Delhi High Court Restrains use of the mark “Bata” in a Defamatory Song

In a 66-page judgment delivered on October 15, 2012, a Learned Single Judge of the Delhi High Court has restrained the makers of the movie “Chakravyuh” from “releasing, transmitting, distributing, exhibiting, performing or communicating to the public by any means or technology, aural or audio visual performance of the impugned song “Mehngai” using  the name of the plaintiff therein till final disposal of the suit.”

The relevant extracts of the lyrics of the song in which the name “Bata” is used is as follows:

“Birla Ho Ya Tata Ambani Ho Ya Bata,

Apne Apne Chakar Mein Desh Ko Hai Kata

Birla Ho Ya Tata Ambani Ho Ya Bata

Apne Apne Chakar Mein Desh Ko Hai Kata

Are humre hi khoon se inka engine chale

dhakadhak, Aam admi ki jeb ho gai hai safa

chat, aam aadmi ki jeb ho gai safachat.”

The lyrics refer to corporate corruption in the country and name prominent Indian business houses, including popular footwear maker “Bata”. Among other things, Bata filed a “quia timet”/pre-emptive action suit for infringement of its trademark/name, passing off and defamation. Summing up the issues in the case, the Court noted as follows:

“15. In the facts of the present case, the core issue involved is whether the defendants have transgressed the right to freedom of expression and speech through the song “Mehngai”. Another important question to be answered by this Court in the present case is whether pre-emptory injunction can be granted by the Court to restrain the defendant from transmitting and exhibiting the said song “Mehngai”   or the only remedy is to claim damages after proving such defamation in trial.”

Citing decisions of the Supreme Court, the Court noted that motion pictures had a deeper impact on its audience that books and that the freedom of expression under Article 19(2) was not absolute. Applying the principles enumerated in SC’s decisions and those of the Delhi High Court, the Court observed thus in Para 25 on the facts of the case:

“25. Applying the above enunciated principles, in my considered view in the present case in the song in question, the defendants  have used expressions that are offensive towards the plaintiff.  The tenor of such expressions   suggests that the engines of the industries of the plaintiff are run by the blood of the common public.  

Such expressions undoubtedly have the propensity to cause lasting damage to the well established reputation of the plaintiff and in my view the use of the said expression would certainly harm and jeopardize the credibility and reputation of the plaintiff in the estimation of the common public. This Court also cannot find any justification for the use of such derogatory expressions   in the song and such expressions prima facie cannot stand the test of either fair comment or based on truth or in the public or societal interest.”

The context of the Defendants’ contention that the movie had been cleared by the Censor Board and that no objections were raised by the Plaintiff on the Censor Board’s decision to clear the movie along with the allegedly defamatory song, the Court observed thus:

“In my considered view, none  of the above contentions   raised  by the counsel  for the  defendants  could   justify the  act of the defendants  in using  the name  of the plaintiff   with such a disparagement  to the extent of attributing that the plaintiff  has looted  the country and  that they are running their industry by the  blood of the people.  

This is no doubt a serious attack on the reputation and goodwill of the plaintiff   and with the use of such defamatory expressions the defendants cannot take shelter by using the same with a disclaimer.  Even otherwise it is  inconceivable that the   use of a  disclaimer    in any  way can help so  far transmitting  of the said song on You-Tube, through CDs or other media sites is concerned as  the  disclaimer will confine to the viewers of the film and not to all those who will merely listen the song.”

On whether Bata’s suit was barred by the Cinematographic Act which governs grant of viewership certification to cinematograph films, the Court’s views are definitely worth reading:

“27. This court also does not find any merit in the contention  raised  by the counsel  for the defendant  that the remedy of the plaintiff to file a civil suit is barred  due to the remedy  available  to the plaintiff under Section   6 of the Cinematographic Act 1952.  There is no provision in the  Cinematographic Act 1952 which  excludes the jurisdiction of the civil court to try and entertain a civil suit.

It is a settled legal position that a provision of law ousting the jurisdiction of the civil court must be strictly construed and exclusion of the jurisdiction cannot be easily inferred unless such exclusion is either explicitly expressed or clearly implied.  This court also does  not find   any specific provision  in the Cinematographic Act which  can  grant  an urgent and immediate  relief to the grievance of an individual  in a case  like  the present  where  the grievance  of the individual  pertains  to intending loss of its reputation  and goodwill. 

The entire scope of Cinematographic Act is to regulate the exhibition of films for evolving and entertaining the society through  the film makers, exhibitors and the connected  team  with such activities  and define the role of the Central Board of Film Certification  and of the Central Government. 

The Act does not specifically provide for any remedy or grant any such relief to redress the grievances of the individuals or private citizens and institutions etc. against screening  of any film or objectionable scene in the films Ordinarily, the courts do not interfere with the decision taken by  expert bodies, but that would not  imply  that the citizen whose fundamental rights are violated is left  remediless and that the recourse to approach  the court to  challenge the decision of the expert body is not available”

Para 30 of the judgment for me is a must read in order to understand the balance to be struck between artistic license and responsibility:

"30. At omega, this court would like to observe that cinema is not only an entertainment industry but also a potent weapon for social change. From a six to a sixty year old, everyone derives and takes home something from a movie and it has the power to evoke emotions and shape the outlook of the common man towards various issues like none other. The film makers have since yore mirrored social ills plaguing the society which movement continues till date with igniting the minds and being responsible for various social movements leading to monumental changes in the social setup.

However with this responsibility to bring to the public domain the realities of our diverse nation, there comes a duty to act cautiously not to make inroads in the lives and dignity of people and institutions alike in the garb of being the messiahs of social change. Thus the film makers have no unbridled right   to tarnish the image and reputation of any individual or institution, that too in the absence of any foundation  for  the same. One cannot be oblivious of the fact that the  main stay of the film industry is not only entertainment but also commercial gains  and  in  this pursuit to  earn huge profits the cinema makers  have no  right to trample upon,disrepute or disparage  the reputation of others.”

Cipla’s Appeal in Sunitinib Matter Dismissed by Division Bench of Del HC

In a 4-page order dated October 12, 2012, the Division Bench of the High Court has dismissed Cipla’s Letters Patent Appeal.

As stated in my last post, Cipla had preferred a Letters Patent appeal against the Learned Single Judge’s order dated October 8, 2012 restraining it from marketing its drug until October 15, 2012 (yesterday). The said order was passed in a writ petition filed by Sugen Inc against the post-grant opposition dated September 24, 2012 revoking Sugen’s patent on Sunitinib.

In its Letters Patent appeal, Cipla has raised precisely the question as I had in my last post. No interim stay order had been granted by the Learned Single Judge on the post-grant revocation of Sugen’s patent, and yet Cipla was restrained from marketing its drug. Apparently, although Sugen sought a stay, a stay was not granted, instead an injunction was granted against Cipla. 

Here is Para 4 of the order:

“4. This order is questioned on the ground that on the application for stay along with writ petition, the learned Single Judge had not  granted any interim order and only directed notice,  when second  application for stay with similar prayer was filed, the learned Single Judge entertained and granted the above order.  Further, in the absence of any prayer for direction to the appellant herein not to take any steps for marketing its drugs, the learned Single Judge should not have granted such an order. "

Despite noting the above, the Division Bench of the HC which was presided by the Hon’ble Chief Justice of the CH, held as follows:

“6. We have considered the above submissions.  On perusal of the order under appeal, it is seen that though the learned Single Judge has on 05.10.2012 only ordered notice in first stay application filed by the second and third respondents returnable by 15.10.2012, but having noticed that in the absence of stay, the appellant was intending to market the product before 15.10.2012, has on 08.10.2012, restrained the appellant from marketing the product, only till 15.10.2012.  This being a discretionary order considering the prima facie case, we are not inclined to interfere, particularly, when the learned Single Judge is seized of the stay applications that would be heard on 15.10.2012, which is the next working day after today. 

The points, whether the order of the Assistant Controller is bad in view of Section 25 (3) and (4) of the Patents Act and whether the writ is not maintainable in the face of availability of alternate remedy of appeal  are still to be considered by the learned Single Judge on the next date of hearing and for that reason, we are not inclined to go into that aspect.

7. For the disposal of this appeal, it is suffice for us to mention that the interim order is one of interim arrangement till the next working day after today and was passed on considering the prima facie case, particularly the subsequent event that had taken place after notice of the stay application had been issued. 

8. Hence, we do not find any merit to entertain this appeal.  This appeal is accordingly dismissed.”

An anonymous commentator commented on the last post informing that Cipla sought an adjournment before the Learned Single Judge yesterday in Sugen’s writ petition (which was the originally fixed date for hearing), and accordingly hearing in the petition has been adjourned to December 6, 2012.

Apparently, (which is subject to verification) the Court has ordered that the interim order restraining Cipla from marketing its drug shall continue until December 6, 2012.

Sunitinib Dispute: Delhi High Court’s Order dated October 8, 2012

In my last post, I had blogged on Cipla’s appeal against an order of the Single Judge restraining Cipla from taking any steps to manufacture its drug until October 15, 2012. This order was passed on October 8, 2012 in a Writ Petition W.P.(C) 6361/2012 filed by Sugen Inc (not in a suit, as I incorrectly mentioned in my last post) against the post-grant revocation of its patent by the Controller on September 24, 2012.

I thank the same alert friend for bringing this order to my attention and more importantly, for sharing his thoughts on the issue with me.

The primary ground of challenge appears to be that Sugen Inc was not provided a copy of the recommendations of the Opposition Board in the post-grant opposition proceedings. This, according to Sugen, was a violation of the principles of natural justice, and hence rendered the revocation order a “nullity”.

 

Readers may collect the order of the IPAB dated August 3, 2012 in Diamcad N.V. and Anr. v. Sarin Technologies  where it was categorically held by the IPAB that the recommendations of the opposition board must be shared with the patentee in order for him to rebut the recommendations, if they adversely affect him.

The Learned Single Judge presiding over the writ petition also took the prima facie view that the contention of Cipla that there is no requirement under the Act to share the recommendation of Opposition Board, was not convincing. Accordingly, Cipla was restrained until October 15, 2012 from taking any steps to market its drug.

There appears to a slight issue with the order of the Single Judge. The post-grant opposition order of the IPAB revoking Sugen’s patent on Sunitinib was not stayed, and yet Cipla was restrained from marketing its drug.

My point is the post-grant order ought to have been stayed if Cipla was sought to be restrained, however if no such stay was granted against the operation of the revocation of the patent, then what is the legal ground for restraining Cipla?

I could be wrong. Comments and corrections are welcome! 

Delhi High Court Reserves Verdict on Cipla Appeal in Sunitinib Matter

On October 13, 2012, Law et al reported that the Delhi High Court has reserved its verdict in an appeal filed by Cipla challenging an injunction granted by the Delhi High Court in a writ petition filed by Sugen Inc. I thank a friend for bringing this news report to my attention.

The appeal was against a decision of the Single Judge restraining Cipla from taking any steps to market its drug.

Readers may recollect that Sugen Inc’s patent over Sunitinib was revoked last month in a post-grant opposition filed by Cipla.

It would be interesting to see how the High Court decides Cipla’s appeal in light of the revocation of the patent. We will keep our readers updated on the case.

Section 124 of the TM Act: Does a Defendant Need the Court’s Permission to Apply for Rectification?

I was recently asked if a defendant/alleged infringer in a suit for trademark infringement needs the Court’s permission under Section 124 of the Trademarks Act, 1999 to file a rectification against the plaintiff’s mark.

In my opinion, the object of Section 124 is to connect filing of a rectification petition to the Court’s obligation to stay the suit proceeding, and not to impose fetters on a defendant’s right to file a rectification petition.

Before I proceed with interpreting Section 124, it needs to be pointed out that under Section 125 of the Act, where there is a trademark infringement suit pending before a court or issues of trademark validity have been raised before a court, and no rectification petition has been filed, it shall be filed only before the IPAB, and not the registrar for Section 124 to be applicable.

If however, there is a pending rectification proceeding before the registrar, that is sufficient to invoke Section 124. This is reflected by Section 124(1)(i).

Now, moving to the import of Section 124, let’s start with the provision itself:

124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.
(1) Where in any suit for infringement of a trade mark-

(a) the defendant pleads that registration of the plaintiff’s trade mark is invalid ; or

(b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant’s trade mark, the court trying the suit (hereinafter referred to as the court), shall,-

(i) if any proceedings for rectification of the register in relation to the plaintiff’s or defendant’s trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiffs or defendant’s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.

(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.

(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.

(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.

(5) The stay of suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attracting any property), during the period of the stay of the suit.

On a reading of the provision, it bears out that for Section 124 to apply, the defense of invalidity of the registration of the mark must be raised by the defendant. Now comes the interesting part.

In sub-clause (i) of Sub-section (1), the word used is “shall” i.e. if the defense of invalidity is raised, the Court “shall” do the following:

Situation A. If a rectification proceeding is already pending before the Registrar or the IPAB, the Court “shall” stay the suit until the disposal of the rectification proceeding. The point to be noted is, there is no express power under this situation for the Court to consider the prima facie tenability of the rectification proceeding i.e. it does not appear possible for the Court to form an opinion on the tenability of the rectification petition. It can only grant a stay.

Situation B. If no rectification proceeding is filed, it is in this situation that the Court may prima facie assess the tenability of trademark invalidity plea of the defendant. Only if the Court is prima facie satisfied with the plea, it “shall” adjourn the suit for 3 months to allow the defendant to file a rectification petition before the IPAB. This also means that the Court must pass a reasoned order as to why it believes there exists a prima facie case of invalidity of the mark.

Under Situation B, once the defendant proves to the Court that he has indeed moved a rectification petition before the IPAB, the trial of the suit “shall” be stayed until the rectification petition is finally decided.

If despite time extensions allowed by the Court, the defendant fails to file a rectification proceeding, the Court shall treat this as waiver of the invalidity plea. It must be noted that there is still no bar in filing of the rectification proceeding by the defendant. The only consequence is that the Court is under no obligation to stay the suit. In fact, under sub-section (3), the Court shall proceed with the suit.

What is critical is sub-section (5) because it dispels a popular myth that the Court cannot issue an interim injunction before staying the suit under Section 124. The sub-section is abundantly clear on the position that there are no fetters on the grant of equitable/interlocutory reliefs by the Court, which includes an interim injunction besides maintaining accounts.

In other words, it is possible for the Court to issue an interim injunction and stay the trial in the suit until the rectification petition is decided. Theoretically, there could be several instances where the Court may permit the defendant to file a rectification petition before the IPAB, and yet deem it fit to grant an interim injunction to maintain status quo.

I realize this could be inconsistent with the prima facie finding that there is merit in the plea of invalidity of registration. That said, the very nature of equitable reliefs is to cater to factual peculiarities in a particular case. Therefore, filing of an rectification petition before the IPAB need not necessarily translate to denial of interim injunction to the plaintiff.

Conclusion:

1. Section 124 does not limit the Defendant’s right to file a rectification petition. It only requires him to file it before the IPAB if such filing is after the institution of the suit.

2. There is no bar on the power of the court to grant any interim reliefs before the suit is stayed.

Comments and Corrections are Welcome!

Section 31(d) of the Patents Act: Scope of Exception to Anticipation

Section 31(d) of the Patents Act, 1970 states that an invention shall be deemed to have been anticipated by reason only of the description of the invention in a paper read by the true and first inventor before a “learned society” or published with his consent in the “transactions of such a society”, if the application for the patent is made by the true and first inventor or a person deriving title from him not later than twelve months after... the reading or publication of the paper, as the case may be.

The Act does not define the word “learned society” nor does it elaborate on what constitutes a “transaction”. In the absence of these terms, is it possible to bring anything and everything under the sun within the scope of the terms?

The scope of both the terms must be circumscribed in a manner that the scope does not run counter to the legislative intent reflected in the choice of such words. This is because sometimes undefined terms are subjected to unduly broad interpretations which do not find statutory sanction.

How does one infer legislative intent with respect to Section 31(d)? It would help to peruse provisions of the Act which deal with anticipation, namely Sections 29-34.

In particular, Section 34 clearly states that circumstances not covered under Section 29-33 would anticipate a patent specification. In other words, the Act defines what is not anticipatory, and those which do not fall within the penumbras of the windows carved out in Sections 29-33, shall be deemed to anticipate a patent specification. Negative definitions are typically interpreted strictly since they are caveats as to what is not permissible.

Therefore, words such as “learned society” and “transaction” too must be interpreted in a manner which gives effect to the negative definition of anticipation.

The term “learned society” usually alludes to a peer group which has been constituted with the object of promoting knowledge and scholarship in a specific field of human activity. The interpretation of “learned society” depends on the use of the word “transaction”.

This is because, under Section 31(d), for the publication to not anticipate a patent specification, the nature of the publication must be a “transaction”. In other words, the use of the word “transaction” as opposed to a blanket “publication”, serves a specific purpose. Not all publications of a learned society qualify for the exemption under Section 31(d), only publications in the “transactions of a learned society” can rely on the provision to fend off allegations of anticipation.

Section 31(d) appears to have English origins. Section 51(2) is reproduced below:

“An invention claimed . . . shall not be deemed to have been anticipated by reason only of—(d) the description of the invention in a paper read by the true and first inventor before a learned society or published with his consent in the transactions of such a society”

What is relevant is that the English Act too does not provide definitions of “learned society” and “transactions”.  In Ethyl Corporation’s Patent (1963 RPC155) and Ralph M. Parsons Application (1978 FSR 226), the UK Courts had an opportunity to elaborate on the terms wherein it was held thus:

1.  The reason for not defining the term “learned society” is because it would have required the legislature to set a qualitative threshold for the word “learned”.

2.  To avoid unduly broad interpretation of the word “learned”, the term transaction was used in place of “publication”.

3.  On the term transaction, in Ralph M. Parsons Application, it was observed as below:

“An essential prerequisite of a publication, if it is to be regarded as “transactions” is that it should be published under the auspices of and finally be the responsibility of the Association—the learned society—whose organ of publication it is.”

4.  These “transactions” are for the private consumption of members of the learned society as a recordal of the society’s proceedings, and which are not published for consumption by non-members in return for a fee or otherwise. In other words, if the publication is accessible to non-members, it would lose the quality of “publication in a transaction”, and could hence anticipate a patent specification.

The problem with the provision is that the way “learned societies” like SAE or IEEE function, the distinction between a “publication in a transaction”, and “publication of a transaction” is nearly moot because articles which are published in “transactions” are available for non-members too.

So how would Courts purposively construe the provision to ensure that the spirit of “limited exceptions to anticipation” is not undermined? Comments are welcome!

Delhi High Court: PIL on Section 107A(b) Dismissed as “Misconceived”

In a 3-page order dated August 22, 2012 which seems to have been uploaded on the Delhi High Court’s website only recently, the High Court has dismissed my PIL as “misconceived” on grounds of "locus standi". I thank an anonymous commentator for bringing the order to my attention.

Of the 5 Paragraphs in the order, Paras 1-3 reproduce excerpts from the PIL in toto. The operative portions of the order read as follows:

“3. We are afraid such a kind of writ petition cannot be entertained as PIL.   The petitioner is trying to advance the cause of those persons who are neither indigent nor illiterate nor vulnerable groups.  They are not persons who cannot approach the Court themselves. The persons concerned with such imports, who may be allegedly affected by the aforesaid provisions, are well off importers and, therefore, if there is any grievance of any such person, he can approach the Court. 

4. Moreover, provisions of a particular Statute or Circular which is statutory in nature cannot be challenged in vacuum. 

5. We are, therefore, of the opinion that this petition as PIL is totally misconceived and is accordingly dismissed.”

In short, according to the Court where it refers to "challenge in vacuum", since there was no immediate “lis”, meaning thereby a person who had been immediately affected by the Customs notifications, a PIL was not warranted. Further, the Court took the view that the ones who are bound to be affected by the Customs notification could approach the Court themselves, and therefore the PIL could not be entertained.

To me, this is surprising because if the Court believed that “locus standi” was an issue, then it ought not to have issued a notice on the very first date (May 23, 2012) if it wasn’t satisfied on locus/maintainability. Instead, the Court issued notice on the first date, and then dismissed the PIL on essentially technical grounds.

Subsequent to the issuance of notice on May 23, 2012, the matter was again listed on July 25, 2012 when no questions on maintainability were raised. Finally the matter was listed for arguments on August 22, 2012. On the said date, the Court primarily heard arguments on the interpretation of Section 107A(b).

After hearing me at length on the provision, at the fag end of the hearing the Court posed a question on “locus standi”. To this, I drew the attention of the Hon’ble Court to specific introductory portions of the PIL which are mandated by the Delhi High Court’s Public Interest Litigation Rules, 2010.

Under these Rules, it is imperative on the part of the Petitioner to make an averment which explains his locus, and that he has the ability to pay costs if they are imposed by the Court.

In the PIL, I had specifically taken the stance that the Customs notification has a bearing on consumers of patented products as well, since ultimately Section 107A(b) entails consumption of the imported patented products by Indian consumers. The only issue to be addressed was who could import and how. Therefore, there is a tangible public interest involved in deciding whether or not the provision envisages a “free for all” importation into India.

I also drew the High Court's attention to judgments of the Supreme Court on locus standi in PILs. Unfortunately, none of these judgments seem to have been addressed in the brief order of the Court. 

That said, the only silver lining in the order is that no adverse observation has been passed with respect to the interpretation of Section 107A(b). To this extent, the law on the provision still remains unsettled and inconclusive.