CASE ONE- MAHARASHTRA HYBRID SEEDS CO. V.

UNION OF INDIA HEAD NOTEIn the High Court of Delhi Maharashtra Hybrid Seeds Co. Ltd. v. Union of India and Others Decided on 22nd March, 2013. JUDGESDecided by Justice Sanjay K. Kaul, and Justice Indermeet Kaur. PARTIESPetitioner- Maharashtra Hybrid Seeds Co. Ltd. Defendant- Union of India and Others CITATION2013(54) PTC 528 (Del) FACTSThe petitioner had applied for the registration of a particular new variety of cotton that it had developed. The same application had been published in the Plant Variety Journal by the Protection of Plant Varieties and Farmers Rights Authority on 1st September, 2008. However, the respondent had filed an opposition to the application, which had exceeded the stipulated period of 3 months time given for the same. The delay was of 86 days. The Registrar had accepted the delayed opposition regardless, thus condoning the delay via an order on 11th June, 2009. This became the primary question before the Court- whether the Registrar could exercise such discretion and condone the said delay. CONTENTION OF PLAINTIFFThe claim of the petitioner was that there is no provision which can confer the power to condone delays, upon the Registrar. The petitioner claimed that the delay had been condoned by relying on Rule 33(6) of the Protection of Plant Varieties and Farmers Rights Rules, which relates to applying for extension of time in submitting evidence, by extending it to Rule 32, which prohibits extension of time for filling an opposition to an application, and that such extension is not possible. Further, Rule 32 must be read strictly, as there is no scope for the Registrar to condone any delay indicated from the provisions contained therein. CONTENTION OF DEFENDANTThe main contention of the defendants were that Rule 32 does not absolutely prohibit the Registrar from condoning delays, as the presence of the word shall ought to be read as may. The basis of this submission was that Section 21(2) of the Plant Varieties and Farmers Rights Authority Act, prescribes no penalty for not complying with the time limited for filing an opposition- that this section is primarily directory and procedural. Thus, interpreting it to prevent extension of time would disadvantage farmers and constrain their rights, resulting in procedure hindering the realisation of rights.

DECISION OF THE COURTThe Court held that Rule 33 has a deceptive headnote, and cannot be extended to Rule 32. The language of the provisions of the former has no connection to the issue of filing of an opposition. With respect to the question of how to read Section 32, the Court held that the intention of the Legislature was to minimize delays. The Court supported the defendants claim regarding Section 21(2) and stated that the absence of penalties and the need to prevent procedural irregularities from preventing farmers from realising their rights, indicates that the time limit is not mandatory, and the Registrar can extend the time-limit. Moreover, since the Act is a beneficial one, it ought to be interpreted liberally. Since there could be cases wherein interested parties would not see the published applications, and thus not file oppositions in time, the Registrar should be allowed to condone delays. The petitioner had drawn a parallel with Section 21(2) of the Trade Marks Act, which was distinguished due to the presence of an expressly indicated penalty upon failure to file an opposition on time. Thus, Rule 32 is directory, but not mandatory, and further, the rule cannot be struck down as the Central Government has the power to lay down such a rule. COMMENTSThis case is important, not just for being the first decision to deal with the matter of this specific power of the Registrar, but also because of the preliminary observations of the Court. Justice Kaul pointed out that the Government had been tardy in the implementation of the provisions of the Protection of Plant Varieties and Farmers Rights Act of 2001, with respect to the setting up of a specialized Appellate Tribunal. Since the government had not set up the concerned tribunal despite the provisions being in force for over six years, the disputes under the Act had ended up becoming the burden of regular courts, who not only lack the technical knowledge needed, but are in any case overburdened. Thus, the Court urged the government to immediately work towards the implementation of the provisions.

CASE TWO- STATE GOVT. OF NCT OF DELHI V. NARESH K. GARG HEAD NOTEIn the High Court of Delhi State Govt. of NCT of Delhi v. Naresh Kumar Garg Decided on 20th March, 2013. JUDGESDecided by Justice G.P. Mittal PARTIESPetitioner- State Government of NCT of Delhi Defendant- Naresh Kumar Garg CITATION2013(2) JCC 1063 FACTS- The police raided the house of Mr. Mohd. Shokeen, and found huge quantities of infringing material, which infringed upon existing copyrights and thus constituted an offence as per Section 63 of the Copyright Act of 1957. As per Mr. Shokeen, this material was provided by the defendant. The simple question that the Court had to consider in this case was whether the offence as under the above section was bailable or not. Since the respondent was denied anticipatory bail for the reason that Section 63 creates a bailable offence, the respondent was thus indirectly granted the right to bail upon his arrest. CONTENTION OF PLAINTIFFThe contention of the State was that offence under Section 63 provided for punishment of both imprisonment extendable to 3 years, and a fine of up to 2 Lacs, and thus the offence would not fall under item III of Part II of Schedule I of the Code of Criminal Procedure, and would be non-bailable. The petitioner utilised two High Court judgments to support this submission. CONTENTION OF DEFENDANTThe defendant simply contended that the offence under Section 63 was bailable. DECISION OF THE COURTThe Court stated that in light of the Supreme Court judgment of Avinash Bhosale v. Union of India, [(2007) 14 SCC 325], where the Customs Act provided for a similar offence which was declared to be bailable, all the judgments relied upon by the petitioner stood impliedly overruled. Further, the Court also stated that Section 64 of the Act provided for the empowering of police officers to seize the infringing materials. If the offence under Section 63 had been non-bailable, Section 64 would not be necessary. Keeping in mind these two statements, the Court held that the offence under Section 63 of the Copyright Act was bailable.

CASE THREE- TATA SONS LTD. AND ANR. V. ARNO PALMEN AND ANR. HEAD NOTEIn the High Court of Delhi Tata Sons Ltd. and Anr. v. Arno Palmen and Anr. Decided on 22th March, 2013. JUDGESDecided by Justice M.L. Mehta PARTIESPetitioner- Tata Sons Ltd. and Anr. Defendant- Arno Palmen and Anr. CITATION2013(54) PTC 424 (Del) FACTSIn 1998, the plaintiff, Tata Infotech had registered the domain name- www.tatainfotech.com and had included it as part of a number of domain names owned by them, meant to be used for e-commerce purposes. In 2005, the defendant sent an email to the plaintiff, informing them that he had registered the domain name- www.tatainfotech.in- and had also received a large sum of money for the same, and he wished to inform the latter of the same. It was also evident that the defendant was aware of the trademark of TATA INFOTECH being owned by the plaintiff. As such, the plaintiffs filed a petition for permanent injunction. CONTENTION OF PLAINTIFF- The 1st plaintiff argued that the name TATA had been the property of theirs since its first use in 1917, and the name had come to be exclusively utilised by the conglomeration of over 50 companies known as the Tata Group. Further, since the plaintiff was the registered proprietor of the trademark comprising of the word TATA, as per the Trade Mark Rules of 2002, the plaintiff had an exclusive right in the same. The 2nd plaintiff argued that it had been utilising the service mark TATA INFOTECH since 1997, and had received recognition both from customers and its peers in the industry, thus building up reputation and goodwill associated with the name. The plaintiff also owned several domain names including www.tatainfotech.com, and built up a huge internet presence based on the service mark and trade name of TATA INFOTECH. Thus, the email of the defendant in 2005 was clearly intended to persuade the plaintiffs into buying a domain name deceptively similar to those already owned by them, or at least indicate that failure to do so would result in a third party buying the domain name instead. The plaintiffs stated that the concerned domain name violated their trademarks, as the defendant had no permission to buy such a domain name. Further, considering the fact that customers often simply search for the terms TATA or TATA INFOTECH, the defendants

purchase of this domain name would result in customers being rerouted to the concerned domain name, especially due to its similarity to the plaintiffs own domain name of www.tatainfotech.com. This could cause damage to the reputation of the plaintiff, by virtue of passing off. The plaintiffs also utilised other judgements of the same Court to indicate that the Court has previously recognised the status of the TATA mark, as well a number of cases filed before the WIPO Arbitration and Mediation Centre, regarding the misuse of their trademarks and domain names. Thus, the plaintiffs desired a permanent injunction against the defendants to prevent them from the domain name- www.tatainfotech.in- or any other, which was deceptively similar or the same as the trademarks held by the former- namely TATA, and TATA INFOTECH. The plaintiffs also requested that Key-Systems GmBH, (which is an ICANN recognised global registrar for internet addresses), transfer of the concerned domain name to them. CONTENTION OF DEFENDANTThe defendant offered no representation. DECISION OF THE COURTThe Court held that, since principles of passing off would apply to the infringement of a domain name, even though there is no specific legislation in India dealing with dispute resolution regarding domain names [as per Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., (AIR 2004 SC 3540)], the actions of the defendant amounted to an attempt to take unfair advantage of the plaintiff, and thus the injunction ought to be granted. Further, the Court also directed Key-Systems GmBH to cancel the registration of the domain name by the defendant.

CASE FOUR-. KESHAV KUMAR AGGARWAL. V. M/S. NIIT LTD.

HEAD NOTEIn the High Court of Delhi Keshav Kumar Aggarwal. v. M/s. NIIT Ltd. Decided on 22th March, 2013. JUDGESDecided by Justice Kailash Gambhir PARTIESPetitioner- Keshav Kumar Aggarwal Defendant- M/s. NIIT Ltd. CITATION2013(54) PTC 178 (Del) FACTSThe case concerned the rights of the plaintiff with respect to its label TP TURNING POINT, which it had been using for 14 years, since 1998. In 2012, the defendant started utilising a deceptively similar mark as well- NIIT TURNING POINT. Aggrieved, the plaintiff filed for a temporary injunction. CONTENTION OF PLAINTIFFThe claim of the plaintiff was that the defendant was deliberately trying to exploit its reputation for the latters benefit. The plaintiff had been utilised this label in providing educational services to students from both schools and colleges at various centres throughout Delhi, and had thus built up a reputation associated with the name. Further, the plaintiff stated that the trademark had been registered and was valid till 2015, and thus, when in 2012 the defendant adopted a deceptively similar mark, the plaintiff claimed that this was to take advantage of his reputation. The plaintiff stated that he had spent great sums of money in advertising, owned the domain name www.theturningpoint.com and had also created an internet presence by creating active social networking accounts. The plaintiff also indicated that several schools throughout Delhi recognised it. Thus, the plaintiff claimed defendants attempt to utilise the mark, was creating confusion and causing damage to the plaintiffs reputation, by using the mark in the same class of services- education- as per Class 41 of the Trademark Act of 1999. Further, the plaintiff claimed that the defendant was attempting to show some affiliation with the plaintiff, without permission, to exploit its reputation. The plaintiff also stated that this could not be accidental, as the two were in the same field, and in any case, it was the duty of the defendant to ensure that its trademark is unique before launching its business. Further, the defendant had filed a case against another party in Chennai, for utilising the mark, and thus could not claim it as being descriptive in this case.

CONTENTION OF DEFENDANTThe defendant claimed that it was the registered owner of the mark NIIT and constituted a group of companies dedicated to providing educational services and software solutions worldwide since 1984, and thus had reputation and goodwill far more valuable that the plaintiffs. The defendant argued that the trademark of the plaintiff was TP TURNING POINT, and thus there was no overlap or infringement by the defendant, as the marks must be looked at as a whole. Thus, the defendants mark NIIT TURNING POINT which was not yet registered, when looked at as a whole, indicates that the prefix of NIIT is added to common dictionary words often used as descriptive of the services like education, etc. Further TURNING POINT was only utilised as an expression to describe a course, and considering that the phrase is descriptive, the defendant submitted that it held the right to file for rectification should the need arise. Moreover, upon searching for the concerned phrase online, the term was found to be utilised by several institutions, indicating its descriptive nature. As such, the defendant was not infringing upon any trademark of the plaintiffs. DECISION OF THE COURTThe Court stated that the plaintiff had definitely adopted the impugned label first, and had also enjoyed an undisturbed usage of the same for a decade. Further, the Court stated that descriptive terms may be protected, if they have acquired a secondary meaning that is associable to a particular good or service. Thus, the plaintiffs label had acquired the status of being well-known within the confines of Section 2(1)(zg) of the Trademarks Act of 1999. Further, the defendants claim that the mark was utilised by other institutions was not accepted by the Court for lack of any substantiation. Moreover, the claim that the trademark must be read as a whole was struck down, as the Court said that if a mark is registered as a whole, then its essential features are also protected. The Court then stated that the standard for whether the mark is whether an unwary normal consumer would get confused. This confusion has to be assessed from a commercial point of view, by looking at the two marks in that framework. Thus, simply fixing NIIT will not necessarily distinguish the mark from the plaintiffs. Further, the defendant cannot claim it was unaware of the plaintiffs existence, and had not found the plaintiffs mark through the process of due diligence; the parallel case filed in Chennai casts doubt on the bona fides of the defendant. Thus, the Court held that the plaintiff has the right to protect its label, and thus the interim injunction was granted.