.
 As per the interpretation, the PRS member agreement constituted a first-in-time assignment of future copyright under
section 91(1) of the Copyright, Designs and Patents Act 1988 (UK).
 The court found this interpretation of the contract to be commercially rational and upheld it.