Photocopying books for 'Education' not violation of Copyright law: Delhi High Court

This judgment pronounced yesterday has garnered significant media highlights and is said to be a pioneer in Intellectual Property Rights (IPR) laws. Deciding the suit filed by reputed international publishers, a Single Judge of the Delhi High Court in The Chancellor, Masters & Scholars of the University of Oxford v. Rameshwari Photocopy Services [CS(OS) 2439/2012][decision dated 16.09.2016] has returned significant findings on the nature and extant of copyright protection against photocopying.

The factual background leading to this dispute is recorded by the High Court in the following terms;

1. The five plaintiffs, namely i) Oxford University Press, ii) Cambridge University Press, United Kingdom (UK), iii) Cambridge University Press India Pvt. Ltd., iv) Taylor & Francis Group, U.K. and, v) Taylor & Francis Books India Pvt. Ltd., being the publishers, including of textbooks, instituted this suit for the relief of permanent injunction restraining the two defendants namely Rameshwari Photocopy Service (carrying on business from Delhi School of Economic (DSE), University of Delhi) and the University of Delhi from infringing the copyright of the plaintiffs in their publications by photocopying, reproduction and distribution of copies of plaintiffs‘ publications on a large scale and circulating the same and by sale of unauthorised compilations of substantial extracts from the plaintiffs‘ publications by compiling them into course packs / anthologies for sale.

2. The plaintiffs, in the plaint, have given particulars of at least four course packs being so sold containing photocopies of portions of plaintiffs‘ publication varying from 6 to 65 pages. It is further the case of the plaintiffs that the said course packs sold by the defendant No.1 are based on syllabi issued by the defendant No.2 University for its students and that the faculty teaching at the defendant No.2 University is directly encouraging and recommending the students to purchase these course packs instead of legitimate copies of plaintiffs‘ publications. It is yet further the case of the plaintiffs that the libraries of the defendant No.2 University are issuing books published by the plaintiffs stocked in the said libraries to the defendant No.1 for photocopying to prepare the said course packs.

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4. The defendant No.1 has filed a written statement defending the suit inter alia (a) disputing the copyright of the plaintiffs and contending that the plaintiffs have not produced any document to establish their copyright; (b) denying any act of infringement of copyright and alternatively pleading that the activities carried on by it amount to fair use of the works within the meaning of Sections 52(1)(a) & (h) of the Copyright Act, 1957, and pleading (c) that it has been granted licence with respect to a small shop within the campus of DSE to provide photocopy services to students and faculty at nominal rate and as per the terms of licence, the defendant No.1 is required to provide 3000 photocopies per month to DSE, an institute of the University of Delhi, free of cost and to charge only the prescribed rate for the photocopy service meted out to others; (d) that the defendant No.2 University recommends the syllabi for each academic year along with suggested reading materials of a wide variety of authors and which material is contained in different books of different publishers sold at a high price, often beyond the reach of the students; (e) that the syllabi of the defendant No.2 University does not recommend the entire publication but only certain extracts from the same; (f) that the students would be reluctant to buy the entire publication just for reading a particular chapter/extract therein and cannot afford to buy 35 to 40 books, portions of which are prescribed in the syllabi and / or suggested for reading; (g) that to ease the financial burden on students, majority of the titles prescribed in the syllabi are housed in the library of the defendant No.2 University which provides such expensive books for reference of students; (h) however owing to only limited copies of such books being available with the library, not enough to cater to the needs of all the students, the library allows the students to obtain copies of such books for their own reference and study; (i) that the services of the defendant No.1 are availed by the students and faculty to photocopy the relevant extracts from the books, articles and journals at the nominal / prescribed rate for use for educational purpose and reference only; (j) that in view of the limited number of original books stored in the library, the faculty of DSE has compiled various master copies of books, articles and journals, which are then used for photocopying by the defendant No.1 in order to save the original work from being damaged; (k) that such course packs are used by teachers and students in the course of academic instructions and for research purposes; (l) that in fact the Licence Deed executed between the defendant No.2 University and the defendant No.1 expressly provides that master copy of each article or chapter of a book for reading is to be provided by the department concerned, so that the master copy could be given for xeroxing, saving the original document; (m) that the defendant No.1 is xeroxing the master copy at the instructions of and on the terms imposed by the defendant No.2 University; (n) that the defendant No.1 is not commercially exploiting the author‘s copyright but is giving copies to students at nominal rates of 40 paise per page to aid their education; (o) that even if the students were to bring the original work to get the same photocopied, the defendant No.1 would charge the same rate; (p) that the defendant No.1 has acted in good faith within the meaning of Section 76 of the Copyright Act."

In the aforesaid background, the High Court dismissed the suit. The judgment is a detailed one running into almost 100 pages. For the benefit of our readers, we have reproduced the key findings of the High Court which are as under;

25. The Copyright Act was enacted ―to amend and consolidate‖ the law relating to copyright. Copyright forms part of the bouquet of intellectual property rights and I have wondered whether copyright is also a natural right or a common law right which vests in the author or composer or producer of the work and thus whether in the absence of anything to the contrary contained in the Copyright Act, the attributes of ownership, as with respect to other forms of property, would enure to copyright also. Mention may be made of K.T. Plantation Pvt. Ltd. Vs. State of Karnataka (2011) 9 SCC 1 where a Constitution Bench of the Supreme Court held that Article 300A of the Constitution proclaims that no person can be deprived of his property save by authority of law, meaning thereby that a person cannot be deprived of his property merely by an executive fiat, without any specific legal authority or without any support of law made by a competent legislature and that the expression 'property' in Article 300A is not confined to land alone but also includes intangibles like copyright and other intellectual property and embraces every possible interest recognised by law.

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31. Copyright as a natural or common law right has thus been taken away by the Copyright Act. 

32. I conclude, there can be no copyright in any author, composer or producer save as provided under the Copyright Act. Axiomatically if follows, unless the action of defendants No 1 and 2 amounts to infringement of copyright within the meaning of the Copyright Act, the plaintiffs or any other person in whom copyright vests cannot sue for infringement or damages or accounts, as have been claimed in the plaint.

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34. It is not in dispute that the works in question fall in the category of original literary work. Section 14(a)(i) and (ii), in respect of such works, vests the exclusive right ―to reproduce the work in any material form including the storing of it in any medium by electronic means‖ and the right ―to issue copies of the work to the public not being copies already in circulation‖ in the owner of the copyright. I have wondered, whether ―to reproduce the work‖ would include making photocopies thereof as the defendant No.2 University is doing. The word ―reproduce‖ has not been defined in Section 2 of the Act though i) Section 2 (hh) defines ―duplicating equipment‖ as any mechanical contrivance or device used or intended to be used for making copies of any work; ii) Section 2(s) defines ―photograph‖ as including photo-lithograph and any work produced by any process analogous to photography; and, iii) Section 2(x) defines ―reprography‖ as making copies of a work by photo-copying or similar means. On the basis thereof, I conclude that the words in Section 14(a)(i) ―to reproduce the work‖ would include making photocopy of the work in contravention of the provisions of the Act. I have in Continental Telepower Industries Ltd. Vs. Union of India MANU/DE/1691/2009 held that a photocopy is certainly a copy. Long back, in British Oxygen Company Ltd. Vs. Liquid Air Ltd. 1925 Ch. 383 also it was held that making photographic copy of literary work is reproduction thereof. I thus conclude that the right to make photocopies is the exclusive right of the author or composer of the literary work and a copyright within the meaning of Section 14. Axiomatically, the making of photocopies by the defendant No.2 University will constitute infringement of copyright within the meaning of Section 51 and the photocopies so made constitute infringing copy within the meaning of Section 2(m) unless such act is listed under Section 52 as an act not constituting infringement.

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37. The defendant No.2 University thus, though entitled to issue the books, published by the plaintiffs and purchased by it and kept by the defendant No.2 University in its library, to whosoever is entitled to issuance of the said books from the library, per Section 14(a)(i) and Section 51(a)(i) would not be entitled to make photocopies of substantial part of the said book for distribution to the students and if does the same, would be committing infringement of the copyright therein.

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55. On consideration, I am of the view that the scope and ambit of Section 52(1)(i) cannot be so restricted. The settled principle of interpretation of statutes is that the legislature is to be deemed to have used the language in the context of the prevailing laws and societal situations to which the legislation is intended. Education in the country though at one time pursued in Guru-Shishya parampara (Teacher – disciple tradition) has for long now been institutionalised, both at school and post - school level, with imparting of education by a teacher individually having no recognition. There is no reason to interpret Section 52(1)(i) as providing for an individual teacher and an individual pupil and which, neither at the time of inclusion thereof in the statute nor now exists in the society. Supreme Court, in S.P. Gupta Vs. President of India 1981 Supp (1) SCC 87 held that interpretation of every statutory provision must keep pace with the changing concepts and it must, to the extent to which its language permits, or rather does not prohibit, suffer adjustments so as to accord with the requirements of fast growing society.

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 73. The matter can be looked at from another angle as well. Though I have held Section 52(1)(a) to be not applicable to the action of the defendant no.2 University of making photocopies of copyrighted works but the issuance by the defendant no.2 University of the books purchased by it and kept in its library to the students and reproduction thereof by the students for the purposes of their private or personal use, whether by way of photocopying or by way of copying the same by way of hand would indeed make the action of the student a fair dealing therewith and not constitute infringement of copyright. The counsel for the plaintiffs also on enquiry did not argue so. I have wondered that if the action of each of the students of having the book issued from the library of defendant No.2 University and copying pages thereof, whether by hand or by photocopy, is not infringement, whether the action of the defendant no.2 University impugned in this suit, guided by the reason of limited number of each book available in its library, the limited number of days of the academic session, large number of students requiring the said book, the fear of the costly precious books being damaged on being subjected to repeated photocopying, can be said to be infringement; particularly when the result/effect of both actions is the same. 

74. The answer, according to me, has to be in the negative. 

75. It cannot be lost sight of that Section 63 of the Copyright Act constitutes infringement of copyright an offence punishable with imprisonment for a term not less than six months and extendable to three years ―and‖ with fine. When an action, if onerously done is not an offence, it cannot become an offence when, owing to advancement in technology doing thereof has been simplified. That is what has happened in the present case. In the times when I was studying law, the facility available of photocopying was limited, time consuming and costly. The students then, used to take turns to sit in the library and copy by hand pages after pages of chapters in the books suggested for reading and subsequently either make carbon copies thereof or having the same photocopied. The photocopying machines then in vogue did not permit photocopying of voluminous books without dismembering the same.

76. However with the advancement of technology the voluminous books also can be photocopied and at a very low cost. Thus the students are now not required to spend day after day sitting in the library and copying pages after pages of the relevant chapter of the syllabus books. When the effect of the action is the same, the difference in the mode of action cannot make a difference so as to make one an offence.

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78. I may also mention another advancement. Today, nearly all students of the defendant no.2 University would be carrying cell phones and most of the cell phones have a camera inbuilt which enables a student to, instead of taking notes from the books in the library, click photographs of each page of the portions of the book required to be studied by him and to thereafter by connecting the phone to the printer take print of the said photographs or to read directly from the cell phone or by connecting the same to a larger screen. The same would again qualify as fair use and which cannot be stopped.

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80. Copyright, specially in literary works, is thus not an inevitable, divine, or natural right that confers on authors the absolute ownership of their creations. It is designed rather to stimulate activity and progress in the arts for the intellectual enrichment of the public. Copyright is intended to increase and not to impede the harvest of knowledge. It is intended to motivate the creative activity of authors and inventors in order to benefit the public. For this reason only, Section 14(a)(ii) as aforesaid, applies the principle of 'exhaustion‘ to literary works and which, this court in Warner Bros. Entertainment Inc. Vs. Mr. Santosh V.G. MANU/DE/0406/2009 has held, to be not applicable to copyright in an artistic work or in a sound recording or in a cinematographic film. Once it is found that the doctrine of exhaustion applies to literary work as the works with which we are concerned are, it has but to be held that it is permissible for the defendant No.2 University to on purchasing book(s) and stocking the same in its library, issue the same to different students each day or even several times in a day. It is not the case of the plaintiffs that the said students once have so got the books issued would not be entitled to, instead of laboriously copying the contents of the book or taking notes therefrom, photocopy the relevant pages thereof, so that they do not need the book again.

81. I thus conclude that the action of the defendant no.2 University of making a master photocopy of the relevant portions (prescribed in syllabus) of the books of the plaintiffs purchased by the defendant no.2 University and kept in its library and making further photocopies out of the said master copy and distributing the same to the students does not constitute infringement of copyright in the said books under the Copyright Act.

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86. In my view, there is no difference in the two situations i.e. whether the photocopying machine is installed within the library or is installed outside the library. In my view it also does not make any difference whether the respondent no.2 University itself purchases the photocopy machine and / or allows the students to photocopy themselves or employs a person for doing photocopy. In this respect, I may again note that in our country, with abundance of labour force, the acts such as of photocopying which are done by those desirous thereof themselves in other countries are done by a person employed therefor. In countries with not so much labour force, photocopiers are found to have been installed in libraries for the benefit of the patrons of the library to themselves photocopy whatsoever passages of the publications in the library they are desirous of photocopying for their personal use. Once such a action is held to be not offending any provisions of the Copyright Act, merely because the photocopying is done not by the person desirous thereof himself but with the assistance of another human being, would not make the act offending. It matters not whether such person is an employee of the defendant no.2 University or the defendant no.2 University avails the services of a contractor. The position of the defendant no.1 in the present case is found to be that of a contractor to whom the defendant no.2 University has outsourced its work of providing photocopying service for its students. For this reason, it matters not whether the photocopying machine is allowed by the defendant no.2 University to be kept within the library or at some other place outside the library.

87. It is not the case of the plaintiffs that the defendant no.2 University has permitted the defendant no.1 to or that the defendant no.1 is photocopying the entire books, binding the same, offering or displaying the same for sale to whosoever may be desirous of purchasing the same. The case of the plaintiffs before us is only of preparation of course packs i.e. compilations of photocopied portions of different books prescribed by the defendant no.2 University as suggested reading in its syllabus. That, in my view, by no stretch of imagination, can make the defendant no.1 as competitor of the plaintiffs. Imparting of education by the defendant no.2 University is heavily subsidized with the students still being charged tuition fee only of Rs.400 to 1,200/- per month. The students can never be expected to buy all the books, different portions whereof are prescribed as suggested reading and can never be said to be the potential customers of the plaintiffs. If the facility of photocopying were to be not available, they would instead of sitting in the comforts of their respective homes and reading from the photocopies would be spending long hours in the library and making notes thereof. When modern technology is available for comfort, it would be unfair to say that the students should not avail thereof and continue to study as in ancient era. No law can be interpreted so as to result in any regression of the evolvement of the human being for the better. 

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89. All that is happening in the present case is that instead of the defendant No.2 University issuing the book which may be sought after by a large number of students, to each one of them individually for limited period or limited hours and enabling each student to photocopy the passages or the contents thereof required by him ―in the course of instruction‖ and thereby exposing the book to damage, the defendant No.2 University itself is supplying the said photocopies. It cannot be lost sight of that we are a country with a bulging population and where the pressure on all public resources and facilities is far beyond that in any other country or jurisdiction. While it may be possible for a student in a class of say 10 or 20 students to have the book issued from the library for a month and to laboriously take notes therefrom, the same is unworkable where the number of students run into hundreds if not thousands. According to me, what is permissible for a small number of students cannot be viewed differently, merely because the number of students is larger. Merely because instead of say 10 or 20 copies being made by students individually or by the librarian employed by the University, 100 or 1000 copies are being made, the same would not convert, what was not an infringement into an infringement.

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99. In accordance with the aforesaid international covenants, the legislators of some other member / privy countries in the context of their respective countries have worded the exceptions differently and on an interpretation of which legislation, the Courts of those countries have adjudicated and which judgments have been cited by the counsels. I am however of the opinion that the said judgments in the context of different legislations on the basis of perception by the legislators thereof of the purpose of teaching and unreasonable prejudice to the legitimate interest of the author cannot form the bedrock for this Court to interpret the Copyright Act of this country.

This may not, however, be the last word on the subject. The parties will surely take up the matter in appeal and it will take a while before the law on the subject attains finality. Nonetheless this is an interesting development in IPR laws.

Intellectual Property and Competition Law: HC examines competing considerations

Owners of Intellectual Property (IP) are under law permitted to restrict others from utilizing the IP for commercial benefit. This is directly at odds with the competition principle which obligates free market and no undue restriction. Whether patent holders (and the ensuing compulsory licence regime) can indirectly ensure against new players in the market was a question recently considered by the Delhi High Court. While it was essentially a dispute between Ericsson and Micromax, the issue attained very wide significance in view of the various competing considerations at play. 

Micromax had taken Ericsson before the Competition Commission of India (CCI) alleging abuse of dominant position in the wake of its insistence to pay higher royalty for using the Ericsson softwares etc. The indulgence granted by the CCI to Micromax was challenged before the High Court by Ericsson principally claiming that IP disputes cannot be determined at a competition forum as essentially IP represents a special law and is not amenable to competition law. This dispute has recently been adjudged by the High Court in favour of Micromax holding that IP principles cannot restrict a competition inquiry. 

It is a very crucial decision for it is perhaps a first of its kind in India and sets the stage for evolution of competition inquiry in the IP stage. Some important observations of the Delhi High Court in TELEFONAKTIEBOLAGET LM ERICSSON (PUBL) Vs. COMPETITION COMMISSION OF INDIA AND ANOTHER [Writ Petition (Civil) No. 464/2014, decision dated 30.03.2016] are reproduced below;

A. On the scope of intervention by High Court in Writ Petition against CCI preliminary orders;

78. In terms of Section 26(1) of the Competition Act, a direction to cause an investigation can be made by CCI only if it is of the opinion that there exists a prima facie case. Formation of such opinion is sine qua non for exercise of any jurisdiction under Section 26(1) of the Competition Act. Thus, in cases where the commission has not formed such an opinion or the opinion so formed is ex- facie perverse in the sense that no reasonable person could possibly form such an opinion on the basis of the allegations made, any directions issued under Section 26(1) of the Competition Act would be without jurisdiction and would be liable to be set aside.
79. Any direction under Section 26(1) of the Competition Act could also be challenged on the ground - as is sought to be contended in the present case - that the subject matter is outside the pail of the Competition Act. However, it must be added that a challenge to the jurisdiction of the CCI to pass such directions under Section 26(1) of the Competition Act must be examined on a demurrer; that is, the information received under Section 19 must be considered as correct; any dispute as to the correctness or the merits of the allegations - unless the falsity of the allegations is writ large and ex facie apparent from the record - cannot be entertained in proceedings under Article 226 of the Constitution of India. Equally, in cases where the direction passed is found to be malafide or capricious, interference by this Court under Article 226 of the Constitution of India would be warranted. 

B. On the issue whether CCI examine complaints for violation of IP terms;

106. The next issue to be addressed is whether the CCI would have the jurisdiction to entertain complaints regarding abuse of dominance in view of the specific provisions under the Patents Act enacted to address the issue of abuse of dominance by a patent holder. It is contended on behalf of Ericsson that the Patents Act provides for an adequate mechanism to prevent any abuse of patent rights granted under that Act. It is urged that any issues regarding abuse of patent rights including abuse of dominance as contemplated under Section 4 of the Competition Act, are required to be addressed under the provisions of the Patents Act and, thus, the applicability of the Competition Act in certain matters regarding patents is ousted. It is contended that the Patents Act is a special Act which contains comprehensive provisions relating to grant of patents rights as well as for remedying any abuse thereof; and, on the other hand, the Competition Act is a general law enacted with a view to ensure freedom of trade and to promote and sustain competition in the market. It is, thus, urged that the Patents Act would prevail over the Competition Act and the CCI would have no jurisdiction to entertain the complaints in question.

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110. Thus, whereas patent laws are concerned with grants of rights enabling the patent holder to exclude others from exploiting the invention, and in that sense promoting rights akin to a monopoly; the competition law is essentially aimed to promote competition and, thus, fundamentally opposed to monopolization as well as unfair and anticompetitive practices that are associated with monopolies.

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137. Insofar as the allegations contained in the complaints are concerned - that is, demand of excessive licence fee, unreasonable and anti-competitive licensing terms, and breach of FRAND obligations - the Patents Act does provide a remedy by way of compulsory grant of licences. The question is whether provision of such remedies excludes the applicability of the Competition Act to certain abuse of patent rights - such as demand for excessive royalty and imposition of unreasonable terms for grant of patent licences.

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148. Thus, in my view Section 60 of the Competition Act, which provides for the provisions of the said Act to have an effect notwithstanding anything inconsistent therewith contained in any other law for the time being in force, must be read harmoniously with Section 62 of the Competition Act and in the context of the subject matter of the Competition Act. As discussed earlier, the Competition Act is directed to prohibit certain anti-competitive agreements, abuse of dominant position and formation of combinations which cause or are likely to cause appreciable adverse effect on competition. Plainly, agreements which may otherwise be lawful and enforceable under the general law - such as the Indian Contract Act, 1872 - may still be anti-competitive and fall foul of Section 3 of the Competition Act. Similarly, a practice or conduct which may be considered as an abuse under Section 4 of the Competition Act may otherwise but for the said provision be legitimate under the general law. Equally, mergers and amalgamations that are permissible under the general law may result in aggregation of market power that may not be permitted under the Competition Act. Section 60 of the Competition Act must be read in the aforesaid context.

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172. It follows from the above that whilst an agreement which imposes reasonable condition for protecting Patent Rights is permissible, an anti competitive agreement which imposes unreasonable conditions would not be afforded the safe harbor of Section 3(5) of the Competition Act and would fall foul of Section 3 of the Competition Act. The question as to whether a condition imposed under the agreement is reasonable or not would be a matter which could only be decided by the CCI under the provisions of the Competition Act. Neither the Controller of Patents discharging his functions in terms of the Patents Act, nor a Civil Court would have any jurisdiction to adjudicate whether an agreement falls foul of Section 3 of the Competition Act. This is so because the Controller of Patents cannot exercise any powers which are not specifically conferred by the Patents Act and by virtue of Section 61 of the Competition Act, the jurisdiction of Civil Courts to entertain any suit or proceedings in respect of any matter which the CCI or the COMPAT is empowered to determine, stands expressly excluded. Thus, in so far as the scope of Section 3 of the Competition Act is concerned, there does not appear to be any overlap or inconsistency with the Patents Act.

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174. In my view, there is no irreconcilable repugnancy or conflict between the Competition Act and the Patents Act. And, in absence of any irreconcilable conflict between the two legislations, the jurisdiction of CCI to entertain complaints for abuse of dominance in respect of Patent rights cannot be ousted.

'Today' not proprietary trade-mark of 'India Today' group?

In a recent decision the Delhi High Court has culled out the principles for a trademark and passing off action. In Living Media India Ltd. v. Alpha Dealcom Pvt. Ltd. [FAO(OS) 110/2014, decision dated 29.01.2016] the High Court refused grant of interim injunction against use of trademark 'Nation Today' (for broadcasting and telecommunication services). The injunction was sought by the India Today group which claimed to be running 'Business Today', 'India Today Travel Plus', 'Design Today', 'Spice Today', 'Money Today' magazines, 'Mail Today' news paper and 'Music Today' CDs, VCDs, DVDs, etc., inter alia claiming the use of 'Today' mark since 1975 and thus praying to the High Court to restrain the other party from using the trademark 'Nation Today' by the Defendants.

The India Today group presented before the High Court its claim for injunction alleging that the brand name 'Nation Today' was claimed for registration as the opposite party was "aware of the tremendous brand value, reputation, popularity and goodwill associated with 'TODAY' and its variants" by the India Today group. It was thus claimed that the alleged action "not only infringes their rights in and to the said trade mark and its variations but also amounts to passing off its services as and for services of the Plaintiffs and/or their affiliates/subsidiaries".

The defence reply was noted by the High Court in the following terms;

"7. The defendant filed a reply to the temporary injunction application, refuting the plaint allegations. It was also urged that the two marks were dissimilar and that the plaintiff could not claim exclusivity over the word TODAY. It was submitted that the plaintiff does not have a news channel using the mark INDIA TODAY. Other pleas such as the composite nature of the plaintiff's mark and how the viewers would not be confused or deceived by mere use of the word TODAY were taken."

A Single Judge of the High Court disagreed with the claim and refused to grant injunction. This decision was under challenge before the Division Bench of the High Court which concurred with the Single Judge to affirm the denial of injunction. Justifying its conclusion to reject the injunction, the Division Bench of the High Court summed up the legal position and its reasoning inter alia in the following terms;

18. There is no dispute about the fact that the plaintiff has been in the news magazine publication business for over four decades; if it asserts that it has acquired a strong reputation for the title INDIA TODAY, which is its registered trademark, the Court would be correct in assuming it to be so. However, does that per se - along with sales figures and other financial details testifying to various brands and trademarks owned by the plaintiff, crystallize into a right to prevent others from using a common word, "TODAY" in respect of television news channel services. It is here that the matter requires a slightly closer scrutiny. The word TODAY is a common term and a dictionary one. Used in a non-contemporary sense, i.e without reference to time and as a mark, it could well be urged that it constitutes an arbitrary mark. However, its link with news is unmistakable. In this context, what acquires distinctiveness is the combination India Today.

19. The law demands closer scrutiny, when it comes to the use of common words (such as TODAY), that are descriptive (or semi-descriptive) of the services or goods offered by the service provider or trader. This reluctance was best described in Re J Crosfield & Sons Ltd  "Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the inclosure.”

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20. In India too, it has been recognized that trademark use of generic or descriptive words have to be closely scrutinized before claims of injury are allowed. The Supreme Court ruling in Skyline Education Institute (India) Ltd v S.L. Vaswani declined to grant injunction to the plaintiff, who carried on business under the trademark "Skyline". The Court noted that a large number of other businesses had used the term "Skyline" for the same business activity, i.e educational services.

Caveat

We may clarify that this order of the High Court is in the context of the affirmation of an interim order and thus may not be considered as a final observation on merits of the legal position. Nonetheless this facet in our view does not dilute in any manner the binding nature of the Division Bench order and the legal consequences flowing therefrom.

Trade Dress: A relatively new IPR

A recently decision of the Delhi High Court, which is full of pictures of competing products, brings to fore a relatively new IPR namely "trade-dress". Authored by Nandrajog and Gupta JJ. of the Delhi High Court, their decision in Devanagiri Farms Pvt. Ltd. v. Sanjay Kapur [FAO(OS) 247/2014] offers an interesting insight to both the students of law as also the subject-matter experts as to what constitutes trade-dress protection law in the context of Indian IPR regime.

The case of the Respondents was that they were selling tea in a niche packing for over decades which packing was adopted by the Appellant to sell its similar product and hence the lis. In order to reflect upon the degree of similarity in the two packings, the High Court reproduced the pictures of the competing products which was essential in view of the High Court for "words may sometimes mislead, and the eye may be a better medium to convey a thought".

Having noted the similarity in the product packing, the High Court applied the following test to reach to its conclusion;

"7. Tested on the well recognized touchstone of the principle of deception, it would be apparent to the naked eye that any purchaser of tea with the usual imperfect recollection to which all humans are prone to, would be deceived when she comes across the tea packaged by the appellant.
8. It is the overall get up and similarity which has to be seen and not the minor variations because it is similarity which strikes and not the dissimilarities which distinguish when an ordinary person recollects an object seen in the past."

In view of the High Court the law is well settled in terms of various decisions, including those of the Supreme Court which requires the judge to examine "the overall effect of a colour scheme which has to be the focus of attention in a dispute concerning a packaging material in which the product is sold". On this background the High Court opined that there indeed was deception and violation of trade-dress in the following terms;

"Commonsense guides us that if two persons sell their product in same size rectangular shaped cuboid, nobody can urge that there is deception, but where the add-on grievance is to fabric sleeve used over the rectangular shaped cuboid, deception may occur if the overall similarity in the get up is of the kind that an ordinary purchaser, with the usual imperfect recollection is likely to be deceived. There is no case law cited, and we know of none that merely because a trademark is displayed on the packaging material, notwithstanding a striking similarity in the packaging material there would be no likelihood of deception. Whilst it may be true that in issues concerning trade dress the Courts have considered the display of a trademark, but it is only one of the various factors put in the weighing basket. It needs no argument to bring home the point reached by the learned Single Judge that the overall get up of the trade dress, even taking into account the display of the trademarks, is likely to cause deception; save and except to look at the packaging of the two competing products; and this is the reason why we have reproduced the coloured printout of the packaged product.
13. So striking is the theft by the appellant of the packaging used by the Kapurs that even an elite, educated, widely exposed and travelled person is likely to be deceived."

On such note the High Court has concluded in favour of trade-dress protection. An interesting decision indeed.

Local Working Requirement of a Patent under the Indian Patent Act, 1970

In this post we are bringing an expert article relating to Intellectual Property Laws on the topic 'Local Working Requirement of a Patent under the Indian Patent Act, 1970' which has been authored by a close friend and patron of this blog, Pavit Singh Katoch. Pavit holds a Masters Degree in Law with specialization in Intellectual Property Law from Queen Mary (University of London) and is currently associated with M/s Vaish Associates, Delhi. The views are personal. He can be contacted at affable [dot] sonu [at] gmail [dot] com)

LOCAL WORKING REQUIREMENT OF A PATENT UNDER THE INDIAN PATENT ACT, 1970

Introduction

The intellectual property system is based on the utilitarian principle that it promotes the progress of science and useful arts. Patent is the strongest right in the intellectual property system as it gives an exclusive right to make, sell or use the subject matter of the Patent through its term of protection. Patent means open and is derived from the term “Letters Patent”(Litterae patentes in Latin), which simply means open letters. These were the official documents which granted certain privileges, rights, ranks or titles to the holder of the document. Patents were originally granted to promote transfer of technology, especially the domestic application of foreign technologies and dissemination of new technologies in the country granting patent. Local Working requirement and Compulsory licenses enable the Countries granting patent to force foreign patentees to transfer technology in these countries.

The actual growth of science and technology in a country depends upon the working of the patents rather than on the number of patents granted in such a country. This article deals with the issue of whether the importation of patented product would satisfy the local working requirement, especially in light of TRIPS, Paris Convention and (Indian) Patent Act, 1970. This article also seeks to highlight features of India’s legal requirements with regard to the local working of patents, particularly in the context of notification dated December 24, 2009, issued by the Controller General of Patents, Designs and Trademarks of India wherein it is mandatory for all the Patentees or licensees of a granted Patent to submit the information (as required under Form 27), regarding local working of the patent in India. The notification dated December 24, 2009 can be accessed here.

Definition of Local Requirement

“Local working” is also known as commercial working of patent in a country. It refers to the condition imposed on patentees or licensees that the patented product or process must be used or produced in the patent granting country. This condition has the effect of forcing foreign patentees to situate production facilities within the patent granting country.

Trade-Related Aspects of Intellectual Property Rights

Article 27 (1) of the TRIPS states that the patents shall be available and patent rights enjoyable without any discrimination as to the place of invention, the field of technology and whether products are imported or locally produced. It is argued that Article 27 (1) of the TRIPS precludes the member countries from making any laws mandating the local working of the patents. However, I am of the opinion that the Article 27 (1) cannot be interpreted to mean that working requirements can be fully satisfied by importation alone.

It is important to read Article 27 (1) of the TRIPS with Articles 2, 7, 8 and 30 of the TRIPS to understand the full purport of the TRIPS agreement. Article 7 of the TRIPS sets out the objectives of the TRIPS agreement, stating that the protection and enforcement of intellectual property rights should result in the promotion of technological innovation and technology transfer. It further states that such technology transfer and dissemination should be for the mutual advantage of producers and users in a manner beneficial to their social and economic welfare, and should create a balance of rights and obligations. It is clear that Article 7 recognises both the private interest of the Patent holder and public interest in transfer or dissemination of technology and creation of balance of rights and obligations.

Article 8 (1) of the TRIPS allow member countries to adopt measures necessary to promote the public interest in sectors of vital importance to their socio-economic and technological development. Similarly, Article 8 (2) of the TRIPS provides member countries to adopt measures that prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology. TRIPS also provides for exceptions to exclusive rights under Article 30 of the TRIPS Agreement, that allows member states to provide limited exceptions to exclusive rights conferred by patents. However, such exceptions should not unreasonably conflict with a normal exploitation of the patent and should not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.

From the above, it is clear that Article 7, 8 and 30 of the TRIPS restrict the operation of Article 27 (1) of the TRIPS. However, in order to clear any ambiguity towards the interpretation of Article 27 (1) of the TRIPS, Article 2 of the TRIPS becomes imperative as it makes Paris convention as part of TRIPS and provides for compliance of Paris Convention with respect to all member states. It is important that interpretations of articles in the Paris Convention should be used to clarify any ambiguities that exist in TRIPS articles regarding similar subject matter.

Paris Convention for the Protection of Industrial Property, 1883

The Paris Convention, signed in Paris, France, on March 20, 1883, was one of the first intellectual property treaties. Article 5(A) of the Paris Convention deals with the working of patent and grant of compulsory licenses. It provides that importation of the patented articles should not result in forfeiture of the patent. This provision is similar to Article 27 (1) of the TRIPS agreement providing for import of patented products.

Article 5(A) (2) provides that each country of the Union shall have the right to take legislative measures providing for the grant of compulsory licenses to prevent the abuses which might result from the exercise of the exclusive rights conferred by the patent, for example, failure to work. Article 8 of the TRIPS also talks about the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.

However, Article 5(A) further provides that the Convention Countries have the right to make laws providing for the grant of compulsory licenses in case of non-working of a patent. It is important to note that the Paris Convention clearly stipulates that a patent cannot be revoked unless the grant of compulsory licenses was not sufficient to work the patent, whereby making the grant of compulsory license as a precondition to the revocation of patent on grounds of non-working. Article 5(A) (3) of the Paris Convention also states that no proceedings for the forfeiture or revocation of a patent may be instituted before the expiration of two years from the grant of the first compulsory license.

Article 5(A) (4) of the Paris Convention states that a compulsory license may not be applied for on the ground of failure to work or insufficient working before the expiration of a period of 4 years from the date of filing of the patent application or 3 years from the date of the grant of the patent, whichever period expires last. It further provides that such an application shall be refused if the patentee justifies his inaction by legitimate reasons.

It is fair to conclude that the legislation requiring local working of patents would not be in contravention of TRIPS in light of articles 7, 8 and 30 and explicit reference of Paris Convention under Article 2 of TRIPS. However, this should not mean that working requirement can only be satisfied by local production only; the importing of the patented subject matter would have to be allowed.

Local working of patents under the Patent Act, 1970

Indian Patent Act, 1970 is TRIPS complaint and has used the flexibilities under the TRIPS agreement with respect to provisions relating to local working requirement of the Patent. The Act imposes an obligation on the patentee and patent licensees to disclose information relating to the working of their patents in India.

The Controller General of Patents has by notification dated December 24, 2009, made it mandatory for all the Patentees or Patent licensees to submit the information regarding commercial working of the patent in India. It is pertinent to note that this requirement of submission of information about commercial working of patent under Section 146 is not new, but is only insisted now by the Controller General of patents. This information was sought by the Controller General under Section 146 of Indian Patents Act. The information was to be submitted in the Indian Patent Office by 31st of March 2010. The Controller General of Patents has also warned that any failure to comply with the order will attract punishment.

Section 146(1) of Indian Patents Act provides that the Controller has the power to call for information or periodical statement as to the extent to which the patented invention has been commercially worked in India from a patentee or patent licensees. The patentee or the patent licensees is required to furnish such information to the Controller within two months from the date of such notice or such further period as the Controller may allow.

Further, Section 146(2) of the Act and Rule 131(2) of The Patent Rules 2003 provide that every patentee and patent licensee should furnish the details of working of the patented invention in Form 27 in respect of every calendar year within three months of the end of each year. A patentee or patent licensee can file such information for a given calendar year latest by 31 March of the following year. The following information is required to be submitted under Form-27:

Ø whether the invention has been worked;

Ø if not worked, the reasons for not working the invention, and the steps being taken to work the invention;

Ø if worked, quantum and value (in rupees) of the patented product:

· manufactured in India,

· imported from other countries, giving details of the countries concerned;

Ø licenses and sub-licenses granted during the year;

Ø Whether the public requirement has been met, at a reasonable price either partly, adequately or to the fullest extent.

It is interesting to note that even if the patent is commercially not worked in India, the patentee or patent licensee needs to explain the reasons for not working and steps being taken for working of the invention. Similarly, in case of importation of patented products, the country wise details should be given from where it is being imported.

The Patent Act has also provided for punitive actions for non compliance like not filling the form-27 or providing false information. Section 122 (1) of Indian Patents Act provides a fine of rupees ten lakh (Rupees one million), if any person refuses or fails to furnish the information under Form-27. Further, Section 122(2) has stricter provisions for false information. Section 122(2) provides that if any person furnishes information or statement which is false, and which he either knows or has reason to believe to be false or does not believe to be true, he shall be punishable with imprisonment which may extend to six months, or with fine, or with both.

The information sought under Section 146 is to keep the Controller General updated about the commercial status of a patent. Non-working of a patent is one of the core grounds for seeking the grant of a compulsory license under India's patent law. The availability of such data could potentially open up opportunities for interested parties that may seek the grant of compulsory licenses on account of non-working of patents, especially in sensitive areas like public health or national emergency. It also brings transparency in the working of patents in India.

Confidentiality of the information supplied to the patent office

Section 146(3) read with Rule 131(3) provide that the Controller may publish the information received by him under Form-27. This assumes significance as the information submitted is of the sensitive nature like the quantum and value of the patented product, country of import, number of licensees, etc. and it has been argued that such information should remain confidential. However, the Act does not provide the extent to which such information may be published.

Compulsory license and Revocation:

Compulsory licensing allows a government to license to a company, government agency or other party, the right to use a patent without the titleholder’s consent. A competent authority must grant the license to a designated person or company who is expected to compensate the titleholder by paying a determined remuneration. Different countries have adopted different standards from the grant of compulsory licenses. However, one of the most important uses of compulsory licenses is as a remedy for patent-holder abuses such as “non-working,” or “artificially created high prices” or “exclusive grant back”.

Section 84 (1) of the Patent Act, 1970 allows any interested person after expiry of 3 years from grant of patent, even though if he is a license under the patent, to make an application to the Controller for grant of compulsory license on patent on grounds, including “that the patented invention is not worked in the territory of India”. If the requirements specified under Section 84(1) were not fulfilled, the Controller may grant a compulsory license to any interested person for non-working of patent in India.

However, Section 84 (6) provides that the Controller shall take into account several factors like the nature of the invention, time elapsed, the measures taken by the patentee or patent licensee to use the invention, the ability and capacity of the applicant to work the invention to the public advantage, and the efforts made by the applicant in obtaining a voluntary license on reasonable terms from the patentee, while deciding such an application for compulsory license. While granting a compulsory license reasonable royalty is also paid to the patentee having regard to nature of Invention, its utility, expenses incurred in maintaining patent grant in India and other factors. However, in cases of national emergency, extreme urgency, public non-commercial use or anti-competitive practices, these should not be applicable.

Section 84 (1) of the Patent Act, 1970 enlists the various circumstances, which constitute "failure to meet the reasonable requirements’’, of public in respect of a patent:

(a) Failure to grant license or licenses on reasonable terms ,resulting in:

i. Prejudice to an existing trade or industry or its development, or to establishment of any new trade or industry in India, or to the trade or industry of any person or class of persons trading or manufacturing in India, or

ii. Demand for the patented article not being met adequately or reasonably, or

iii. Failure to supply to or develop an export market for the patented articles made in India, or

iv. Prejudice to the establishment or development of commercial activities in India;

(b) Prejudice to the establishment or development of trade or industry in India due to restrictive conditions imposed by the patentee in articles not protected by the patent;

(c) Restrictive covenants like ‘exclusive grant back’, ‘prevention to challenges of validity’ or ‘coercive package licensing’ in a license for patented invention;

(d) Non-working of the patent in India on a commercial scale;

(e) Commercial working of the patented invention in India is hindered or prevented by import of the patented articles by patentee or patent licensee or any other person with patentee’s consent.

The grant of Compulsory license is generally for the remaining term of patent unless a shorter period looks reasonable to the Controller.

Revocation of Patent

The Controller can make an order to revoke a patent for non-working or if the reasonable requirements of the public are not still met after the grant of compulsory license. According to section 85 of the Patents Act where, in respect of a patent, a compulsory license has been granted, the Central Government or any person interested may, after the expiration of two years from the date of the order granting the first compulsory license, apply to the Controller for an order revoking the patent on the ground that the patented invention has not been worked in the territory of India or that reasonable requirements of the public with respect to the patented invention has not been satisfied or that the patented invention is not available to the public at a reasonably affordable price. It is important to note that such an application for revocation of patent should be decided by the Controller within one year.

The term “Working” or “Local working” has not been defined under the Act. However, Section 83 (a), 83 (b) and Section 85 (7) (e) refer to working of patent in India, and help in the interpretation of the term “working” in India.

Section 83 provides the general principles which are applicable to the working of patented inventions in India. This provision is akin to Article 7 and 8 of the TRIPS agreement. Section 83 (a) states that the patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay. Further, Section 83 (b) clearly states that the patents are not granted merely to enable the patentees or patent licensees to enjoy the monopoly for importation of the patented article. Section 83 (c) and Section 83 (f) also talk about promotion of technology innovation, technology transfer and prevention of abuse of patent rights to unreasonably restrain international transfer of technology. It is interesting to note that Section 83 of the Act is merely a guiding principle and is not binding. However, this provision helps in interpretation of local working requirement under the Indian Patent Act.

On the other hand, Section 85 (7) (d) states that reasonable requirement of the public are deemed to have not been met when the patented invention is not worked in the territory of India on a commercial scale to an adequate extent to as is reasonably practicable. Further, Section 85 (7) (e) states that the reasonable requirement of the public are deemed to have not been met when the working of the patented invention in the territory of India on a commercial scale is being prevented or hindered by the importation from abroad of the patented article by the patentee or patent licensees. It is important to note that this provision does not bar importation of patented article as to constitute the working of patent in India. However, when such importation results in preventing or hindering the working of the product within India, it would be deemed that reasonable requirement of public is not met, which is a separate ground for grant of compulsory license.

It is interesting to note that the as per Para 18.2.6 (4) of Draft Manual of Patent Practice and Procedure, which is scheduled to be brought into force by the Indian Patent Office, an application for grant of compulsory license on ground of non-working will be assessed by reference to the facility available in India for working of such invention. It further states that the importing of patented invention is allowed. However, mere importation without exploring the possibility of manufacturing in India will be a factor in assessing such an application for grant of compulsory license.

In light of above discussion and Para 18.2.6 (4) of Draft Manual of Patent Practice and Procedure, it is safe to conclude that the importation of patented product would satisfy the local working requirement both under the TRIPS and (Indian) Patent Act, 1970. However, the patentee or patent licensee should first ensure that if such patented invention can be manufactured in India. It is only in exceptional cases, that the working is allowed through import and it is an exception and not a rule.

Times Group wins cybersquatting dispute over “indiatimestravel.com”

Holding that M/s Bennett Coleman & Co., the owner of the trademark and logo “Indiatimes” was the rightful holder of the website “indiatimestravel.com” and that the action of the defendant constituted an act of cyber-squatting, Justice V.K. Jain of the Delhi High Court in a recent decision [TIMES INTERNET LTD. v. M/s BELIZE DOMAIN WHOIS SERVICE LTD. & OTHERS] directed the assignment of the domain name to the Bennett Coleman group.

The High Court enunciated the law on this aspect in the following terms;

4. The plaintiff has sought an injunction restraining the defendants from using or squatting from the trademark or domain name “indiatimestravel.com” or operating any business or selling, offering for sale, advertising and/or deal in any manner in service or goods using the trademark/domain name “indiatimestravel.com” or any other identical or deceptively similar name. An injunction has also been sought seeking direction for transfer of the domain name “indiatimestravel.com” to the plaintiff. Damages amounting to `20Lacs have been also sought by the plaintiff from defendants No.1 and 2. It has also sought delivery up of all materials/documents in their possession bearing the mark/name “indiatimestravel.com” or any other deceptively similar mark.

xxx

10. In CS(OS) No.1108/2006, decided on 29th October, 2010, this Court, inter alia, held as under:

“18. A person is well within his right to sell his goods or render services using any trade name for the purpose. With the passage of time the goods sold or the services rendered by him, as the case may be, may acquire certain reputation or goodwill in the market which becomes the property of that person and needs to be protected by the court. It is not permissible for any other person to start selling goods or rendering services either using the same name or imitating that name so as to cause injury to that person and enrich himself at the cost of the person who had already been using that name and had acquired a certain reputation with the passage of time and on account of the quality of the goods sold or services rendered by him. Any attempt on the part of a person to enrich upon the goodwill generated by any other person needs to be curbed by the court whenever approached by the aggrieved party in this regard.

19. Even if the person using or imitating the trade mark or goodwill of another person is yet to commence his business activities his dishonest intention to make use of the mark and name of the other party will be obvious from the very use or imitation of the mark and goodwill of the other person and, therefore, it should not be a defence to say that there has so far been no use of the offending corporate name or mark.” Though the aforesaid observations were made in respect of a registered trade mark, they would equally apply in a case of passing off.

11. In Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 573, the Supreme Court, inter alia, observed that its decisions in the last four decades had clearly laid down that what had to be seen in the case of a passing off action was the similarity between the competing marks and to determine whether there was likelihood of deception or causing confusion.

12. In Satyam Infoway Ltd. vs. Sifynet Solutions Pvt. Ltd. 2004 (28) PTC 566 (SC), the appellant registered several domain names like www.sifynet, www.sifymall.com, www.sifyrealestate.com etc. 'Sify' was a coined word of the appellant which claimed a vital reputation and goodwill in that name. The respondent, at a later dated, started carrying on business of internet marketing under the domain names www.siffynet.net and www.siffynet.com and also obtained registration of these two domain names with Internet Corporation for Assigned Names and Numbers (ICANN). Coming to know of it, the appellant filed a Civil Suit against the responding claiming that the respondent was passing off its business and services by using the appellants" business name and domain name. The City Civil Court Judge allowed the application of the appellant for grant of injunction, noticing that the appellant was the prior user of the trade name "Sify" which had earned good reputation in connection with Internet and computer services and that the respondent domain names were similar to the domain name of the appellant and confusion will be caused in the mind of general public by such deceptive similarity. The High Court, however, set aside the order passed by the City Civil Court. Allowing the appeal, the Supreme Court, inter alia, observed as under:-

“11. The original role of a domain name was no doubt to provide an address for computers on the internet. But the internet has developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for internet communication but also identifies the specific internet site. In the commercial field, each domain name owner provides information/services which are associated with such domain name. Thus a domain name may pertain to provision of services within the meaning of Section 2(z). A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online Internet location. Consequently a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical." As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high.

15. The use of the same or similar domain name may lead to a diversion of users which could result from such users mistakenly accessing one domain name instead of another. This may occur in e-commerce with its rapid progress and instant (and theoretically limitless) accessibility to users and potential customers and particularly so in areas of specific overlap. Ordinary consumers/users seeking to locate the functions available under one domain name may be confused if they accidentally arrived at a different but similar website which offers no such services. Such users could well conclude that the first domain name owner had mis-represented its goods or services through its promotional activities and the first domain owner would thereby lose their custom. It is apparent therefore that a domain name may have all the characteristics of a trademark and could found an action for passing off. 23. As far as India is concerned, there is no legislation which explicitly refers to dispute resolution in connection with domain names. But although the operation of the Trade Marks Act, 1999 itself is not extra territorial and may not allow for adequate protection of domain names, this does not mean that domain names are not to be legally protected to the extent possible under the laws relating to passing off.”

13. The case of the plaintiff is that the mark “Indiatimes” was coined by its predecessor in interest, Bennett Coleman and Company Limited. A perusal of the printout Ex.P-4 shows that this mark was created w.e.f 22nd November, 1996 and its registration as domain name expires on 21st November, 2016. A perusal of the printout Ex.P-9 shows that the domain name “Indiatimestravels.com” was created on 21st July, 2005 and its registration on the domain name was to expire on 21st July, 2008. Thus, not only did the plaintiff create the mark “Indiatimes.com”, it has also been extensively using that mark since much prior to the dated on which the mark “indiatimestravel.com” was got registered by defendant No.1 as a domain name. The word “indiatimes” is an essential feature of the trademark created and being used by the plaintiff and/or its predecessor Bennett and Coleman and Company since 22nd November, 1996. No one else is entitled in law, to use any mark which adopts and incorporates this essential feature of the mark of the plaintiff. It can hardly be disputed that the words “indiatimes” are an essential component of the domain name “indiatimestravel.com” got registered by defendant No.1 with defendant No.2. Defendant No.1 has not come forward to tell the Court as to what prompted it to use a mark, which includes the words “indiatimes” as its essential component and get it registered as a domain name with defendant No.2. Hence, I see no reason to reject the case of the plaintiff that the domain name “indiatimestravel.com” has been got registered by defendant No.1 and is being used by it only with a view to encash upon the reputation and image built around the mark “indiatimes”, coined by predecessor of the plaintiff. The plaintiff has incurred huge expenditure, as detailed in para 6 of the affidavit of Shri C.V. Dhawan, between 1988-89 to 2006-07, on development, designing and maintenance of its portal and the products & services being offered through it. There is a strong possibility of the person, seeking to buy a product or a service on the web portal of the plaintiff getting confused on account of similarity of names in the domain name of the plaintiff-company and the domain name adopted by defendant No.1, on account of use of the word “indiatimes” in both the marks and, therefore, clicking on the web portal of defendant No.1 on the assumption and under a bona fide belief that he was clicking on a website of the plaintiff-company. He may also believe that since the word “indiatimes” has been used as an essential component of the web name adopted by defendant No.1, that web name was also somehow associated with the plaintiff-company and consequently he may click on the web portal of defendant No.1, thereby bringing revenues to it, since mere clicking on the web portal of defendant No.1 generates revenue for that company. The use of the web name “indiatimestravel.com” is, therefore, likely to result in confusion in the mind of web user on account of deceptive similarity in the web name “indiatimes” and “indiatimestravel.com” on account of the words “indiatimes” being an essential feature of both the web names. If the products and services which are advertised on the web portal of defendant No.1 are not as good as the products and services advertised on the web portal of plaintiff-company, considering that the name “indiatimes” has come to be associated with the plaintiff-company on account of its extensive use and the expenses incurred on promoting and building this name, use of the impugned web name by defendant No.1 may also result in lowering the reputation and image of the plaintiff-company amongst the web users. It appears that by using the web name “indiatimestravel.com”, defendant No.1 wants to take undue advantage of the huge expenditure incurred by the plaintiff-company and its predecessor on building and promoting the name “indiatimes”. As noted earlier, defendant No.1 having not chosen not to appear before this Court, there is no escape from the conclusion that the web name got registered by defendant No.1 was got registered by it with an ulterior motive and was not in good faith.

14. When questioned as to how the plaintiff can ensure compliance in case the injunctions, as sought by the plaintiff, is granted to it, the learned counsel for the plaintiff referred to Uniform Domain Name Dispute Resolution Policy of defendant No.2 which, inter alia, provides as under:

“3. Cancellations, Transfers, and Changes. We will cancel, transfer or otherwise make changes to domain name registrations under the following circumstances.

(a) subject to the provisions of paragraphs 8, our receipt of written or appropriate electronic instructions from you or your authorized agent to take such action;

(b) our receipt of an order from a court or arbitral tribunal, in each case of competent jurisdiction, requiring such action; and /or

(c) our receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy or a later version of this Policy adopted by ICANN. (see paragraph 4(i) and (k) below.)

We may also cancel, transfer or otherwise make changes to a domain name registration in accordance with the terms of your Registration Agreement or other legal requirements.”

15. It is, therefore, difficult to dispute the contention of the plaintiff that the domain name adopted and got registered by defendant No.1 being identical to the coined trademark of the plaintiff on account of use of the words “indiatimes” in it, it is a clear case of passing off and defendant No.1 is not entitled to continue using the domain name “indiatimestravel.com”. Since the right to use the words “indiatimes” vests only with the plaintiff, defendant No.2 is obliged to transfer the domain name adopted and got registered with it by defendant No.1 to the plaintiff.

16. Though the plaintiff has also claimed damages, no evidence has been led by it to prove any damage to it and no arguments in respect of this relief were advanced on behalf of the plaintiff.

17. For the reasons given in the preceding paragraphs, the suit is hereby decreed to the extent that defendant No.2 is directed to transfer the domain name “indiatimestravel.com” from defendant No1 to the plaintiff-company within four weeks of the copy of this judgment being served upon it.

Have a look at the decision.