INTRODUCTION
Dear Readers,
"We are pleased to present to you the latest edition of our newsletter covering updates on all things Intellectual Property. With intriguing shifts in the ever-evolving landscape of patents, trade marks, and copyrights, the newsletter traces the dynamic world of Intellectual Property and its fascinating intersections with fashion, tech, and media.
From safeguarding the rights in popular trade marks like Burger King, Blinkit and Theobroma to unravelling the otherwise muffled areas like Standard Essential Patents (SEP), this edition tracks a series of noteworthy decisions taken by various Courts across the world. The High Court of Delhi has been particularly vigilant in protecting future works of owners from copyright infringement by issuing the "Dynamic+" Injunction order in the Universal City Studios LLC case. Simultaneously, it has addressed issues of prior use, transborder reputation and nonuse, leading to vacation of interim injunction in the "E! Now" case. Other intriguing snippets include GI tags for products from various states across India and right of authors to receive royalty from radio channels.
We appreciate your readership and sincerely wish you a fruitful reading!"
CASE ANALYSIS
DOMINO'S PIZZA PROTECTS TRADE MARK IN LANDMARK CASE AGAINST DOMINICK PIZZA
In the case of Domino's IP Holder LLC v. Dominick Pizza,1 the Delhi High Court ("Court") has handed down a decisive ruling in favour of Domino's IP Holder LLC, and its licensee, Jubilant Food Works Limited ("Plaintiffs"), against Dominick Pizza ("Defendant No. 1)" and their Domain Name Registrar ("DRN"), GoDaddy (together hereinafter referred as "Defendants"). The lawsuit revolved around allegations of trade mark infringement and passing off. The Plaintiffs are the custodians of the iconic trade mark "Domino's Pizza".
In a riveting legal saga, the Plaintiffs became aware in January 2020 of Defendant No. 1's adoption of a trade name, which was strikingly similar to "DOMINO'S PIZZA", thereby infringing the Plaintiffs' registered trade marks. Defendant No. 1's failure to attend mediation sessions, in addition to committing the misleading act of pulling down the infringing website only to launch an alternate one, and the failure to discontinue commercial activity on the food ordering platform, Zomato, resultantly compelled the Plaintiffs to pursue legal recourse for trade mark infringement and passing off.
The Plaintiffs sought relief under Section 28(1) of the Trade Marks Act, 1999, which provides protection to registered trade mark owners against infringement. The Plaintiffs argued that Defendant No. 1's use of marks like "CHEESE BURST" and "PASTA ITALIANO", created deceptive similarities and infringed upon their registered trade marks. Emphasizing upon legal precedents, the Plaintiffs underscored the critical importance of meticulously evaluating the pertinent similarities and the likelihood of confusion among the public. Additionally, the Court, in furtherance of Section 29(2) of the Trade Marks Act, relied on the "Pianotist Test" and highlighted that, mere similarity of the two marks and identity or similarity of the goods or services covered thereby would not ipso facto result in infringement. The Court would have to be satisfied that the similarity between the rival marks and the identity/similarity of the goods/services covered thereby results in a likelihood of confusion on the part of the public or the public believing the defendant's mark to be associated to the plaintiff's registered trademark for the similarity to constitute infringement.
Applying the "Pianotist test", which is an objective test premised on the observations of an ordinary person for phonetic similarity, the Court affirmed a likelihood of confusion between "Domino's Pizza" and "Dominick's Pizza." Notably, the Court highlighted the Defendant No. 1's clear intent to imitate, emphasizing the need to curtail such imitative endeavours, especially in the realm of consumable items like food.
The Court, upon considering the documents placed on record and the submissions made, granted a permanent injunction in favour of the Plaintiffs and directed Defendant No. 1 to withdraw its trade mark application and the Defendant No. 2 was directed to transfer their domain names to the Plaintiffs.
COPYRIGHT CONUNDRUM: WYNK MUSIC'S LEGAL TUSSLE WITH TIPS INDUSTRIES
In cross-appeals challenging the decision in Tips Industries Ltd. V. Wynk Music Ltd.2, the Division Bench of the Bombay High Court ("Court"), presided over by Justice G.S. Patel and Gauri Godse, provided a nuanced analysis of the intricate copyright complexities involved in the aforementioned case. The essence of the cross-appeals,3 heard altogether by the Court, centred on Wynk's ("Defendant No. 1") utilization of Tips Industries'("Plaintiff") copyright in music, which Defendant uploaded via their streaming service, resulting in an injunction against them as per the prior judgement.
The Court, in its observations, underscored the crucial role of the Defendant No. 1's non-charitable and subscriber-specific nature in the application of Section 31-D of the Copyright Act, 1957 ("Act"). The Court ruled that the Defendant No. 1's service is not available to the public at large, but only to specific subscribers and thus, the Defendant No. 1 could not claim protection under Section 31-D of the Act. Regarding the preceding interim judgement, the Court acknowledged its authoritative weight in interpreting provisions of the Act surpassing a typical interim order. The Court recognized the Tips Industries case as the sole judicial decision offering a definitive interpretation of sections 14(1)(e), 52(1)(a) (i), 52(1)(b), and 31-D of the Act. The case stemmed from a licensing agreement between the Plaintiff and Defendant No. 1, with the Plaintiff as the copyright holder of an extensive repertoire of sound recordings, and the Defendant No. 1 as the proprietor of an internetbased 'music streaming service' and music downloading OTT facility. The case unfolded against the backdrop of negotiations for a renewed agreement after October 2016. Despite prolonged discussions, the parties reached an impasse regarding the minimum guaranteed amount for the Plaintiff's repertoire. Disputes escalated when the Defendant No. 1 ceased using the Plaintiff's repertoire and the ensuing demand for royalties. To its defence, the Defendant No . 1 invoked Section 31-D of the Act, asserting its rights as a 'broadcaster' despite pending rate determination by the Copyright Board. Despite this, the Defendant No. 1 agreed to partial royalty payments, parking further disputes. The Court delved into the interpretation of Section 31-D, drawing distinctions between traditional FM broadcasts and online streaming services like the Defendant No. 1. It emphasized that the real distinction lies in the user's control over content selection, a feature that is absent in traditional radio but available in online services.
In dissecting the provisions of the Act, the Court underscored the necessity of interpreting Section 31-D in tandem with pertinent rules, notably Rules 29(4) and Rule 31 of the Copyright Rules, 2013. The Court concluded that Section 31-D's limitation to the terms 'radio and television' excluded internet-based services. Regarding commercial rentals, the Court scrutinized the definition of lending and affirmed that the Defendant No. 1's profit-oriented nature rendered it ineligible for non-profit exemptions.
The Bench asserted that the Defendant No . 1's profit motives and lack of public availability disqualified it from obtaining a statutory license under Section 31-D of the Act. Pursuant to this, the Court upheld both the impugned judgement and the order passed by the Single Judge.
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Footnotes
1. The Bench asserted that the Defendant No . 1's profit motives and lack of public availability disqualified it from obtaining a statutory license under Section 31-D of the Act. Pursuant to this, the Court upheld both the impugned judgement and the order passed by the Single Judge.
2. Tips Industries Ltd. v. Wynk Music Ltd, 2019 SCC OnLine Bom 13087.
3. WYNK Ltd. v. TIPS Industries Ltd., 2022 SCC OnLine Bom 11807.
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