Monthly Round Up-February 2021

A. Notable Developments:

1. Draft Patents (Amendment) Rules, 2021

The Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade), on February 09, 2021, has notified the draft Patent (Amendment) Rules, 2021 to further amend the Patents Rules, 2003 and has invited objections and comments from the stakeholders. The Draft Patent (Amendment) Rules, 2021 were circulated on February 9, 2021 and will be taken into consideration by March 9, 2021 and have been covered by us at https://www.candcip.com/single-post/india-draft-patent-amendment-rules-2021-notified.

2. Information Technology (Guidelines for Intermediary and Digital Media Ethics Code) Rules, 2021

The Ministry Of Electronics And Information Technology, Government of India, on February 25, 2021, enacted the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021[1]. As per a release[2] on the Press Information Bureau, Government of India, the salient features of the Rules are as follows:

Guidelines Related to Social Media to Be Administered by Ministry of Electronics and IT:

· Due Diligence To Be Followed By Intermediaries: The Rules prescribe due diligence that must be followed by intermediaries, including social media intermediaries. In case, due diligence is not followed by the intermediary, safe harbour provisions will not apply to them.

· Grievance Redressal Mechanism: The Rules seek to empower the users by mandating the intermediaries, including social media intermediaries, to establish a grievance redressal mechanism for receiving resolving complaints from the users or victims. Intermediaries shall appoint a Grievance Officer to deal with such complaints and share the name and contact details of such officer. Grievance Officer shall acknowledge the complaint within twenty four hours and resolve it within fifteen days from its receipt.

· Ensuring Online Safety and Dignity of Users, Specially Women Users: Intermediaries shall remove or disable access within 24 hours of receipt of complaints of contents that exposes the private areas of individuals, show such individuals in full or partial nudity or in sexual act or is in the nature of impersonation including morphed images etc. Such a complaint can be filed either by the individual or by any other person on his/her behalf.

· Two Categories of Social Media Intermediaries: To encourage innovations and enable growth of new social media intermediaries without subjecting smaller platforms to significant compliance requirements, the Rules make a distinction between social media intermediaries and significant social media intermediaries. This distinction is based on the number of users on the social media platform. Government is empowered to notify the threshold of the user base that will distinguish between social media intermediaries and significant social media intermediaries. The Rules require the significant social media intermediaries to follow certain additional due diligence.

· Additional Due Diligence to Be Followed by Significant Social Media Intermediary:

- Appoint a Chief Compliance Officer who shall be responsible for ensuring compliance with the Act and Rules. Such a person should be a resident in India.

- Appoint a Nodal Contact Person for 24x7 coordination with law enforcement agencies. Such a person shall be a resident in India.

- Appoint a Resident Grievance Officer who shall perform the functions mentioned under Grievance Redressal Mechanism. Such a person shall be a resident in India.

- Publish a monthly compliance report mentioning the details of complaints received and action taken on the complaints as well as details of contents removed proactively by the significant social media intermediary.

- Significant social media intermediaries providing services primarily in the nature of messaging shall enable identification of the first originator of the information that is required only for the purposes of prevention, detection, investigation, prosecution or punishment of an offence related to sovereignty and integrity of India, the security of the State, friendly relations with foreign States, or public order or of incitement to an offence relating to the above or in relation with rape, sexually explicit material or child sexual abuse material punishable with imprisonment for a term of not less than five years. Intermediary shall not be required to disclose the contents of any message or any other information to the first originator.

- Significant social media intermediary shall have a physical contact address in India published on its website or mobile app or both.

- Voluntary User Verification Mechanism: Users who wish to verify their accounts voluntarily shall be provided an appropriate mechanism to verify their accounts and provided with demonstrable and visible marks of verification.

- Giving Users An Opportunity to Be Heard: In cases where significant social media intermediaries removes or disables access to any information on their own accord, then a prior intimation for the same shall be communicated to the user who has shared that information with a notice explaining the grounds and reasons for such action. Users must be provided an adequate and reasonable opportunity to dispute the action taken by the intermediary.

- Removal of Unlawful Information: An intermediary upon receiving actual knowledge in the form of an order by a Court or being notified by the Appropriate Govt. or its agencies through authorized officer should not host or publish any information which is prohibited under any law in relation to the interest of the sovereignty and integrity of India, public order, friendly relations with foreign countries etc.

· The Rules will come in effect from the date of their publication in the gazette, except for the additional due diligence for significant social media intermediaries, which shall come in effect 3 months after publication of these Rules.

B. Notable Cases:

1. The Delhi High Court has passed an ex-parte ad-interim order restraining the Defendant from using the Plaintiff’s registered trade marks, including HIMALAYA, or any other identical and/or deceptively similar mark in any manner, including use as part of the impugned domain names, impugned websites or email IDS; as well as restraining it from using, advertising, or directly or indirectly dealing in any manner with the trade marks of the Plaintiff. The Plaintiff averred that it is a well-known entity, engaged in manufacture and distribution of Ayurvedic medicaments and preparations, under the name "HIMALAYA" and the Defendant is conducting fraudulent activities under the name "Himalaya Global Holdings Ltd." as well as other names such as "Himalaya Pharmacy Pvt. Ltd." The Defendant is alleged to be impersonating the Plaintiff and communicating with the public, making it appear that said messages originated from the Plaintiff. The Plaintiff also averred that the Defendant is operating through rogue websites and the content, from the Plaintiff’s website, was found on these websites and photographs of the Plaintiff’s products taken from its website were also misappropriated by the Defendant.[3]

2. The Delhi High Court has passed an ex parte ad-interim order restraining the Defendants from communicating, hosting, streaming, and/or making available for viewing and downloading, without authorization, on their websites or other platforms, the England Tour of India 2021 Series and content related thereto, so as to infringe the Plaintiff’s exclusive rights and Copyrights. The Plaintiff averred that it has acquired Exclusive Television Rights, Internet Rights, Mobile Rights and Mobile Activation Rights in respect of the ongoing England Tour of India, 2021 Cricket Series. The Plaintiff also averred that the Defendants are rogue websites indulging in online piracy by hosting, streaming and making available for download or otherwise providing access to infringing and illegal content i.e., live broadcast of England Tour of India, 2021 Cricket Series.[4]

3. The Delhi High Court has passed an ad interim injunction in a case where the Plaintiff is the owner of the well-known trade mark TATA, and various other TATA formative marks, and is essentially aggrieved by the Defendant for the unauthorized usage of its trade marks. The Plaintiff averred that by a letter of intent, the Plaintiff had agreed to provide Integrated Design Consultancy Services, to the Defendant, but that this did not permit the Defendant to use the Plaintiff's registered trade marks on various hoardings as well as advertisements on its website and social media platforms.[5]

4. The Delhi High Court has passed an ex-parte ad-interim order restraining the Defendant from using the mark 'GS STAR', and from selling, offering for sale, manufacturing, advertising, importing, exporting, or in any manner commercially dealing in any goods, whether offline or online, bearing the impugned mark or any other mark identical or deceptively similar to Plaintiff's 'G-STAR' trade marks amounting to infringement of the Plaintiff's registered trade marks. The Plaintiff averred that it has been using the 'G-STAR' trade marks since 2002 and the Defendant is not only dealing in clothing, denim and allied goods at a large scale bearing the impugned marks, but also through online trade directories www.indiamart.com and www.justdial.com whereby it is soliciting, advertising, marketing, selling and conducting business under the impugned mark. The Court held that the balance of convenience lies in favour of the Plaintiff and against the Defendant and in case no ex- parte ad-interim injunction is granted, the Plaintiff would suffer an irreparable loss.[6]

5. The Delhi High Court has allowed the application for extension of the injunction order whereby the Defendants were restrained from infringing the Plaintiff’s trade mark 'Dream11' and their owners, proprietors, employees etc. from using 'Dream11' trade mark or any mark deceptively similar thereto. Grievance of the Plaintiff was to the mushrooming of the rogue websites under the name 'Dream11', some of the which were even copying the entire get up and layout of the Plaintiff’s website in order to deceive and lure the customers while promoting its lottery/lucky draw schemes representing to be part of the Plaintiff’s concern/group companies. The Court has also directed the domain name registrar to unlock the domains www.dream11.life, www.dream11.org, www.dream11.net, www.dream11.co and www.dream11.co.in.[7]

6. The Delhi High Court has restrained more than three-dozen vendors on Flipkart, Amazon, Paytm Mall, Snapdeal and TataCliq from selling fake Boya-branded electronic items after Shenzhen Jiayz Photo Industrial Ltd, approached the court alleging those vendors of selling fake Boya products and alleged them of fraud. In an ex-parte order, the Court has asked the marketplace operators to take steps to delist the alleged counterfeit Boya-branded microphones for smartphones, DSLR cameras and recorders amongst other products.[8]

7. The Delhi High Court has passed an ad-interim order restraining the Defendant from manufacturing, offering for sale or dealing with the products under the mark 'ZACLEAR' or any other mark, which is deceptively similar to the products of the Plaintiff under the trade mark "ZYCLEAR". The Court held that the Defendant’s mark is deceptively similar to the Plaintiff's trade mark which has been used uninterruptedly since 2017 and the attempt of Defendant prima facie appears to be to pass off its goods as that of the Plaintiff.[9]

8. The Delhi High Court has passed an ad-interim order restraining the Defendants from either engaging in themselves or authorizing, the reproduction of the Plaintiff's books and artworks in any material form including the storing thereof in electronic medium, communicating the books (including by way of sound recordings) and artworks to the public, issuing copies of the Plaintiff's books and artworks vide any website including the one at http://www.friendwithbooks.co, or doing any other act amounting to an infringement of the Plaintiff's copyright in the Plaintiff's Books and artworks.[10]

9. The Delhi High Court has permanently injuncted the Defendant from bidding for, adopting and using the Plaintiff's MakeMyTrip Word Marks, or any deceptive variant thereof, as a Keyword through Google Ads Program of the Defendant or any other ad word/key word program in any manner whatsoever, amounting to infringement of the Plaintiff's MakeMyTrip Word Marks.[11]

10. The Delhi High Court has passed an ad-interim order restraining the Defendant from manufacturing, using, selling, distributing. advertising, exporting, offering for sale, and in any other manner, directly or indirectly, dealing in either API or intermediates or any product, that infringes the claimed subject matter of the Plaintiffs' Indian Patent No 209816 or any of the claims thereof, including Sitagliptin or any of its pharmaceutically acceptable salts, including Sitagliptin Phosphate Monohydrate. The Plaintiff has averred that the Defendant is, without any authorization or permission from the Plaintiff and without obtaining any license from the Plaintiff, manufacturing and producing infringing Sitagliptin and its intermediates in India.[12]

11. The Calcutta High Court has granted an ad-interim order of injunction restraining the Defendant from infringing or passing of the Plaintiff’s registered word mark 'DURODOOR' and 'DURODOOR LITES' on the grounds that the product of the Defendant is similar to that of the Plaintiff and since the word mark used by the Defendant is phonetically and deceptively similar to that of the registered word marks.[13]

12. The Bombay High Court has restrained the Defendant by a temporary order from broadcasting or communicating to the public films and/or any audio-visual songs, clips or scenes containing in the said films on its channels or otherwise dealing in the said films in any manner so as to infringe the Plaintiff’s copyright in the said films.[14]

13. The Bombay High Court has passed an ad-interim order restraining the Defendants from using, in any manner, the impugned mark SIYARAM'S and/or any mark and/or expression identical with and/or deceptively and/or confusingly similar in any manner to the mark SIYARAM, so as to infringe the Plaintiff's registered trade marks. The Plaintiff has averred that it has used its marks since 1978 and its dealers in Rajasthan informed the Plaintiff that the Defendants were selling counterfeit products under the rival mark SIYARAM'S.[15]

14. The Bombay High Court has recalled its earlier ad-interim order against the Defendant, which was based on the premise that the Defendant is unauthorisedly using the Plaintiff’s well-known abbreviation and mark ISKCON, on the grounds that the Plaint does not disclose that the ISKCON Bengaluru branch has set up an independent claim to use inter alia the name and to license it, or that the Bengaluru unit has been using the mark for a great many years and has also licensed Vishna Foods, the Defendant. The Court has also directed the immediate impleadment by the Plaintiff of ISKCON Bengaluru.[16]

15. In an appeal filed against the order of the Single Judge restraining the Appellant from infringing the registered trade mark ‘Coronil’ and from using the same in relation to its product/business in any manner whatsoever, the Madras High Court set aside the order of the Single Judge on the ground that the use of the word 'Coronil' in the process of manufacture and sale of a tablet as an immunity booster, will not be detrimental to the distinctive character or repute of the registered trade mark of the Plaintiff since the Plaintiff has not claimed any monopoly over the word “Cornonil” by obtaining a separate registration of the aforesaid word as a word mark.[17]

C. Notable mentions:

1. The Tribunals Reforms (Rationalisation and Conditions of Service) Bill, 2021 was introduced in Lok Sabha by the Finance Minister on February 13, 2021. It seeks to dissolve certain existing appellate bodies and transfer their functions (such as adjudication of appeals) to other existing judicial bodies. Particularly, the Bill removes the Appellate Board established under the Trade Marks Act, 1999.[18]

For any questions, please write to Ms. Saumya Kapoor at saumya.kapoor@iprattorneys.com.

[1]https://www.meity.gov.in/writereaddata/files/Intermediary_Guidelines_and_Digital_Media_Ethics_Code_Rules-2021.pdf [2] https://pib.gov.in/PressReleseDetailm.aspx?PRID=1700749 [3]The Himalaya Drug Company & Ors. v. Ashok Kumar & Ors. [CS(COMM) 95/2021], accessible at https://indiankanoon.org/doc/185658137/ [4]Star India Pvt Ltd & Anr vs Sportstody.Com [CS(COMM) 84/2021], accessible at https://indiankanoon.org/doc/141456593/ [5]Tata Sons Private Limited & Anr vs Chirag Pramod Shah [CS(COMM) 80/2021], accessible at https://indiankanoon.org/doc/27239216/ [6]TM 25 Holding BV v. Uma Manja Shivappa [CS(COMM) 78/2021], accessible at https://indiankanoon.org/doc/22664285/ [7]Sporta Technologies Pvt Ltd & Anr vs Dream11 Prime And Others [CS(COMM) 448/2020], accessible at https://indiankanoon.org/doc/109036780/ [8] Accessible at https://economictimes.indiatimes.com/industry/services/retail/do-not-sell-boya-branded-electronic-items-delhi-high-court-tells-etailers/articleshow/81090509.cms?from=mdr [9]Cadila Healthcare Limited vs Uniza Healthcare Llp & Anr. [IA No.11873/2020], accessible at https://indiankanoon.org/doc/153992385/ [10]The Bhaktivedanta Book Trust vs Www.Friendwithbooks.Co [CS(COMM) 88/2021], accessible at https://indiankanoon.org/doc/170905891/ [11]Makemytrip (India) Private vs M/S Travelogy & Ors [CS(COMM) 524/2020], accessible at https://indiankanoon.org/doc/73053871/ [12]Merck Sharp And Dohme Corp & Anr vs Chiral Biosciences Limited [CS(COMM) 23/2021], accessible at https://indiankanoon.org/doc/88994957/ [13]Duroply Industries Limited & Anr vs Ncl Industries Limited [CS 41 of 2021], accessible at https://indiankanoon.org/doc/115753063/ [14]Shemaroo Entertainment Ltd vs Tv9 Media Maharashtra Pvt. Ltd. [COMMERCIAL NOTICE OF MOTION NO. 466 OF 2017 IN COMMERCIAL IP SUIT NO. 595 OF 2017], accessible at https://indiankanoon.org/doc/33960185/ [15]Siyaram Silk Mills Ltd vs Kaluram Gopal Sharma And 2 Ors [INTERIM APPLICATION NO. 1661 OF 2021 IN COMMERCIAL IP SUIT (L) NO. 1652 OF 2021], accessible at https://indiankanoon.org/doc/7352382/ [16] International Society for Krishna Consciousness (ISKCON) v. Vishna Foods Pvt. Ltd. [INTERIM APPLICATION (L) NO. 1913 OF 2021 WITH INTERIM APPLICATION (L) NO. 8962 OF 2020 IN COMMERCIAL IP SUIT (L) NO. 8889 OF 2020], accessible at https://indiankanoon.org/doc/145910281/ [17] Patanjali Ayurveda Ltd. & Anr. v. Arudra Engineers Pvt. Ltd [O.S.A.No.169 of 2020], accessible at https://www.livelaw.in/pdf_upload/patanjali-coronil-388774.pdf [18] Accessible at https://prsindia.org/billtrack/the-tribunals-reforms-rationalisation-and-conditions-of-service-bill-2021 and http://164.100.47.4/BillsTexts/LSBillTexts/Asintroduced/19_2021_LS_Eng.pdf