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Friday, 2 March 2012

Difference between Passing Off Cases and Infringement Cases


CASES

In Corn Products case it was observed that the principle of similarity could not to be very rigidly applied and that if it could be prima facie shown that there was a dishonest intention on the part of the defendant in passing off goods, an injunction should ordinarily follow and the mere delay in bringing the matter to court was not a ground to defeat the case of the plaintiff. It bears reiteration that the word ``Glucon-D'` and its packaging had been used by Glaxo since 1940 whereas the word ``Glucose-D'` had been used for the first time in the year 1989.
Dishonest intention can be proved by they use “extra dark” on their packaging and “dark plus” on the pencil”.
In Cadila Health Care case, it has also been held that in the case of a passing-off action the similarities rather than the dissimilarities have to be taken note of by the court.

Trade Dress Cases

A.V. Rajadurai Nadar v. Ayya Nadar and another wherein it was held that the expression 'deceptively similar' as defined in S.2(d) means that the similarity or resemblance must be such as it would be likely to deceive or cause confusion. Any conclusion reasonable and proper can be arrived at by a meticulous examination of each detail and then making a comparison. At the same time what mainly strikes the eye must also be conducive. But, when one looks at it, especially from the standpoint of a person who is most likely to use a particular brand of matches, if it appears that the distinction is prominent and it cannot lead to any similarity or a deceptive similarity or confusion then there could be no objection to the two different trade marks.

J. and P. Coats Ltd. v. Chadha & Company(India) PTC Supp(1) 295 Del(DB), where colour of rival boxes was similar, the following view was taken:-
"Marks, it must never be forgotten, are remembered rather by general impression or by some significant details than by any photographic recollection of the whole. Keeping in view the main idea, the essential feature or the leading characteristic represented by each one of the two rival marks, we feel that those who use the thread may well be expected to distinguish between the two figures of 'dog' and "anchor" and if they happen to be literate, they can easily distinguish one from the other. It is no doubt true that the colour of the boxes is very much similar, but then that is not conclusive nor is that the domination or the leading characteristic."
Vicco Laboratories Bombay v. Hindustan Rimmer, Delhi case also the plaintiffs were selling their goods with descriptive get up and colour scheme for long in 1995 while the defendants started selling their products in 1997 in the cartons which appeared to be copies of the entire get up and the colour scheme adopted by the plaintiff. It was held to be a case of passing off and fit for injuncting the defendants. The foreign decisions relied upon by Mr. Sibal on the concept of trade dress encompassing colour combination, get up and lay out inspite of there being no similarity in the trade name are as under:-

(i) White Hudson & Company Limited v. Asian Organization Limited 1965 RPC 144. In this case the plaintiffs sold their cough sweets in Singapore since 1953. The sweets were sold loose in orange colored cellophane wrappers on which was printed the word "Hacks" in Roman characters only. In March, 1958 the defendants entered the same market with cough sweets in a white cellophane wrapper. But in May of that year they went over to using an orange wrapper similar to the plaintiffs' but bearing the word "Pecto". The plaintiffs brought an action to restrain passing off. The trial judge found that no other wrapper cough sweets had been sold loose, that the sweets were called by the local population "red paper cough sweets", that the plaintiffs' get-up had become distinctive of their goods, that the get-up of the defendants' sweets resembled the plaintiffs' to such an extent as to lead to confusion, that the difference in the names printed on the wrappers was not sufficient to distinguish the goods in the eyes of a purchasing public largely unable to read English, and that passing-off had therefore been established.
(2) Colgate Palmolive Company And ... vs Anchor Health And Beauty Care Pvt. ... on 29 October, 2003
Words "Colgate" and "Anchor" are distinct and have not an iota of similarities either in look or in sound. That is why the ingredients of trade dress, get up, colour combination, lay out of the container or packing acquire significance and relevance for determining the offence of passing off. This criteria flows from the concept of action of passing off developed over the years that it is the similarities and not the dissimilarities which go to determine whether the action for passing off is required or not. That is why in trademark cases even the deceptive similarities are considered sufficient for infringement of trademark. If similarities of trade dress are substantial from the look of the two goods, it comes within the mischief of passing off.
Upshot of aforesaid discussion leads to the most ineluctable conclusion that the plaintiffs have successfully established a prima facie case for injunction the defendant from using the colour combination of red and white in that order as trade dress on the container and packaging. As a consequence the application is allowed and defendants are, by way of ad interim injunction, restrained from using the colour combination of red and white in that order on the container/packaging of its goods viz. the "Tooth Powder".

REVIEW POWER of Intellectual Property Appellate Board




Intellectual Property Appellate Board (Procedure) Rules, 2003
Rule 23: Review petitions.- (1) A petition in triplicate for review of an order of the Appellate Board may be made to the Registry in the prescribed Form 6 under these rules within two months from the date on which the order is communicated accompanied by a statement setting forth the grounds on which the review is sought. Where the order in question concerns more than one respondent, sufficient extra copies of such petition and statement shall be filed.
(2) The Registry shall forward the petition and statement to the respondents to the review petition.
(3) The respondents may file counter statement in Form 1 under these rules within two months from the date of receipt of the review petition and shall forward a copy of the counter statement to the petitioner directly under intimation to the Registry.
(4) The review petition shall be posted for hearing before a Bench by the Chairman.

Judgments
In Grindlays Bank v. Central Government
the Court was required to consider, inter alia whether the Labour Tribunal had any jurisdiction to set aside the ex-parte award particularly when it was based on evidence. The objection as to the jurisdiction of the Tribunal, raised before the Court was in the following terms:
It is contended that neither the Act nor the Rules framed there under confer any powers upon the Tribunal to set aside an ex parte award. It is urged that the award although ex parte, was an adjudication on merits as it was based on evidence led by the appellant, and, therefore, the application made by respondent No. 3 was in reality an application for review and not a mere application for setting aside an ex parte award.
The Supreme Court held as follows:
It is true that there is no express provision in the Act or the rules framed thereunder giving the Tribunal jurisdiction to do so. But it is a well known rule of statutory construction that a Tribunal or body should be considered to be endowed with such ancilliary or incidental powers as are necessary to discharge its functions effectively for the purpose of doing justice between the parties. In a case of this nature, we are of the view that the Tribunal should be considered as invested with such incidental or ancillary powers unless there is any indication in the statute to the contrary. We do not find any such statutory prohibition.
The expression, 'review', it was held by the Supreme Court, in the above case is used in two distinct senses, namely "(1) a procedural review which is either inherent or implied in a Court or Tribunal to set aside a palpably erroneous order passed under a misapprehension by it, and (2) a review on merits when the error sought to be corrected is one of law and is apparent on the face of the record".

Patel Narshi Thakershi v. Pradyuman singh ji
It was further held, that it is in the latter sense that the Supreme Court in Patel Narshi Thakershi v. Pradyumansinghji held that no review lies on merits unless a statute specifically provides for it. It was also held that when a review is sought due to a procedural defect, the inadvertent error committed by the Tribunal must be corrected ex debito justitiae to prevent the abuse of its process, and such powers inheres in every Court or Tribunal.

Godrej Sara Lee Ltd., A Company ... vs Reckitt Benckiser (India) Ltd. on 15 February, 2008
Shri A.K. Gupta learned senior counsel, however, drew our attention to Rule 23 of the Intellectual Property Appellate Board (Procedure) Rules, 2003 which lays down that a petition in triplicate may be made to the Registry in the prescribed Form-6 under these Rules within two months from the date on which the order is communicated, accompanied by a statement setting forth the grounds on which the review is sought. That Rule itself does not confer power on this Board to review its own orders or decisions. The rule merely prescribes the form in which an application for review may be made. The rule may be contrasted with Section 127(c) of the Act. That provision deals with powers of registrar and based upon that the Registrar may on an application made in the prescribed manner 'review its own decision'. There is no such corresponding provision either under the Act or the Rules framed thereunder conferring power on the IPAB to review its orders or decisions.
We are, therefore, of the view that this Board has no jurisdiction or power to review its own orders and decisions except due to procedural defect or inadvertent error which may require correction ex debito justitiae. The instant petition filed for review on merits, in our opinion is, therefore, not maintainable. It is accordingly dismissed without going into the merits of the contentions raised.

Union of Bank of India v. Chanderkant Gordhandas Shah (1994) 6 SCC 271,
 it is submitted that the High Court exercising jurisdiction under Article 226 of the Constitution will not re-examine factual disputes or the evidence and sit in appeal over the concurrent findings of the AR or the IPAB. The scope of the powers of the judicial review were limited to correcting errors of law or procedural errors leading to manifest injustice or violation of principles of natural justice.
On a conspectus of case law, it becomes quite evident that a Court or Tribunal cannot review its own order or Judgment unless there is a statutory provision providing for the same. However, a Court or Tribunal has inherent powers to recall orders obtained by practising fraud on it. There is no question of the Court becoming functus officio, because it retains the jurisdiction to recall such orders. It inheres in a Court or Tribunal to review by recalling the orders on grounds of fraud, misrepresentation or other similar grounds. We may, however, make it clear that the decision of the Division Bench in K.B.G. Tilak v. Spl. Tahsildar (1978) 2 APLJ (HC) 83) is confined to a case of reopening in a case where either it was dismissed for default or a decision was rendered exparte. This decision, as it is peculiarly confined to the facts and circumstances thereof, cannot, therefore, be of any assistance in so far as the case on hand is concerned. We, therefore, reiterate that a Court or Tribunal can review its own order or judgement only where the party, by way of mis-representation, has played fraud upon the Court and not in other cases.”

IN P.P. Buildwell Pvt. Ltd. Vs. P.P.Jewellers Private Ltd.,

Following the decisions of the Supreme Court in Grindlays Bank’s case and the Division Bench of the Andhra Pradesh case we are of the view that if there is nothing provided in the statute the court or the Tribunal will have no powers to deal with the matter. In the interest of justice, it could be done if there is an error due to a procedural defect that definitely could be rectified. In view of the above, we do not find any procedural defect in the instant case to review the same.

Champagne Moet & Chandon vs Union Of India & Ors on 19 September, 2011

It is worth noting, while exercising the power of judicial review under Article 226 of the Constitution of India it cannot be converted into an appeal. The judicial review is directed not against the decision but is confined to the examination of the decision making process. If the reasons ascribed by the authorities or the IPAB are manifestly unreasonable that no reasonable authority entrusted with the power in question would reasonably made such a decision, the concept of judicial review gets attracted.
 


Bunge Agribusiness India (P) Ltd. vs Registrar Of Trade Marks And Anr. on 3 December, 2004
The main contention of the learned Counsel for the appellant is that the Deputy Registrar by his earlier order allowed the opposition filed by the appellant by upholding all the objections raised by the appellant under Sections 9, 11(a), 12(1) and 18(1) of the said Act. The Review Petition has been filed only on the ground that the original documents were not filed at the time of hearing of the application and second respondent having got the possession of the original documents wants to produce the same by way of additional evidence and on the basis of those documents, the matter can be reviewed. The impugned order of the Deputy Registrar does not disclose the particulars of any original document of the second respondent. The earlier order has been reviewed only on the basis that the mark is a common dictionary word and as such, the appellant cannot claim monopolistic rights. Further, the Deputy Registrar has found that the goods of the second respondent have nothing to do with the goods of the appellant as both are different and consequently the Deputy Registrar had observed that there is no need for any detailed discussion and allowed the Review Petition. The impugned order is contrary to law as the grounds made out in the Review Petition were not the issues discussed by Deputy Registrar in his impugned order. Further, it was contented that the review can be done only to correct the mistake and not otherwise.
6. We find some force in the contention of the learned Counsel for the appellant. As stated already, by order dated 26.2.1993, the Deputy Registrar upheld the opposition of the appellant finding that the second respondent's trademark offends Sections 12(1), 9, 11(a) as well as 18(1) of the said Act. In the Review Petition, the Deputy Registrar was persuaded to review the earlier order only on the ground that the second respondent could not produce the material evidence, which is very clear from the following passage of the order of the Deputy Registrar in his order dated 19.10.1993:
The discovery of evidence by the applicants is an important law point. This evident was not present in the Trade Marks Registry when order dated 26.2.1993 was passed by the Ld. Deputy Registrar of Trade Marks. Now, by exercise of due diligence the evidence in original has been made available to the Trade Marks Registry. Had this evidence been filed prior to order dated 26.2.1993 the fate of this case could have been altered. The grounds of the review petition are reasonable, convincing and relevant. Hence, it is a fit case to allow the said Review Petition.

COPYRIGHT: Microfibres Inc. vs. Girdhar & Co., & Anr.


 
The Plaintiff was stated to be engaged worldwide in the business of manufacturing, marketing, selling and exporting of upholstery fabrics directly or through its subsidiaries and affiliates. It claimed that on all its upholstery fabrics n are printed unique and original artistic works conceptualized and drawn by and on behalf of the Plaintiff.  The Plaintiff claimed that its artistic works enjoyed copyright protection in India as a consequence of the Berne and the Universal Copyright Conventions (India and the U.S. being members of the Conventions).  The upholstery fabrics manufactured and sold by the Defendants were stated to bear artistic works which were identical or colorable imitations of the Plaintiff’s  artistic works and thus constituted infringement of its copyright therein. 
In defence, the Defendants submitted:
(i) the Plaintiff’s artistic works were actually designs relating to textile  products which were aesthetic, ornamental and visual in nature  and thus came within the scope of the Designs Act, 2000;
(ii) the Plaintiff had failed to register these designs under the Designs  Act, 2000 or under its predecessor Act and, therefore, could not  claim protection under the Copyright Act;
(iii) the Plaintiff was itself conscious of the fact that registration was  required under the Designs Act since it had registered some of its  upholstery designs in the U.K. under the local Designs Act;
(iv) the certificates relied upon  and issued by the United States  Copyright Office referred to the subject work as fabric designs and  not artistic works;
(v) the Indian Patent and Design Office confirmed in writing that the  subject works were register able and being registered under the

Designs Act, 2000.

In rejoinder, the Plaintiff pointed out that the definition of “design” under the  new Designs Act, 2000 specifically excluded artistic works  and thus did not apply to its artistic works within the meaning of the Copyright Act, 1957.  In  other words, the Plaintiff argued that its upholstery fabric designs could not  have been registered under the Designs Act, 2000 by virtue of the exclusion of  artistic works and thus entitled to copyright protection under the Copyright Act.
Consequently, it was stated that the defence under Section 15 of the Copyright
Act did not apply. 
On its part, the Defendants submitted:
(i) that the interpretation advanced by the Plaintiff would have the  effect of rendering the law of  designs redundant for the simple  reason that each design registered thereunder would be able to  trace its origin to a diagram, chart, drawing and thus cease to be governed by the Designs Act;
 (ii) this could not have been the legislative intent  because the law of  designs is based on the same principle as that applicable to other  monopolies and to fuel industrial innovativeness by granting limited time limit to the monopolies and allow others to make use of them after they have passed into the public domain;
(iii) the plea of the Plaintiff, if accepted, would be anti competitive and would throttle and stagnate the industry;
(iv) that the legislative intent behind the repealed Designs Act, 1911 and that under the Designs Act, 2000 remained the same and the  exclusion of “artistic works” in the new definition was only clarificatory and intended to  exclude artistic works pure and  simple such as paintings, sculptures and works of art;
(v) the statement of objects and reasons of the Designs Bill, 1999 provided that the intent was to ensure that the law does not unnecessarily extend protection beyond what is necessary to create the required incentives for design activities while removing impediments to the very use of available designs;
(vi) the proceedings from the Parliamentary debate also showed that the Act was being amended to provide help and protecting the rights of designers;
(vii) the hand book issued by the Design Office for information to the public also specifically stated;
 “What can be registered as a Design?
- To qualify for registration as a design, an article should relate to the ornamental or new shape, surface pattern, lines or colour with aesthetic look  (designs or industrial plans,  layouts or installation are not registerable).
- It should be applicable to any product reproducible by industrial means (Paintings / Sculptures and ‘works of art’ excluded).
Finding merit in the defence raised by the Defendants, the High Court of Delhi dismissed the Plaintiff’s suit for injunction, holding: “in order for the work of the Plaintiff to qualify as an “artistic works”, it must fall within the definition of sub section (c ) of Section 2 of the Copyright Act. A reading of the said provisions would show that attempt of the Plaintiff can only be to bring it within the concept of “painting.”  The comparison with the paintings of M.F. Hussain would be otiose as the work in question, in the present case, is not a piece of art in the form of a painting. There is no doubt that labour has been put and there is some innovativeness applied to put a particular configuration in place.  Such configuration is of the motifs and designs which by themselves would not be original.  The originality is being claimed on the basis of the arrangements made.  What cannot be lost sight of is the very object with which such arrangements or works had been made.  The object is to put them to industrial use.   An industrial process has to be done to apply the work or configuration to the textile.  It is not something which has to be framed and put on the wall or would have any utility by itself.  The two important aspects are the object with which it is made (which is industrial) and its inability to stand by itself as a piece of art.  In fact, it has no independent existence of itself. In India, we have special legislation governing the protection of different nature of rights.  Insofar as the industrial designs are concerned, the protection is provided under the Designs Act, 2000…..An important and relevant aspect is that both under  the old Act and the new Act, fabric designs on textile goods have been classified as proper subject matter of design protection by inclusion as a  specific class in the Rules framed
under the Acts…
Furthermore, the legislative intent is also to be kept in mind which is to provide protection for a certain period of time for commercial exploitation.  Thus, nature of protection is quite different for an artistic work under the Copyright Act which is for the life time of the author / creator + 60 years.  This is not so in the case of commercial exploitation as under the Designs Act and the Patent Act, the period is much lesser.  In the present case, the configuration was made only with the object of putting it to industrial /commercial use.”
In view of the above findings, the High Court of Delhi dismissed the suit.