Infringement case studies in India

1. Bayer Corporation v. Union of India: In a very significant development, the

Delhi High Court held that ‘export’ of a patented invention for experimental
purposes is also covered under Section 107A of the Patents Act, 1970
(India’s Bolar exemption) and thus does not amount to patent infringement.
It accordingly allowed Natco to export Bayer’s patented drug ‘Sorafenib
Tosylate’ (for which it was granted a compulsory license in 2012) to China
for the purpose of conducting development/ clinical studies and trials.
However, two months later, the order was stayed by a Division Bench which
asked Natco to file a separate application seeking permission for exporting
the drug for experimental purposes and observed that it would be permitted
to export only a limited quantity of the drug.
2. Patel Field Marshal Agencies Ltd. v. PM Diesels Ltd. & Ors. : In a
landmark decision, the Supreme Court conclusively settled an extremely
important issue that whether, upon the institution of a suit for infringement
under the Trademarks Act, the remedies for rectification of a trademark
under Sections 47 and 57 (before the IPAB) are still available to the litigant,
in case the plea of validity has been abandoned by the relevant litigant. The
Supreme Court took note of the conflicting decisions of the various High
Courts, and found that where the question of validity has not been taken up
by the court, the statutory authority has the power to decide a rectification
claim by the litigant. However, in a case where the court comes to a prima
facie conclusion on validity, the only remedy available is an appeal.
3. Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd. : In a
notable development for Indian trademark law, the Supreme Court reiterated
that IP rights are “territorial” and not “global”. The court refused to grant an
injunction restraining the defendant from using its registered trademark
‘Prius’ even though Toyota was a prior user of the mark. It reasoned that
even though Toyota’s mark was well-known outside India, Toyota failed to
prove that it enjoyed a reputation in the ‘Indian’ market at the relevant point
of time i.e. the year 2001 when the defendant began using the mark in India.
4. Kent RO Systems Ltd. & Anr. v. Amit Kotak & Ors : In a welcome
development, the Delhi Court ruled that there is no obligation on the
 intermediaries to screen content alleged to be violative of intellectual
property laws before publishing the same (i.e. on an ex-ante basis). It,
therefore, refused to direct E-bay to remove listings of water purifiers that
allegedly infringed Kent RO’s registered design from its website or to issue
a prohibitory injunction preventing E-bay from publishing the same in the
future.
5. Thiagarajan Kumararaja v. M/s Capital Film Works and Anr. : The
judgment filled up some of the void in the jurisprudence relating to the inter-
play between the rights of the producer of a cinematographic film and that of
the authors of underlying works. The Madras High Court, deciding on the
question whether dubbing of a film into another language would fall foul of
the rights of the scriptwriter, held that the producers have the right to replace
the sound recording of the original film with a different language. The Court
based its finding on an expansive reading of the phrase ‘communication to
the public’ under Section 2(ff) and observed that ‘dubbing’ would fall under
the said definition. The Court also observed that dubbing is distinct from
translation, and the producer’s rights to communicate the film to the public,
through dubbing, does not affect the rights of the author of the underlying
script. Nevertheless, on the question of whether the right to communicate a
film to the public includes the right to remake the film entirely, the Court
answered the same in the negative as it felt that this would entail making
changes to the underlying script, without the author’s consent.
6. Neetu Singh v. Rajiv Saumitra : The judgment shed light into the relatively
unchartered territory of Section 17 (c) of the Copyright Act and clarified that
when the ownership of copyright is disputed between an employer and an
employee, it is the terms of employment that have to be looked into. The
Court went on to even clarify what is to be looked into to determine the
terms of employment. For instance, in the case of a Director, it is any
subsisting agreement, or the Articles of Association or the Memorandum of
Association of the company. Relying on this principle, the Court held that in
the instant case although the Plaintiff was working as a Director of the
Defendant No. 2 company from 2012 to 2014, it noted that the Defendants
had failed to prove that the literary work was authored as part of her duties
and obligations as a Director and granted an injunction in favour of the
Plaintiff.
7. Anil Kapoor Film Co. Pvt. Ltd. v. Make My Day Entertainment & Anr. – In
a very well-reasoned interim order, the Bombay High Court refused to grant
an ad-interim injunction in a claim of passing off by the makers of the film
‘Veere Ki Wedding’ (under production) against the makers of the film
‘Veere Di Wedding’ (then soon to be released). The court noted that not
only was the title (“Veere Di Wedding” translating into “My best friend’s
wedding”) extremely common, the plaintiff needed to prove reputation
through consumer recognition – i.e. the title should be associated with the
public mind as referring only to the plaintiff’s work, which according to
it was next to impossible in this case because the movie was not even in
existence. It also rejected the argument on misrepresentation, clarifying that
just by virtue of having a made a film with a similar title, the defendant
cannot be said to have attempted to deceive the public.