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India has a well-organized system of judicial mechanism which cater to the need of registration, protection and enforcement of Intellectual property, however a number of recent judgments bear a testimony that despite having an effective Judicial framework for safeguarding IP Infringement the violation of IP continues to take place for an altogether different reason of “People taking IP Lightly”. There are some serious issues as far as Enforcement of IP Rights in India is concerned.
Recently the Court has seen a rise in non-compliance of its orders in IP cases. This article aims to analyze the trends that the courts have followed in dealing with such contempt cases.
1)In Koninklikke Philips .v. Vs Kanta Arora and Ors the plaintiff Philips Electronics had filed a passing off action against the defendants that had registered the mark PHILIPS for the purpose of and marketing pressure cookers.
The defendants had contended that they have been using the mark PHILIPS since 1984.Moreover the plaintiff delayed in filing the suit and that it should act to its detriment. The court however rejected the defendant’s contention
The High Court satisfied with the claim of the plaintiffs issued an interim injunction against the defendants thereby preventing the defendants from using the mark PHILIPS for its products and from passing off its goods as those of the plaintiffs.
The Delhi High Court held that:
- Registration of a mark at the trademark registry is not an adequate defense in an action for passing off, and the mark’s mere presence on the register does not prove its use by the person in whose name the mark has been registered.
- The fact that Philips Electronics was not engaged in the manufacture or sale of pressure cookers was irrelevant.
- No trader can use a trademark to market its goods if the use creates confusion or deception in the mind of a consumer with average memory and power of recall. Therefore, the defendant cannot use the trademark PHILIPS, as it is identical to the plaintiff’s trademark, under which the plaintiff has been marketing its wide range of products, including kitchen utensils.
The defendants challenged this order before a division bench of Delhi High Court.
However even after the injunction order was passed by the court the defendants continued the use of the infringed goods. The plaintiffs made an application before the Court to appoint a court commissioner to prevent the defendants from continuing the use of the goods containing infringed trademark.
In view of the Court’s Order when the Commissioner and PHILPS lawyer visited the defendant’s office they were ill-treated and were pushed inside a room and the door was locked from outside by the defendants.
The plaintiff’s referred to the defendants ill-treatment of the Commissioner and the Lawyer . Taking notice of the acts of the defendants, a notice of contempt was issued against the defendants by the Delhi High Court along with a warrant to ensure the presence of the defendants.
2) Another case of Januvia patent provides how the court are facing problems of enforcement of orders by the defendants and how the courts have tried to deal with the defendants by imposing heavy penalties on the defendants for disobeying the courts orders.
The petitioners in this case had a patent over a pharmaceutical composition called Sitagliptin used for curing diabetes and used to sell the same under the brand names- “Januvia” and “Janumet” to name a few. The respondents created a website and claimed to manufacture the same composition and sold it under the same brand names, which inturn diluted the brand value of the petitioner’s business. The petitioner filed an injunction suit against the defendants. The court disposed off the matter after the parties filed for a compromise application. The defendants however breached the compromise settlement due to which the petitioners were constrained to institute contempt proceedings against them for such breach.
The defendants accepted their breach and conceded to accept any terms that the court would impose. The petitioner stated that they were producing medicinal preparations to cure people of various ailments and that they were ready to ward off the damages if it were to be used for greater public good.
The court after examining the net worth, the sales turnover etc. of the defendant company imposed a penalty of Rs.80 lakhs on the defendant company that was to be used for “greater public good”
The “public good” which the Court had in mind were measures to fight air pollution by planting trees in a city which, in the Court’s words, was “virtually gasping for fresh air..
In addition the Court directed the defendants to file an apology to the petitioners and to plant 1,40,000 trees on the Central Ridge. It gave them detailed specifications regarding the type of tress to be planted, time duration up to which the defendants shall be obligated to nurture them. They were also directed to ensure the presence of regular water supply to ensure the healthy conditions of the plants.
The most recent case which manifests the difficulty that the courts are facing with respect to enforceability of its orders is the case of Yatra Online Private Ltd v Rajesh Kumar Dhatik and Ors.
The factual matrix of the case goes like this:
Yatra online private limited(the petitioners) is engaged in the business of providing information about the pricing, availability and booking facility for domestic and international air travel, railways and bus services along with hotels reservations and holiday packages through its website www.yatra.com. The business of the plaintiff’s was dependent mainly on regular introduction of new hotels and services for domestic and international travels along with their respective details to enable customers to plan their travel accordingly.
The defendants misappropriated the original literary work and photographs from the plaintiff’s website and use it on their own website without seeking any permission or approval from the plaintiff and have misrepresented the same as that of their own. Moreover ,the defendants also copied and misrepresented plaintiff’s authentic terms like “yatraSMART” as “HappyeasygoSMART”
Taking notice of the above facts the Court observed that there was prima facie case of infringement by the defendants. The Court stated “The balance of convenience is also in the favour of the plaintiff and an irreparable harm and injury would be caused to the plaintiff if an interim order as prayed for is not granted”
Consequently the Court granted interim injunction against the defendants and prevented them from using any other form of copyrightable work on their website www.happyeasygo.com which constitutes an infringement of any of plaintiff’s copyrightable work.
However , the defendants in spite the orders passed by the Courts continued to use the infringed work of the plaintiff and have failed to comply with the orders of the Court. The plaint filed an application against the defendants about their non-compliance with the orders of the Court.
In lieu of the application made by the petitioners, the Hon’ble Court ordered the director of the defendant company to be personally present before the Court.
The matter is still pending before the Court and we are yet to see what would be the ultimate step taken by our judiciary against such Contempt of Court’s orders.
light of the above examples, it is amply clear that the increasing problem of enforcement in orders of
the Courts is posing great challenges for the judiciary specifically with
respect to Intellectual Property matters, reasons could be traced down to
conclude that maybe people in India take IP Matters too lightly when compared
other Criminal or Corporate Litigations . The Courts have increasingly been
using various mechanisms like fines, penalties, punishments to ensure that its
orders are complied with and the person liable for contempt is punished
accordingly. However, the time is ripe to bring inmore stringent methods to
ensure that such enforcement of Court Orders takes place in the first place.
Author: Mr. Shubham Borkar, Senior Associate – Litigation and Business Development and Co-Author- Palak kumar, at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at firstname.lastname@example.org or at www.linkedin.com/in/shubhamborkar.
. (CS (OS) No. 207/2002.)