Journal of Intellectual Property Rights

Vol 15, January 2010, pp 66-73

IP Case Law Developments*

Zakir Thomas†
Open Source Drug Discovery (OSDD) & DG's Technical Cell, Council of Scientific and Industrial
Research, Anusandhan Bhawan, 2 Rafi Marg, New Delhi 110 001

Received 31 December 2009

This article attempts to summarize some of the recently reported cases on intellectual property law to enable readers to
understand how the courts have applied principles of intellectual property law to actual IP disputes. In this article, widely
discussed cases on, copyright, design, patents and trademark laws are covered.

Keywords: Copyright, music licensing, patents, infringement, designs, trademark

The concepts we read in intellectual property law
acquire better clarity when understood in the context
of application of those principles by a court to a set of
facts in a real life dispute. Many readers of this
journal are scientists and do not get to read the
decided cases reported in case law reporters. This
article attempts to summarize some of the recently
decided cases to enable the readers to understand how
the courts have applied the law. Obviously, it is
neither practical nor necessary to narrate all of the
reported cases. Some cases are chosen as they convey
certain principles. To ensure that readers do not get
distracted, the issues other than the main principle
being explained are left out. This narration is intended
only to kindle the interest of a knowledge seeking
mind to go through the full text of the cases and is not
intended to be a definitive statement of law or a
complete summary of the judgments involved.
Copyright
The Business of Music
Bollywood is known for its song and dance
sequences. The suit in Super Cassettes Industries Ltd
v Punit Goenka & Anr, 2009 (41) PTC 1 (Del) sought
permanent injunction restraining infringement of
copyrights in sound recordings (audio or visual),
musical works and cinematograph works owned by
the plaintiff. The brief matrix of facts is as follows:
——————
†
Email: zt@csir.res.in. The author is an alumnus of Franklin
Pierce Law Center, US. He has been the Registrar of Copyrights.
The views expressed in this paper are purely of the author.
*The feedback regarding this column can be sent to the editor,
Madhu Sahni (email: sahnim@niscair.res.in) or to the author.
1 The plaintiff is the owner of a repository of
copyrighted works which are collectively licensed
to the broadcasting channels. They claimed to
have supported and introduced several new music
artists to the industry. Such activities are funded
by exploitation of copyrighted works which are
part of its repertoire.
2 Plaintiff explained that the practice followed in
the television industry is governed by Television
Rating Points (TRPS). Its copyrighted works are
used by television channels on licensing basis and
in turn plaintiff earns substantial revenue to
further encourage development of creativity.
3 Several leading television channels have entered
into licensing agreement with the plaintiff such as
TV Today Network, Global Broadcast News
Network (for CNN IBN, CNBC TV 18 etc), New
Delhi Television Ltd (for NDTV Channels),
Times Now Channel, Star India group etc,
4 The plaintiff had entered into licensing agreement
with the defendants for the first time in March
2007 with effect from March 2006 valid till 31 st
March 2008. As per this agreement, the
defendants agreed to pay a royalty of Rs 99 lakhs
yearly plus taxes for a continuous period of two
years. On expiry of this agreement, they entered
into a second agreement in April 2008, valid from
1 April 2008 till 31 March 2009. The licensee
agreed to pay a royalty of Rs 4 crores only
payable in advance in equal monthly installments
of Rs 69,33,336.
The main grievance of the plaintiff begins with
the defendant’s failure to pay monthly installment
of royalty from February 2009. The defendants
 THOMAS: IP CASE LAW DEVELOPMENTS
continued to use the plaintiff’s copyrighted works but
did not enter into any further agreement with the
plaintiff. The plaintiff thereupon served a legal notice
demanding payment of outstanding royalty for the
period of February and March 2009. The plaintiff also
enclosed with the said letter revised rates of royalty
which were three times of those in the last agreement.
The defendants responded stating that due to
increased competition and global recession, they
could not generate anticipated programmes during the
financial year 2008-2009, which resulted in poor
usage of songs from plaintiff’s repertoire and that by
such usage they could not even recover the cost of
license. They pointed out that plaintiff, Super
Cassettes , have become member of the copyright
societies IPRS/PPL, with whom they have entered
into licensing agreement for the financial year 2009-
2010. Under such circumstances and in view of the
current environment they do not expect extensive use
of the songs from the plaintiff’s repertoire and
offered to pay a maximum of Rs 60 lakhs for the
period 2009-2010 by the defendant’s Zee Network.
The plaintiff responded stating that IPRS and PPL
are not responsible for the repertoire of plaintiff’s
songs; the justification regarding global recession is
not acceptable to the plaintiff; the proposed rates are
not acceptable and the defendants may discontinue the
use of the works of the plaintiff.
Aggrieved by the refusal of the defendants in
paying outstanding amount due as per second
agreement and continuous use of the plaintiff’s works
on their channels, the present suit was filed.
During oral arguments, the defendants raised the
defense of bona fide use or use constituting imparting
information or talent by running talent hunt show on
its programmes and thus pleaded to escape liability.
They also raised the defense of reasonableness of the
royalty. They also pleaded that the courts’ jurisdiction
is ousted as the fixation of royalty is the exclusive
domain of Copyright Board.
The plaintiffs responded that the defendants are in
continuous infringement of plaintiff’s repertoire by
extensive use in many programmes, a chart of which
they provided. Section 51 of the Copyright Act 1957
is a deeming provision and if the defendant infringes
copyright without a license, the infringement is ipso
facto. The entire scheme of Copyright Act, is based
on the premise that use of copyright works without
license constitutes infringement without further proof.
They relied on Section 2 (m), 13, 14, 51, 55 and 63 to
substantiate this point. Thus according to them in the
67
present case infringement cannot be denied which
warrants the grant of an injunction.
The plaintiffs also argued that once there is an
infringement, refusal to grant injunction based on
mere pendency of an application before the Copyright
Board would amount to prejudging the factum that the
Board is likely to decide the application in favour of
the defendants. According to the plaintiffs, the Board
may take its time to decide on the application and
till such time the Court should take preventive
measures to restrain infringement. They refuted the
defense relating to imparting knowledge and hunting
talent, pointing out that the defendants are not doing
business free of cost. Once defendants are an
instrument to communicate work to the public without
the license for commercial purpose, then they cannot
say that such instrument is merely for cultivating
talent.
The plaintiffs submitted that the justification by the
defendants on global recession is meaningless. The
new tariff rates sought by the plaintiff are reasonable
as various other channels are paying the license fee on
the basis of the new tariff. If this contention is
accepted other channels will also reconsider the
arrangement arrived at between the parties.
In their reply, the defendants argued that the
provision of compulsory license can be an intervening
factor for non grant of injunction. Once an application
is pending before the Copyright Board under Section
31, the Court may leave the question of royalty open,
and must consider the same for non grant of
injunction.
The Court observed that Entertainment Network v
Super Cassettes Industries 2008 (37) PTC 353, is the
umbrella decision of the Supreme Court on
compulsory licensing. In this judgment the apex court
has not curtailed the powers of the civil court to grant
relief against infringement of copyrighted works in
cases where application before Copyright Board is
pending. The Court found that there is no implied
ouster or implicit bar on relief against the
infringement by mere filing of application for
compulsory licensing before the Copyright Board.
The Court found that the use of works which were
earlier licensed, but unlicensed for 2009-2010, are
prima facie infringing acts within the meaning of
Copyright Act. At the interim stage it cannot be said
that if the acts constitute fair dealing or that whether
they are for the purpose of imparting training or
development of talent. Hence there is no force in the
argument of the defendants that these acts are
justified. An ex licensee cannot take the plea for
 6 J INTELLEC PROP RIGHTS, JANUARY
justifying the said acts done independently without
permission. Once the defendants file an application
before the Copyright Board, they are making clear
their intention to seek license and then, the acts done
without license cannot in the meantime be held as fair
dealing against the defendants.
The plaintiffs have made out a case of infringement
of copyright in its favour but the injunction being an
equitable remedy, the Court has to exercise its
discretion from various facets which arise in
particular set of facts in each matter. There may be
cases when the grant of injunction alone may meet the
ends of justice and an alternative safeguard for
preservation of the rights of the challenging party
cannot at all be thought of.
In the present case, the defendants have continued
to use the copyright works of the plaintiff for more
than four months despite expiry of the licensing
period. The Court ruled that the present case is an
appropriate one where interim measures are required.
The Court also found that if the defendant is
restrained not to use the plaintiff’s repertoire at this
juncture, the damages to it will be massive. It will
lead to failure of its programmes which may be
difficult to revive if compulsory license ultimately is
granted by the Copyright Board. The Court therefore
directed release of Rs 4 crores only and Rs 69,33,336
which were deposited by the defendants with the
Court as per the interim orders of the Court, to the
plaintiff. This amount will cover permission to use the
work upto March 2010. The defendants were also
directed to file before the Court, accounts pertaining
to the usage of works in question. On plaintiff’s
claim of license fee as per the revised rates for 2009-
2010, it shall be considered at the time of the final
stage of the suit, after trial.
In conclusion, the Court observed that the findings
in this case shall have no bearing before the Copyright
Board who shall decide on the defendant’s application
for compulsory licence on merits.
Comments
1 The speedy disposal of this reasonably
complicated matter by the Delhi High Court is
commendable.
2 It may be noted that the High Court of Delhi
heard and disposed off this application even
before the Copyright Board could decide the
pending compulsory license application. This
points to the need for Copyright Board to evolve a
mechanism to speed up the process of disposing
the applications of compulsory licenses before it.
In the era of live shows and live news, a quick
decision on access to works is required so that the
industry has a mechanism available to quickly
settle the disputes and move on. This is
particularly so in view of the ruling of the High
Court, that the use of the works during pendency
of the application before the Copyright Board
amounts to infringement.
Whither Copyright Societies?
1 The arrival of serious players like Super
Cassettes, who hold the copyright over a large
repertoire of works, with legal and financial
capability to enforce their rights, brings in a new
dimension to the relevance of copyright societies
like IPRS and PPL. It may be noted that only
owners of copyright can do the business of
licensing like Super Cassettes as there is a
specific prohibition in the Act against anyone
other than the Copyright Societies doing the
business of licensing. But if owners with a large
repertoire of works start the business of licensing,
the relevance of Copyright Societies like IPRS
and PPL will be diminished to that extent.
2 Diminishing of the prominence of copyright
societies has an impact on access to works by
general public. Copyright societies work within
the framework of the Rules of Copyright Act and
the Rules framed there under. The rates charged
by such societies are to be published and there are
international arrangements and norms that govern
the functioning of such societies in various
countries for application of national treatment
principles. There is thus an extent of public
scrutiny of these societies. These norms are not
applicable to individual owners of works. It is not
clear how individual owners enforce their rights
in jurisdiction, like some European countries
which recognize only copyright societies to
enforce rights of foreign authors.
3 An interesting observation that is seen from the
submissions of the parties is that the Super
Cassettes is a member of IPRS and PPL. The
details of the arrangement are not known as to
what rights, if any, it has passed on to IPRS and
PPL.
4 This decision can be a back drop for students of
copyright to study the functioning of copyright
societies and music licensing in India.
 THOMAS: IP CASE LAW DEVELOPMENTS
Designs
Skincare Spatula Designs
Skincare products Veet and Anne French are
known to the lady readers of this column as well as to
many gentleman readers. These reputed products are
at the core of the dispute between Reckitt Benckiser
(India) Ltd v Wyeth Limited 2009 (41) PTC 24 (Del).
The legal contest is on the protection of the design of
a spatula that accompanies these products for easy
application of a cream for hair removal.
The plaintiff was incorporated on 2 July 1951
under the name and style Reckitt and Coleman of
India Limited. Pursuant to a worldwide merger
between Reckitt and Coleman Plc and Benckiser, a
Dutch company in 1999, the name of the plaintiff was
changed from Reckitt and Coleman India Limited to
Reckitt Benckiser (India) Limited. It was averred that
plaintiff is a world leader in cosmetic depilatories.
Veet is one such cosmetic depilation brand which is
sold by the plaintiff in over 50 countries worldwide
and registered in 141 countries.
The suit is concerned with Veet hair removal
system, which is marketed in India by the plaintiff
since 2004. The cream is marketed in a modern soft
squeezing tube. The product also has a large S shaped
spatula which is also known as the perfect touch
spatula/perfect touch tool. The spatula allows for
easy application of the cream and close contact with
skin during both application and removal resulting in
perfect hair removal. The plaintiff registered the
design of the spatula. The registration number is
193998 dated 05.12.2003 claiming novelty in ‘the
shape, configuration and ornamentation’ of the spatula.
Defendant markets a hair removal product ‘Anne
French’. The plaintiff alleged that this product is sold
with a spatula which incorporates the registered
design of the plaintiff. According to them the
defendants had so far been marketing a plain spatula
and have only recently changed over to an S
shaped spatula. They claimed a virtual identity
between the design of plaintiff’s spatula and the
defendant’s spatula. Alleging copying and thus
infringement of its registered design, the plaintiff
sought an injunction against the defendants from
manufacturing and selling its products with a
spatula which amounts to an infringement of the
registered design.
The defendants submitted documents showing that
the design of the spatula in question was registered in
UK, USA and Australia. The design of the spatula
disclosed in the above documents is identical to the
design of the spatula registered in India by Wyeth.
69
The plaintiff’s relied on the decision of the Calcutta
High Court in Gopal Glass Works Ltd v Astt
Controller of Patents and Designs, 2006 (33) PTC
434 (Cal) wherein the single bench held that the
registration of a design and consequent publication of
design specification by a registering authority in a
foreign country does not amount to prior publication.
The Court disagreed with this conclusion stating that
it does not lay down the correct law. The Court
pointed out that Section 4 of the Designs Act deals
with prohibition of registration of certain designs. As
per this section, a design which
(a) is not new or original; or
(b) has been disclosed to the public anywhere in
India or in any other country by publication in
tangible form or by use in any other way prior
to the filing date, or where applicable, the
priority date of application for registration; or
(c) is not significantly distinguishable from known
designs or combination of known designs; or
(d) comprises or contains scandalous or obscene
matter shall not be registered.
The plaintiff’s counsel stressed on the use of the
word ‘or’ in 4(a) and argued that if the design was
either new or original it can be registered. Thus if the
design was not new it was definitely original, as
defined in Section 2(g) of the Designs Act as
originating from the author. This will include cases
which though old in themselves, yet are new in their
application.
The Court observed that Section 4(b) clearly
indicates that a design which has been (1) disclosed to
the public anywhere in India or in any other country
or (2) by publication in tangible form or (3) by use or
in any other way prior to the filing date, or where
applicable, the priority date of the registration shall
not be registered. Thus prior disclosure to the public
anywhere in the world is a complete bar on
registration. Court further noted that Section 19 deals
with the cancellation of registration. As per Section
19 (1) any person interested may present a petition for
cancellation of the registration of a design at any time
after the registration of the design, to the controller on
any of the following grounds, namely:
(a) that the design has been previously registered
in India;
(b) that it has been published in India or in any
other country prior to the date of registration;
(c) that the design is not a new or original
design; or
 7 J INTELLEC PROP RIGHTS, JANUARY
(d) the design is not registerable under the Act; or
(e) that it is not a design as defined under clause
(d) of Section 2.
From the above section, it is apparent that if a
design has been previously registered in India, the
subsequent registration can be cancelled on that
ground alone. Read with Section 4, it follows that, if it
can be shown that a design has been disclosed to the
public anywhere in India or in any other country by
any of the specified three modes, the design in India
would be liable to be cancelled. It is apparent that,
apart from the issue of prior publication, as indicated
in Section 19 (1) (b) of the Act prior disclosure to the
public under Section 4(b) read with Section 19 (1) (d)
is also a ground for cancellation of registration.
Section 4 (b) is much wider than Section 19 (1) (b),
which only deals with publication. Section 4 (b) deals
with publication anywhere in India or in any other
country. Such disclosure may be by any of the three
modes specified therein- publication in tangible form,
by use and ‘in any other way’. The concept of
disclosure to the public is wider than mere
‘publication’ as indicated in Section 19 (1) (b). In
Gopal Glass Works (supra) this wider aspect was not
considered. It relied on the narrow aspect of
publication which was the matter it was seized with.
Once a design is registered in India, as per the
provisions of the Designs Act, such design is made
available in the open to the public. The Controller is
required to keep it in the Register, publish it and make
it available to those who apply for it. Thus the
statutory provision in India requires disclosure of a
registered design by publication in a tangible form.
Thus if a design is registered in India it automatically
means that it is published in a tangible form. A design
registered in any other country prior to the date of
registration in India, would also have been required to
be disclosed to the public by publication in any
tangible form or by use or in any other way for it to
qualify as a ground for cancellation of the subsequent
registration. This position remains so in other
countries, unless the secrecy clauses are invoked and
the design is kept confidential.
In the present case the designs are registered in
UK, USA and Australia. These are open to the public.
Therefore the designs, prima facie, have been
disclosed to the public in tangible form. Thus the
Court held that prior registration in UK, USA and
Australia amounted to disclosure to the public as
stipulated in Section 4 (b) of the Act. It is therefore a
ground which is available to seek cancellation of a
registered design and consequently a ground of
defense.
The defendants had also pleaded that the plaintiffs
had advertised the spatula in an Australian magazine
called ‘Girlfriend’. A copy of the magazine of
December 2000 carried the advertisement of the Veet
product and the spatula. In the photograph the exact
design and all the features of the spatula are visible. It
is evident that the design was available to the public
much before it was registered in India on 01.12.2003.
There was also the plea that the defendants design
was obvious imitation of the plaintiff’s design. The
Court did not deal extensively on this matter but
observed that on a visual comparison it is difficult to
say that one is an obvious imitation of the other.
Based on these reasons the plea for injunction was
refused.
Patent
Public Health Issues, Again!
In M C Jayasingh v Mishra Dhadu Nigam Ltd
(MIDHANI) 2009 (41) PTC (Mad) (DB) appellant is
the plaintiff in the suit for perpetual injunction to
restrain the respondent/defendants from any manner
infringing its patents (bearing nos: 196333, 198872
and 198869) relating to Prosthesis.
The appellant/plaintiff is engaged in developing
and improving Prosthesis, to meet anatomical and
functional demands of a patient after excision of bone
tumors. Prosthesis is an artificial substitute or
replacement of a part of the body such as an eye,
facial bone, knee, leg, arm etc. Custom Prostheiss is a
procedure by which the diseased part is surgically
removed and the skeletal defect is corrected using a
metallic implant, known as Endo-Prosthesis. As a
result of the research done in this field, the appellant,
along with Dr Mayilvahanam Natarajan, invented a
wide range of Prosthesiss for limb salvage for
different parts of the human anatomy. The appellant
manufactures various custom mega prosthesis through
its proprietary concern called Arc Bio Medical
Engineers since 1992, purchasing titanium from the
respondent MIDHANI, who is the sole producer of
titanium oxide in the country. Using the said
monopoly, the first respondent refused to supply
titanium alloy for manufacture of medical
applications. Later, the plaintiffs came to know that
the bio medical division of the respondent, MIDHANI
is manufacturing Prosthesis which was replica of the
patented product of the appellants.
According to the respondents, MIDHANI, it is a
Public Sector Undertaking, a company registered
 THOMAS: IP CASE LAW DEVELOPMENTS
under the Companies Act, under the administrative
control of the Department of Defense Production,
Ministry of Finance. As a part of its service to the
society they had developed various Prosthesis having
high strength but lighter in weight using titanium
materials, suiting the needs of Indian conditions,
at an affordable cost. These are known as Apollo
Midhani Prosthesis. They claimed that their product is
unique in nature and developed in collaboration
with hospitals concerned. They denied that their
products infringe the patent of the plaintiff. The
plaintiff/appellant’s products were sold at Rs 1.36
lakhs as against the respondent’s rate of Rs 39,200.
Any injunction granted to the respondent would strike
a severe blow to the genuine cancer patients. The
titanium implants hitherto available only in super
specialty hospitals are now made available to the
common man at an affordable cost due to the efforts
of the respondent.
The appellant pleaded that considering the fact that
the patent was obtained as early as 1992, the product
of the patent is entitled to be protected by an order of
injunction. On the issue of price difference, the
appellants pleaded that their Prosthesis is of superior
quality. The product of the respondent is cheaper as it
does not have rotating hinges and that with such a
specification, they can supply the same mechanism at
comparable prices.
The Court made an interesting observation. It
stated that when a patent is granted, it is necessary to
look into the obligations of the patentee. The said
obligations are:
(i) a patentee has to work his inventions in India
on a commercial scale;
(ii) without delay, and
(iii) the works of the patentee should not prejudice
the interest of the public.
In this connection, it also stated that if the above
obligations are not fulfilled by the patentee, it may
lead to either granting of compulsory license or
revoking the patent.
The Court observed that every Prosthesis marketed
is custom made; the violation of alleged patent rights
must be seen in terms of similarity of the products and
availability of the same in the open market to any
particular customer needs.
The single bench had observed that the basic
technical details would show that the two products
are not identical. Though the general content
and functional aspects may be the same, yet the
71
improvisation to make it functional vis-a-vis patients’
needs does not confer an exclusive right. The Court
held that the similarity and dissimilarity of the
products are matters which can be gone into technical
details only at the time of trial. Considering the
relevance of prosthesis to those in need of it as a life
saving equipment, its cost effectiveness and
functional advantage of a customized titanium made
prosthesis, the learned single judge did not find the
balance of convenience in favour of the plaintiff. The
affidavit of the plaintiff was bereft of any details with
regard to the loss suffered by the appellants on
account of supplies by the defendant. The Division
Bench did not find adequate material to find fault with
this conclusion of the Single Bench. Furthermore, the
Division Bench held that the issues involved are
purely questions of fact, which can be effectively
adjudicated at the time of final determination of the
suit, after examining the parties and the evidence.
Therefore it is open for both the parties to put forward
all the contents raised before the trial court. Based on
this reasoning, the Court dismissed the appeal against
the order of the single bench.
Trademark
A New Interpretation
SONY is a well known trademark. Does its reach
extent to all classes of goods where it is not
registered? In other words does the protection of
trademark extent to a class or category of goods in an
action for passing off, even if the trademark is a
reputed one? This was the issue decided by the Full
Bench of the Calcutta High Court in Sony Kabushiki
Kaisha v Mahaluxmi Textile Mills, 2009 (41) PTC
184 (Cal) (FB).
The case involves a suit for infringement and
passing off of the trademark SONY. Sony Kabushiki
Kaisha is a company registered under the laws of
Japan and is also known as Sony Corporation.
They are engaged in manufacture and sale of diverse
range of goods including video and audio equipments,
televisions and other electronic goods under the
trademark SONY. The complaint against the
respondent/defendants is that they are applying the
same trademark, on their products, being hosiery
goods, briefs and underwear. It is their case that the
trademark SONY is a world famous mark and this
mark has acquired a high degree of distinctiveness
that even if this trademark is applied to briefs and
underwear, there is likely to be confusion in the minds
7 J INTELLEC PROP RIGHTS, JANUARY
of consumers as regards to the source and origin of
these goods. Consequently consumers are likely to be
misled into the belief that the vests and underwear
sold under the trademark SONY are of appellants
manufacture or merchandise.
The main case of the respondents is that monopoly
in trademark is contemplated in law only in respect of
goods on which the mark is used, and the rights of the
owner of an unregistered trademark cannot extend to
the entire range of goods available in the market.
In connection with the suit an application for
interim injunction was moved by the plaintiffs,
seeking restraint order on use of trademark SONY by
the defendants. Such a prayer was rejected. They
moved the Division Bench.
The Division Bench observed that they are of the
view that if a person is holder of a trademark which
has acquired a wide range of reputation transcending
international borders, even though in respect of a
specified class or category of goods, that trademark
cannot be violated by another person in respect of
different category of goods, because such a person
will be deliberately using the trademark of the former
with an intent to get some undue advantage because
of its reputation and goodwill. However, the Division
Bench was faced with a judicial quandary. There is a
decision of another Division Bench of the Calcutta
High Court, in Rustom Ali Molla and Ors v Bata Shoe
Company, AIR 1957 Cal 120, in which a contrary
view has been expressed. Since this decision was
delivered by a Bench of coordinate strength, the
Division Bench opined that the ratio of the said
decision requires reconsideration by a larger Bench.
The decision we are dealing with is the result of the
proceedings before the Full Bench constituted
pursuant to this recommendation.
The Division Bench of Calcutta High Court in
Rustom Ali Molla v Bata Shoe Company had held that
since the mark Bata was not associated in the public
mind with lungis or handkerchiefs, these goods being
of totally different character from the product line of
Bata, the use of the said mark in respect of lungis or
handkerchief and their manufacture cannot constitute
passing off of goods. To arrive at this position, the
Division Bench relied on the English decision (1887)
12 AC 453, wherein it was held that the acquisition of
an exclusive right to a mark or name in connection
with a particular article of commerce cannot entitle
the owner of that right to prohibit others from the use
of such mark or name in connection with goods of a
totally different character.
The Court discussed the basic principles of passing
off as evolved by law courts in England and India.
The action for passing off originated from an action
for deceit and the main ingredient of the tort of
passing off is false representation made by a trader as
regards to the source or origin of goods. The House of
Lords, in the case of Reckitt & Coleman Products Ltd
v Borden Inc, (1990) 1 WLR 491, laid down the
following elements as necessary ingredients of a
passing off action:
(i) that plaintiff’s goods or services have
acquired a goodwill or reputation in the
market and are known by some distinguishing
feature;
(ii) that there is a misrepresentation by the
defendant (whether or not intentional) leading
or likely to lead the public to believe that
goods or services offered by the defendants
are goods or services of the plaintiff;
(iii) that the plaintiff has suffered or likely to
suffer damage as a result of the erroneous
belief engendered by the defendants
misrepresentation.
The Supreme Court in Rustom & Hornby Ltd v
Z Engineering Co 1970 SC 1649 had held that the
issue in a passing off action is whether the defendant
is selling goods so marked as to lead the purchasers to
believe that they are the plaintiff’s goods.
Based on these and other recent decisions of
various courts, the Full Bench concluded that the
similarity of goods of the rival traders is not an
essential requisite for maintaining an action for
passing off.
The Full Bench also noted that in the judgment in
Ristom Ali Molla v Bata, referred to nine decisions,
eight of which were delivered by English Courts in
the backdrop of the commercial environment of late
nineteenth and early twentieth century. The law of
passing off in England, so far as it relates to use of
different classes and categories of goods has
undergone substantial change. As per the present law,
where the defendant’s activities, although not in an
area of business in which the claimant is engaged, are
in an area of business which might be assumed to be a
natural extension of the claimant’s business,
likelihood of deception will readily be inferred.
However, even where the fields of activity in which
the claimant and the defendant are engaged are
remote from each other, it is possible for deception to
occur if the name or mark used is highly distinctive,
 THOMAS: IP CASE LAW DEVELOPMENTS
or if the claimant’s mark or name is well known and
is closely copied with regard to style, lettering etc.
All the authorities considered by the Division
Bench in Rustom Ali Molla v Bata proceeded on the
underlying reasoning that if the goods of rival traders
are different, there would be no possibility of
deception or confusion in the minds of consumers as
regards the source or origin of the goods. But from the
days of ‘one company one product’, the commercial
world has considerably changed and large
corporations in contemporary world operate with
multiple products or services across the globe.
Modern marketing technology aided with improved
communication system has also strengthened the
distinctive properties of individual trademarks. The
Full Bench observed that, under these circumstances,
to hold that the reputation of a trademark shall remain
restricted to those goods and services only in which
its proprietor is directly engaged in, would be
ignoring the ground realities of today’s business
world.
But the Court also cautioned that it is not its
opinion that the class or category of goods or services
to which a trademark is applied ought to be altogether
ignored while testing a passing off action. As laid
down by the Supreme Court in Cadilla Healthcare
Ltd v Cadilla Pharmaceutical Ltd, 2001 5 SCC 73,
the similarity in the nature, character and performance
of the goods of the rival traders would be very
important factors which the court should consider
while deciding a claim of passing off. But in the event
the nature and the character of goods are different,
this very fact should automatically not result in failure
of an action founded on the tort of passing off.
The key function of trademark is to indicate the
source or origin of goods and services. The tort of
passing off is committed if a trader applies an
established trademark in such manner so as to cause
confusion or deception in the mind of the consumers
as regards to the source or origin of goods and the
73
minds of purchasers are directed to the firm whose
identity is already linked with the trademark in the
marketplace. If a highly distinctive trademark is
applied to a class of goods which its proprietor does
not deal with, the consumers may always wonder as
to whether the proprietor of the trademark has
launched the new product. The purchasing decision of
the consumers may be determined by this factor.
Accordingly, the Full Bench of Calcutta High
Court held that the decision of the Division Bench
in Rustom Ali Molla and Ors v Bata Shoe Co
(AIR 1957) is no longer good law.
Comments
1 This is a refreshing decision where the Court has
taken into consideration the changes in the market
place and applied the law taking the new realities
of market and communication into account to
change a law to suit modern realities. It also
reflects upon the vibrancy of the Indian legal
system in meeting the modern challenges.
2 The case of Rustom Ali Molla v Bata Shoe Co has
been a textbook case in many law schools. Hope
our academia catches up with the speed in which
the legal system evolves.
3 This decision is interesting from the fact that the
Court has put consumer at the centre point of
reasoning, which in fact is the hall mark of
trademark law.
4 Readers in India may be familiar with another real
life situation where the trademark of a renowned
milk products manufacturer in the cooperative
sector is being used as a mark for undergarments.
While such situations would not have occurred
had the current decision been in place earlier and
the owner of the trademark was vigilant enough,
to do a prospective change would be difficult, in
view of extensive advertisements carried out by
both the parties.