Bombay High Court Digest On IPR 2023

Case Title: Abdul Rasul Nurallah Virjee and Anr. v. Regal Footwear

Citation: 2023 LiveLaw (Bom) 12

The Bombay High Court temporarily restrained Pune's Regal Footwear from using the mark 'Regal' in a trademark infringement suit filed by owners of Mumbai's Regal Shoes.

Justice R. I. Chagla, while deciding a notice of motion in the suit held, “The Plaintiffs case of passing off is made out particularly considering that the rival marks are identical and used for identical goods/services……infringement is made out in view of the prima facie findings that the Plaintiffs have been able to establish user since 1954 including goodwill and reputation and the Defendant being a junior user, as well as other prima facie findings of the Defendant failing to establish honest concurrent use as well as its case of acquiescence not having been made out.”

'Yoko' and 'Yokoso' May Have Different Meanings in Japanese, Doesn't Make Marks Dissimilar: Bombay High Court Grants Relief To Yoko Sizzlers

Case Title: Yoko Sizzlers v. Yokoso Sizzlers

Citation: 2023 LiveLaw (Bom) 47

The Bombay High Court restrained a Pune-based restaurant from using the mark 'Yokoso Sizzlers', observing that prima facie it is deceptively similar to the registered trademark 'Yoko Sizzlers'.

Justice Manish Pitale granted interim relief to Yoko Sizzlers in an intellectual property rights suit filed by it against Yokoso Sizzlers.

"Merely because Yoko and Yokoso have different meanings in Japanese language, it would not amount to dissimilarity of the marks in question. Therefore, it is found that a strong prima facie case is made out on behalf of the plaintiff, for granting ad-interim relief. This Court is convinced that unless such relief is granted, the plaintiff will suffer grave and irreparable loss, thereby indicating that the balance of convenience also lies in favour of the plaintiff," the court said.

Bombay High Court Refuses To Pass Omnibus Direction Stopping Domain Name Registrar GoDaddy From Registering Names Containing “Swiggy” TradeMark

Case Title: GoDaddy.com LLC & Anr. (Applicants) in Bundl Technologies Pvt. Ltd. v. Aanit Awattam & Ors.

Citation: 2023 LiveLaw (Bom) 51

The Bombay High Court directed GoDaddy, a Domain Name Registrar to inform food delivery service Swiggy each time a domain name containing its trademark 'SWIGGY' is registered. The court however, refused to stop GoDaddy from registering future domain names infringing Swiggy's trademark.

“…it would not be appropriate to continue the ad-interim order granted in terms of prayer clause (g), as it would amount to granting an omnibus and global temporary injunction, operating in futuro. Each instance of infringement would require the Plaintiff to rush to this Court for a direction in this very suit or separate proceedings against specific parties but an omnibus direction as contained in prayer clause (g) could not have been granted”, the court held.

Justice Manish Pitale said that Swiggy will have the liberty to seek relief against each future infringement once it comes to know of the same from GoDaddy.

The court said that the plaintiff has to claim reliefs in context of specific instances of infringement by individuals against whom orders can be passed. Even in a “John doe” action, specific instance of infringement is identified though it may not be known who is responsible for the infringement, the court reiterated.

Fevicol v. Tickawoo: Bombay High Court Finds No Prima Facie "Deceptive Similarity" In Logos, Grants Interim Relief For Certain Products

Case Title: Pidilite Industries Limited v. Chiripal Industries Limited

Citation: 2023 LiveLaw (Bom) 135

The Bombay High Court held that there is no prima facie deceptive similarity between Fevicol manufacturer Pidilite Industries' logo having two elephants against backdrop of a sunset and Chiripal Industries' logo having containing word Tikawoo with the device of a rhino against the backdrop of sun.

The court however, granted interim injunction in favour of Pidilite restraining Chiripal from using marks similar or identical to plaintiff's “HEATX”, “LW+”, and “LW” marks.

Bombay High Court Grants License To 83-Yr-Old Lawyer To Translate Mahatma Gandhi's Devout Disciple Mira Ben's Autobiography In Marathi

Case Title: Anil G. Karkhanis v. Kirloskar Press and Anr.

Citation: 2023 LiveLaw (Bom) 154

The Bombay High Court granted an 83-year-old lawyer the license to translate and publish the autobiography of devout Gandhian - Madeleine Slade also known as Mira Behn in Marathi.

Lawyer Anilkumar Karkhanis said he intended to publish the book titled "The Spirit's Pilgrimage" in Marathi, not for any commercial gain but in public interest. He has approached the court under section 32 of the Copyright Act 1957 for permission as the original publishers are untraceable.

The court took the petitioner's undertaking on record that he would deposit the Royalty in the High Court, if and when any person raises a claim in that regard.

Dispute Over Ownership Of Facebook Group Not A Trademark Dispute: Bombay High Court

Case Title: The Himalayan Club v. Kanwar B. Singh & Ors.

Citation: 2023 LiveLaw (Bom) 168

The Bombay High Court held that the dispute over ownership of a Facebook Group is not a trademark dispute and can be decided by the Civil Court.

Justice Nitin W Sambre set aside Civil Court's decision that it did not have jurisdiction over the dispute of ownership of the Facebook Group called The Himalayan Club.

The court said that the Facebook Group is a website and a social media platform for members to exchange ideas etc. and hence it is not a trademark or a copyright.

Bombay High Court, Interim Relief, PhonePe, Trademark Infringement

Case Title: PhonePe Private Limited v. Resilient Innovations Private Limited

Citation: 2023 LiveLaw (Bom) 182

The Bombay High Court refused to grant interim relief to PhonePe for alleged infringement of its trademark “PhonePe” by Resilient Innovations' trademark “postpe”.

Justice Manish Pitale cited contradictions between PhonePe's stand taken before the Delhi High Court and the Bombay High Court regarding the meaning of the term “Pe”.

PhonePe Private Ltd. in the present case claimed that the suffix “Pe” after the word “Phone” in its trademark has the colloquial Hindi meaning “On”. Therefore, PhonePe means services on the phone, it said.

However, in a 2019 suit pending before the Delhi High Court for alleged infringement of “PhonePe” through defendant's mark “BharatPe”, the plaintiff has claimed that the term “Pe” means the action of payment and it was a misspelling of the word “Pay”.

“Such contrary pleas do indicate that the plaintiff has dis-entitled itself for grant of discretionary reliefs under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC),” the court said.

[Copyright Act] Bombay HC Restrains Radio Channels From Broadcasting Songs Without Equal Royalty To Authors, Says Position Of Law Prima Facie Changed

Case Title: Indian Performing Right Society Ltd. v. Rajasthan Patrika Pvt. Ltd.

Citation: 2023 LiveLaw (Bom) 224

The Bombay High Court temporarily restrained FM radio stations - Radio Tadka and Radio City from broadcasting songs authored by the members of Indian Performing Rights Society (IPRS) without paying royalties to the authors.

Justice Manish Pitale held that prima facie, the original authors (authors, composers, publishers etc.) of the literary or musical works used in films and sound recordings are entitled to royalties equal to the producer for utilization of their works.

The court said that prima facie, due to a 2012 amendment in the Copyright Act, the original authors, who were earlier not entitled to royalty once their work became part of a film, can now claim royalty for any use of their work, except screening in a cinema hall in a movie. The amendment has fundamentally changed the manner in which the rights of authors of original works have to be treated, the court added.

Interim Relief To 'Scam 1992' Makers; Bombay High Court Grants Dynamic Injunction Against Instagram Accounts Using Show's Clips

Case Title: Applause Entertainment Pvt. Ltd. v. Meta Platforms Inc. and Ors.

Citation: 2023 LiveLaw (Bom) 236

The Bombay High Court granted an ad-interim dynamic injunction against 33 Instagram handles and Ashok Kumar (unknown persons) restraining them from using parts of Scam 1992: The Harshad Mehta Story to promote their businesses.

Justice Manish Pitale held that the makers made out a strong prima facie case that the posts violated the proprietary rights of the makers.

Bombay High Court Restrains Trust In Late Actor Dada Kondke's Name From Exercising Rights Over 12 Of His Films

Case Title: Everest Entertainment LLP v. Hridaynath D. Kadudeshmukh and Others

Citation: 2023 LiveLaw (Bom) 242

The Bombay High Court temporarily restrained the trust named after Marathi actor-filmmaker Dada Kondke from dealing in the copyrights of 12 of his films.

Justice Manish Pitale passed the order in an Intellectual Property Right suit filed by Everest Entertainment Ltd against Shahir Dada Kondke Pratishthan and others. Everest contended it had acquired the film's rights from Kondke's heir Manik Padmakar More.

The court said it was prima facie satisfied that More had acquired rights in the 12 films, under Kondke's probated Will and therefore restrained two different organisations from handing over the film's negatives.

Bombay High Court Directs Meta Platforms To Remove Video Prima Facie Infringing Patanjali's "Mahakosh" Trademark

Case Title: Patanjali Foods Limited v. Meta Platforms Inc & Ors.

Citation: 2023 LiveLaw (Bom) 245

The Bombay High Court temporarily restrained Meta Platforms and Ashok Kumar (unknown persons) from circulating a video regarding Patanjali's Mahakosh Refined Soyabean Oil on Meta's online platforms Facebook and WhatsApp during the pendency of Patanjali's trademark infringement suit.

Justice Manish Pitale held that Patanjali made out a strong prima facie case that the video circulating on Facebook and WhatsApp infringed its registered trademarks and directed Meta to remove the URLs provided in Patanjali's plaint.

“this Court is satisfied that prima facie the ingredients of Section 29(8) (a) and (c) of the aforesaid Act are made out. The contents of the video in question, available an the platform of Defendant No. 1 (Meta Platforms), prima facie appears to have infringed upon the registered trademark of the Plaintiff (Patanjali). A strong prima facie case is indeed made out for granting ad-interim reliefs in favour of the Plaintiff”, the court held.

Section 115 Trademarks Act | Police Can't Seal Factory Premises Instead Of Seizing Heavy Machinery: Bombay High Court

Case Title: Mahendra Dattu Gore v. State of Maharashtra

Citation: 2023 LiveLaw (Bom) 258

The Bombay High Court ordered de-sealing of factory premises in Chakan near Pune and observed that police don't have the power under section 115 of the Trademarks Act to seal factory premises where incriminating articles were situated.

A vacation bench of Justice Sharmila Deshmukh and Arif Doctor noted,

“The provisions of sub-section (4) of section 115 of the Trade Marks Act, 1999 permits the police officer to seize without warrant the articles / items which are enumerated in the said sub-section. It is not disputed that there is no power vested with the police to seal the factory premises.”

Bombay HC Denies Interim Relief To Ceiling Fan Manufacture Atomberg In Design Infringement Suit Against Luker, Says Atomberg's Design Registration Itself Prima Facie Liable To Be Cancelled

Case Title: Atomberg Technologies Private Limited v. Luker Electric Technologies Private Limited

Citation: 2023 LiveLaw (Bom) 269

Observing that its design registration itself may be liable to be cancelled, the Bombay High Court on Monday refused to grant interim relief to Atomberg Technologies Pvt. Ltd. against Luker Electric Technologies Pvt. Ltd. for allegedly copying the design of one of its ceiling fans.

Justice Manish Pitale held that Atomberg failed to make a prima facie case for design infringement of its Renesa Ceiling Fan as the design was available in public domain before registration and thus may be cancelled under section 19(b) (cancellation due to prior publication) of the Designs Act, 2000.

Even if it is considered that Luker copied Atomberg's design, Atomberg also had to show 'something more' i.e., that Luker was making a false representation, the court said.

'Link-Documents Not Produced': Bombay High Court Denies Interim Relief To Shemaroo Entertainment In Copyright Infringement Suit Against T-Series

Case Title: Shemaroo Entertainment Ltd. v. Super Cassettes Industries Pvt. Ltd. & Ors.

Citation: 2023 LiveLaw (Bom) 278

The Bombay High Court held that a charter High Court, while exercising its discretion, cannot ignore the absence of 'link documents', or documents establishing the complete link of transfer of rights to the plaintiff, while considering the question of grant of interim relief in a copyright suit.

Justice Manish Pitale denied interim relief to Shemaroo in a copyright suit against T-Series with respect to audio visuals of songs in twenty-four films, observing that it failed to make a prima facie case it its favour.

The court observed that Shemaroo did not produce documents showing the link between original owners/producers and the entities that assigned the rights to Shemaroo, in respect of nine of the films in the suit. For the remaining 15 films, the court held that Shemaroo failed to make out a prima facie that T-Series did not have the right to audio visuals of the songs.

'Complete Abdication Of Quasi-Judicial Function' By Trademark Registrar Rejecting Application Without Considering Submissions: Bombay High Court

Case Title: I Am The Ocean, LLC v. Registrar Of Trade Marks

Citation: 2023 LiveLaw (Bom) 288

The Bombay High Court came down heavily on Registrar of Trademarks and the Senior Examiner for failing to consider submissions and pass reasoned orders before denying registration of trademarks, calling it a “complete abdication” of their quasi-judicial functions.

A single bench of Justice Riyaz Chagla set aside an order of the Senior Examiner of Trademark's refusing registration in one such case and remanded the matter back for fresh consideration. The court directed him to consider the applicant's submissions and pass a reasoned order.

The court added that the replies were filed with “application of mind” and the “least expected” was that the adjudicating officer would “peruse the reply and extend to it the bare courtesy of application of mind.”

No Stay At 11th Hour: Bombay High Court Refuses To Stall Release Of Ayushmann Khurrana Starrer 'Dream Girl 2'

Case Title: Ashim Kumar Bagchi v. Balaji Telefilms Limited & Ors.

Citation: 2023 LiveLaw (Bom) 389

The Bombay High Court refused to stay the release of the Ayushmann Khurrana starrer Dream Girl 2. The film is produced by Ekta Kapoor's Balaji Telefilms.

Justice Riyaz Chagla passed the order in a Commercial IPR suit filed by writer-director Ashim Kumar Bagchi wherein he alleged that makers are passing off his registered script as their own.

Bagchi sought an interim injunction on the release of the film. However, the court observed the interim plea was filed only on August 18, 2023 and the respondent must be given an opportunity to respond.

“It is well settled that at the eleventh hour, films should not be prevented from their release. An opportunity is required to be given to Respondent / Defendant to file their reply to the Interim Application.”

'R. Logo': Bombay High Court Denies Interim Relief To Republic TV In Trademark Infringement Suit Against Rayudu Media

Case Title: ARG Outlier Media Private Limited v. Rayadu Vision Media Limited

Citation: 2023 LiveLaw (Bom) 400

The Bombay High Court refused interim relief to ARG Outlier Media Private Limited – owner of Republic TV - in a trademark infringement suit against Telangana based Rayudu media over its logo.

Justice Manish Pitale dismissed the interim application filed by ARG against using the logo.

Bombay High Court Directs Video Sharing Platform Triller To Pay USD 300,000 To Zee Entertainment For Use Of Copyrighted Music

Case Title: Zee Entertainment Enterprises Limited v. Triller Inc.

Citation: 2023 LiveLaw (Bom) 421

The Bombay High Court directed video sharing platform Triller to pay unpaid dues of USD 300,000 (approximately Rs. 2,44,26,480) to Zee Entertainment Enterprises Limited for use of its copyrighted music.

Justice Kamal Khata in Zee's suit for recovery of the amount observed that Triller has a history of litigations in the United States and might attempt to dispose of its assets in India to evade its obligations.

Families Visiting Ancestral Village During Ganpati Festival Common Practice In Maharashtra, Not Copyrightable Theme: Bombay High Court

Case Title: Navigns Studios Pvt. Ltd. v. Sameer Pandharinath Khandekar and Ors.

Citation: 2023 LiveLaw (Bom) 448

The Bombay High Court held that there can be no copyright in the theme of 'families going to their ancestral village in Konkan during the Ganpati festival' because in Maharashtra, family members do visit their ancestral places during Ganpati festival.

Justice Manish Pitale made this observation while refusing to stay the release of a web series titled “Devak Kalji” in a copyright infringement suit filed by Navigns Studios Pvt. Ltd. alleging that the producers of the web series copied the plaintiff's script.

Wynk v. TIPS | Internet Based Music Streaming Platforms Not Eligible For Compulsory Music Licences Available For TV, Radio: Bombay HC

Case Title: Wynk Ltd. v. Tips Industries Ltd.

Citation: 2023 LiveLaw (Bom) 464

The Bombay High Court held that online music streaming and downloading platforms would not be eligible for discounted compulsory licenses to their music under Section 31D of the Copyrights Act.

This means that internet-based platforms will have to negotiate contracts with big record companies to use their repertoire of music unlike radio and television networks.

A division bench comprising Justices Gautam Patel and Gauri Godse upheld an order passed by Justice SJ Kathawalla, now retired, in a dispute between Bharati Airtel Ltd's WYNK Ltd and Tips.

Bombay High Court Refuses To Enforce Producers Association Award Directing ALTT To Pay Rs 1.57 Crores To Makers Of 'Mentalhood' Web Series

Case Title: Film Farm India Pvt Ltd v. ALT Digital Media Entertainment Ltd.

Citation: 2023 LiveLaw (Bom) 494

The Bombay High Court refused to enforce an award of the Western India Film Producers' Association (WIFPA) directing Balaji Telefilms' OTT unit ALTT to pay Rs. 1,57,00,000/- to makers of the web series “Mentalhood”.

Justice SM Modak held that the decision of the Disputes Settlement Committee of WIFPA cannot be enforced as an arbitral award in the absence of an arbitration agreement between parties of the dispute, if one of the parties is not a member of WIFPA.

Bombay High Court Directs Seizure Of SE Oil Products' Soya Bean Oil Upon Finding Trademark Deceptively Similar To Patanjali's Marks

Case Title: Patanjali Foods Ltd. v. SE Oil Products Pvt Ltd. & Anr

Citation: 2023 LiveLaw (Bom) 556

The Bombay High Court appointed a court receiver and directed immediate seizure of the refined soya bean oil produced by SE Oil Products Pvt Ltd as its trademark was 'deceptively similar' to the trademark of Patanjali Food Ltd.

In an ex-parte ad-interim order, Justice RI Chagla observed that prima facie, SE's trademark was identical to Patanjali's registered trademark “TULSI” and non-registered trademark “TULSI GOLD”.

The order was passed in an intellectual property rights suit by Patanjali. The court had said that the order would be uploaded only after the Additional Special Receiver completed the surprise seizures.

“I am of the opinion that the similarity between the rival trademarks is not a matter of coincidence. Defendant's impugned mark is identical with and/or deceptively similar to the Plaintiff's registered Trademark “TULSI” and Trademark “TULSI GOLD,” the court observed.

Bombay High Court Declines To Restrain Use Of 'ANNA' Trademark, Cites Plaintiff's Stand Of Dissimilarity During Registration Stage

Case Title: Shantapa alias Shantesh S. Kalasgond v. M/s. Anna

Citation: 2023 LiveLaw (Bom) 560

The Bombay High Court declined to temporarily restrain a Pune restaurant from using the trademark 'ANNA' in an infringement suit, upon finding that during the registration stage, the plaintiff had told the Trademarks Registry that there was no similarity between his mark 'ANNA IDLI GRUHA' and the defendant's mark 'ANNA.

In dismissing the plaintiff's plea for a temporary injunction restraining the defendant from using his mark 'ANNA,' a single bench of Justice Sandeep V Marne held that the principle of 'prosecution history estoppel' would apply in this case.

The doctrine of prosecution history estoppel, which is traditionally associated with patent infringement actions is increasingly being applied in trademark infringement cases and aims to prevent a party from claiming advantages associated with a right consciously waived in previous proceedings.

It was observed that after having declared during registration, that there was no similarity between his mark and the defendant's mark, the Plaintiff could not turn around at the present stage and contend that the two marks were deceptively similar.

[S.60 Copyright Act] Inquiry Into 'Groundless Legal Proceedings' Can't Conclusively Determine Question Of Copyright Infringement: Bombay High Court

Case Title: Manya Vejju v. Sapna Bhog

Citation: 2023 LiveLaw (Bom) 594

The Bombay High Court held that an inquiry under Section 60 of the Copyright Act by the trial court, cannot partake the character of determination as to whether there is indeed no infringement of copyright since the same would tend to pre-empt and prejudge an action for infringement of copyright, which the owner may institute.

Section 60 of the Copyright Act allows a person who has received threats of legal action for copyright infringement or has been wrongly accused of infringement in advertisements to take legal action. The recipient of the threats can file a lawsuit seeking a court declaration of who rightfully owns the copyright. They can also seek a court injunction to stop further threats, as well as monetary damages.

A single bench of Justice NJ Jamadar while remitting the matter back to the trial court for reconsideration, held that while an inquiry can be embarked upon under Section 60, in the present case, the inquiry had transgressed the remit of determination under the enacting part of Section 60 of the Act, as it ventures deep into the arena of infringement of the copyright or otherwise, in substance.

Bombay High Court Restrains Performance Of Copyrighted Songs In New Year 2024 Event At Lucknow's Ramada Hotel

Case Title: Phonographic Performance Ltd. v. Kaamakazi Solution Pvt. Ltd. & Ors.

Citation: 2023 LiveLaw (Bom) 606

The Bombay High Court granted ad-interim injunction against playing of copyrighted songs without license in the New Year 2024 event to be organized at Ramada Hotel, Lucknow.

Justice RI Chagla granted the relief to Phonographic Performance Ltd. (PPL) in its infringement suit against Kaamakazi Solution Pvt. Ltd, the organizer of the event.

“In my view, in the absence of ad-interim relief, the Plaintiff will suffer grave irreparable loss. A prima facie case made out of the likelihood of infringement of the Plaintiff copyrighted works. This Court is of the prima faice view that the balance of convenience is in favour of the Plaintiff and the Defendants have chosen not to make an appearance despite service. Hence, the ad-interim relief is being granted”, the court observed.

Bombay High Court Declines To Vacate Ex Parte Injunction Restraining KLF Nirmal Industries From Using Blue Bottle Similar To Parachute Hair Oil

Case Title: Marico Limited v. KLF Nirmal Industries Pvt. Ltd.

Citation: 2023 LiveLaw (Bom) 613

The Bombay High Court refused to vacate its ex-parte order restraining KLF Nirmal Industries from using for its coconut oil products blue packaging and label deceptively similar to that of Parachute Coconut Oil.

Justice RI Chagla observed that KLF Nirmal Industries Pvt. Ltd. failed to prove that Marico Ltd, manufacturer of Parachute coconut oil, knowingly supressed its delay in seeking the injunction against packaging of KLF Nirmal's coconut oil products.