IPRMENTLAW WEEKLY HIGHLIGHTS (March 6- 12)

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

The Bombay High Court recently 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 containing word Tikawoo with the device of a rhino against the backdrop of sun.

“Merely because Sun is shown in the background of the image of a Rhino in the impugned mark of the defendant (Chiripal), it cannot be said that there is either deceptive similarity or a case of slavish copying of the registered trademark of the plaintiff (Pidilite) or artistic work in the trademark of the plaintiff, which consists of two elephants pulling in the opposite direction with Sunset in the background, Justice Manish Pitale held while refusing to restrain the defendant from using the logo.

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.

The court reiterated that while comparing rival marks, overall impression must be appreciated rather than going into each feature of the marks to ascertain similarity or difference.

The court held that the prima facie plaintiff’s registered trademark HEATX and the defendant’s mark HEAT-TIK can give rise to confusion. The court accepted the plaintiff’s contention that if the two words are spoken in hurried manner, there can be confusion as persons from different backgrounds and coming from various parts of the country can pronounce English words in a manner that can give rise to confusion. Further, the overall colour scheme of the defendant’s product with the use of the impugned mark HEAT-TIK is likely to create confusion in the minds of the consumer when compared with plaintiff’s HEATX presented in specific colour scheme, the court held.

The court further said that the there is no prima facie case showing deceptive similarity between the words Dr. Fixit and Mr. Engineer. It compared the image of the man wearing yellow construction helmet in the plaintiff’s registered mark with the image of a man wearing a construction helmet in the defendants registered mark and held that there is no prima facie case of deceptive similarity or copying on part of the defendant.

The court held that there is prima facie deceptive similarity in terms of the plaintiff’s marks LW and LW+ against the defendant’s mark LWP+. It rejected the defendant’s contention that Pidilite cannot claim monopoly over LW and LW+ as they are short for liquid waterproofing which is a descriptive term. The defendant failed to show prima facie unsustainability of the registration of the plaintiff’s trademarks LW and LW+.

Read order here.

Delhi High Court Dismisses Plea Of Invalidity Against BK’s Registered Trademark ‘Burger King’

The Delhi High Court has dismissed a claim of invalidity against Burger King Corporation (BKC)’s registered trademark ‘Burger King’

In response to a trademark infringement suit filed by the Burger King Corporation in 2018, the defendants had argued that BKC’s registered trademark is liable to be cancelled. The court considered whether the case of the defendants on this account is “prima facie tenable”.

Justice Amit Bansal said defendants have failed to place any material in support of their submission that the trademark ‘Burger King’ is either generic or common to trade.

The court also said that it cannot be denied that BKC has used the trademark ‘BURGER KING’ since 1954 and holds registrations for it in over 122 countries including India.

The counsel appearing for the defendants submitted that they adopted the trademark Burger King in the year 1970 and since then they have extensively used the mark in respect of their business. The plaintiff has no exclusive right in the word “Burger’ as the same is generic and common to trade and the word ‘King’ is laudatory, it was argued

It was also argued that registrations of BKC are liable to be rectified on various grounds including on the ground of ‘non-user’ under Section 47 of the Trade Marks Act. The rectification petitions were filed by defendants in November, 2014 and therefore, the relevant period of five years to be considered in terms of Section 47 (1) (b) of the Act would commence from three months before the date of filing of the aforesaid rectification petitions, ie August, 2009 to August, 2014.

Justice Bansal explained that Section 47(1)(b) of the Act provides that a registered trademark may be removed from the register of trademarks if up to a date of three months before the date of cancellation application, a continual period of five years or longer has elapsed from the date on which the trademark was entered in the register and during which period, there was no bonafide use of the mark by the registered proprietor in relation to the said goods

However, the court also noted that Section 47(3) also contains an exception to Section 47(1)(b) and provides that if the ‘non-use of a trademark is on account of special circumstances and not on account of intention to abandon or not to use the trademark, the provisions of Section 47(1)(b) will not apply.

“It may be relevant to note that as a consequence of the preparatory work carried out by the plaintiff, the first BURGER KING restaurant was opened in India on 9th November, 2014 and as on date there are more than 300 BURGER KING Restaurants in India,” it added.

The court also said the defendants are estopped from taking a plea that the trademark ‘BURGER KING is generic and common to trade when they have themselves sought for registration of the said marks.

Read order here.

TVF Web Series College Romance’s Language Does Not Pass ‘Community Standard Test Of Common Man’, Transgresses Into Area Of Obscenity: Delhi High Court

Observing that the challenge for enacting appropriate law or guidelines to regulate content on social media and OTT platforms needs urgent attention, the Delhi High Court has ruled that the language used in TVF web series “College Romance” does not pass “morale decency community test” of a common man and transgresses into the area of obscenity.

Justice Swarana Kanta Sharma said that the use of vulgar language in public domain and social media platforms which are open to children of tender age needs to be taken seriously.

The court held that “individualism of choice of using profane language has to give way to the “majoritism of people who want to speak and hear civil language free of expletives for themselves and for their children.

Background

The court was hearing petitions moved by TVF Media Labs Pvt Ltd, Casting Director of web series ‘College Romance” and its lead actors against the orders passed by the sessions court and ACMM for registration of FIR against them.

The complainant had alleged that the web series contains vulgar and obscene material and depicts women in indecent form in violation of sections 292 and 294 of Indian Penal Code, section 67 and 67A of Information and Technology Act and sections 2 (c), 3 and 4 of Indecent Representation of Women Prohibition Act.

The ACMM vide order dated September 17, 2019, directed the concerned SHO to register FIR against the petitioners under appropriate provision of law after conducting investigation into the allegations of the complainant.

In the revision petition filed by petitioners before sessions court, the ASJ vide order dated November 11, 2020, modified the ACMM’s order to the extent that FIR be registered only under section 67A of Information & Technology Act and rest of the sections related to IPC be dropped.

Finding

Justice Sharma said that the court watched a few episodes of the web series and the particular episode in question to decide the case more effectively and fairly. The court observed that when the entire content of the web series is seen, it would lead any common person to a conclusion that the language used in the web series is foul, indecent and profane to the extent that it will affect and will tend to deprave and corrupt impressionable minds.

“Therefore, on the basis of this finding it can be held that the content of the web series will certainly attract the criminality as envisaged under Section 67 of the Information Technology Act.

The court further observed that the community standard cannot be the standard of a particular local territory but is essentially in the national context. The fact that the words use the web series are of nature that cannot even be reproduced in the judgment even for the purpose of adjudication is a pointer towards the extent of profanity of the language used by the web series.

Referring to IT Rules of 2021, the court said that the online content curator and intermediaries are in clear violation of the guidelines as neither there was any classification nor any warning regarding the profanity of language or excessive use of expletives.

Observing that the obscenity in the web series and the fact that it is available to the public at large is sufficient to warrant criminal prohibition, Justice Sharma said that the content and its availability to the public at large cannot be weighed or seen in the context of tolerance of the community who has been tolerating use of such expletives in spoken language by few in public to some extent.

The court thus upheld that order of the ASJ to the extent whereby it held that section 292 and 294 IPC are not made out and 67A IT Act is made out. However, the bench said, it is modified to the extent of dropping offence under Section 67 of the IT Act.

The court added that in case the specific episode is still posted on any YouTube channel without classification, appropriate remedial steps will be taken by YouTube, as per law, rules and guidelines of the IT Act issued by Ministry of Information and Technology from time to time.

The court further warranted the attention of the Ministry of Information and Technology to the situations which are fast emerging on a daily basis and to take steps for enforcing stricter application of its rules qua the intermediaries as notified in Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 and make any laws or rules as deemed appropriate in its wisdom, in light of the observations made in this judgment.

Read order here.

Police Bound To Grant Protection To Asianet News Channel If Protests Against It Turn Violent : Kerala High Court

The Kerala High Court directed that the units of Malayalam news channel Asianet News should be granted effective police protection if protests against the channel turn violent. The channel is facing protests over allegations that in November 2022 it aired a staged interview in which a minor girl was made to say that she was a victim of drug abuse and sexual exploitation.

The channel had approached the High Court alleging that a group of nearly 30 activists of the Students Federation of India (SFI), the students wing of the ruling party, violently and forcefully trespassed into its office at Kochi and intimidated the staff on March 3, 2023.

The Government Pleader informed the Court that the channel is facing investigation for a case under the POCSO Act in relation to the alleged fake interview of minor girl.

The Court thereafter went on to orally note that if there is any likelihood of violence, protection in advance has to be given and one should not wait for any adversity to happen.

The Court thus disposed the petition with the directions to the police to provide effective protection to the petitioner, in the event of violence.

In the writ petition, the channel said that in July 2022, the channel had published an interview with a victim of drug abuse, on the basis of reliable information about a POCSO charge sheet. The channel further said that a follow up story was also published in November 2022 using file shots without disclosing the identity of the victim. The channel said that the police registered an FIR against the channel on the basis of a complaint by ruling front MLA PV Anwar. The crime was registered against the executive editor of the news channel and three others, invoking Sections 120B, 465, and 341PC read with Sections 21 and 19 of the POCSO Act. Based on the FIR, the State Police conducted a raid at the channel’s Kozhikode office on March 5.

Zee Media Moves Madras High Court Challenging Interrogatories Raised By MS Dhoni In Defamation Suit

Zee Media has approached the Madras High Court challenging the order of a single judge allowing Interrogatories raised by MS Dhoni in a defamation suit.

MS Dhoni had filed the defamation suit against the media company and others including IPS Sampath Kumar for making defamatory comments against the cricketer regarding the 2013 IPL Betting Scandal. Dhoni had also recently filed criminal contempt proceedings against the IPS officer for his remarks against the judiciary.

MS Dhoni then raised a set of 17 questions as interrogatories as the written statements filed were generalised and did not contain specific responses. The single judge allowed the same. Though Zee had filed an application to set aside the order, the same was dismissed. The single judge, while dismissing Zee’s application observed that the media house failed to establish reasons to set aside the order and further a single judge could not set aside the order of another single judge.

Zee Media has now challenged this order before the division bench claiming that the order allowing interrogatories amounted to prejudice and miscarriage of justice. Zee claimed that the single judge had passed the impugned order without weighing in on the balance of unreasonableness, vexatiousness, prolixity, oppression etc. The court had failed to note that allowing such interrogatories would give an advantage to Dhoni as he would have the evidence of Zee beforehand.

Zee also submitted that the interrogatories amounted to cross examination of the defendant before the plaintiff which was against the established practice of law. The appeal since then has been adjourned for March 13.

Zee settles royalty dues issues with artists’ body IPRS

Zee Entertainment Enterprises (ZEE), the Indian homegrown entertainment network, said on 6^th March, 2023 that it has settled its payment dispute with operational creditor, the Indian Performing Right Society (IPRS).

In January, the artists’ body had filed a petition at the Mumbai bench of the NCLT under the CIRP against ZEE, seeking payment of over ₹211.41 crore.

ZEE informed bourses in a late evening filing that the issue has been resolved with the two parties entering a “mutual settlement agreement” and that IPRS has agreed to withdraw the insolvency petition.

While ZEE did not disclose the settlement amount, it said the settlement terms are as per agreement and there is no penalty paid and no material impact on the financial position of company.

Centre releases guidelines for celebrities, influencers, and virtual influencers on social media platform

The Department of Consumer Affairs has released a set of guidelines called “Endorsements Know-hows!” for celebrities, influencers, and virtual influencers on social media platforms. The guidelines aim to ensure that individuals do not mislead their audiences when endorsing products or services and that they are in compliance with the Consumer Protection Act and any associated rules or guidelines.

The guidelines state that endorsements must be made in simple, clear language, and terms such as “advertisement,” “sponsored,” “collaboration” or “paid promotion” can be used. Individuals must not endorse any product or service that they have not personally used or experienced or in which due diligence has not been done by them.

The department has observed that there is confusion regarding which disclosure word to use for what kind of partnership. Therefore, for paid or barter brand endorsement, any of the following disclosures may be used: “advertisement,” “ad,” “sponsored,” “collaboration,” or “partnership.” However, the term must be indicated as hashtag or headline text.

The guidelines state that the disclosure must be placed in the endorsement message in a manner that is clear, prominent, and extremely hard to miss.

In conclusion, the guidelines aim to ensure that individuals do not mislead their audiences when endorsing products or services, and that they are in compliance with the Consumer Protection Act and any associated rules or guidelines.

Read guidelines here.

Govt To Table Digital India Act In July Post Consultations

The Digital India Act (DIA), a policy framework looking to replace the IT Act of 2002, would reportedly be ready by July 2023 following multiple rounds of consultations with industry stakeholders during that time.

The development follows after the Ministry of Electronics and Information Technology (MeitY) concluded its first-ever round of consultations with industry stakeholders on the draft Digital India Act in Bengaluru on March 9. It was attended by as many as 300 stakeholders, of whom more than 200 attended virtually.

According to reports, the government is set to have two more rounds of consultations with the industry over the draft bill between now and March 20. The draft bill would be out by April and the draft consultation will last another 90 days following that, according to the Union Minister of State for Electronics and IT Rajeev Chandrasekhar.

The minister of state expressed that the Digital India Act seeks to manage the complexities of the internet and the rapid expansion of the types of intermediaries. The bill further seeks to protect citizens’ rights, address emerging technologies and risks and be future-proof, he added. He further elaborated that given the size of India’s online space, there is a lot of space for criminalities and illegalities, and new forms of user harm such as catfishing, doxxing, cyber stalking, cyber trolling, gaslighting and phishing, among others.

The draft Digital India Act will seek to address these issues, being a principle-based legislation, the MoS IT added.

Talking about a regulatory body for digital entities similar to the Telecom Regulatory Authority of India (TRAI), Chandrasekhar informed that the government does not want a monolithic regulator because the government does not want to stifle the young, innovations and startups.

Read press release here.

MIB clarifies that OTT platforms that host live feeds of news channels not bound by 26% FDI limit

The I&B Ministry clarified on March 10 that the stipulation of a 26% foreign direct investment (FDI) limit does not apply to over-the-top (OTT) platforms that distribute the live feeds of third-party news channels. The ministry’s clarification comes 1.5 years after platforms like Disney+ Hotstar and SonyLIV had removed the live feeds of third-party news channels from their platforms due to ambiguity over the FDI rule and the introduction of a content rating system under the IT Rules 2021. The ministry clarified that TV news channels granted permission under the Uplinking and Downlinking Guidelines, and their entities operating the digital news content are already covered under the FDI policy.

Read more here

Online gaming company PlayGames 24×7 moves Madras High Court alleging harassment by Tamil Nadu police after suicide by gamer