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Battleground IP

By Nandan Pendsey
Posted: 23rd November 2011 10:31

The last couple of years have witnessed a tremendous growth in IP litigations in India.  This may have been prompted by several factors inter alia the enhanced awareness of the importance of intellectual property assets, fierce competition in the marketplace and the high stakes involved and the Courts in India becoming increasingly IP savvy, just to name a few.  The year 2011 has been no different which has already seen a variety of high profile decisions with far reaching consequences and with a lot of firsts. In this article, I will be focusing on some of the important IP decisions so far in this year. 

The first such case is the Tea Board, India v. ITC Limited(1) in which the Kolkata High Court for the first time in India, dealt with the precise scope of a geographical indication (‘GI’) registration.  ‘Darjeeling Tea’, Tea Board India’s (‘TBI’) GI, was the first GI to be registered in India.  TBI had also obtained a certification trademark registration (‘CTR’) for the mark ‘Darjeeling’ in class 30 tea.  TBI objected to ITC Limited (‘ITC’) naming a section of its ITC Sonar Hotel in Kolkata as the ‘Darjeeling Lounge’, alleging that the adoption of the word ‘Darjeeling’ amounted to unfair use, infringement of TBI’s GI and CTR, as well as passing-off and dilution.  The Kolkata High Court, dismissing the application of TBI, held that TBI did not get any exclusivity over the term “Darjeeling” by virtue of its GI registration or the CTR.  The Court further held that the GI registration of TBI was only in relation to goods while the defendant’s use of the term “Darjeeling” was in relation to services. Moreover, the Court also held that there was no passing off as the defendant’s use of “Darjeeling Lounge” had no nexus to the goods in respect of which TBI had obtained the GI and the CTR.  Although the decision seems to be correct and the plaintiff in this instant was unable to get a relief in this case, the Kolkata High Court has specifically observed that the GI Act may not specifically preclude cross category complaints (i.e. services allegedly infringing the GI registration obtained in respect of goods). Therefore, it will be interesting to see how Courts decide such disputes in future. 

In Gorbatschow Wodka Kg v. John Distilleries Limited(2), the Bombay High Court recognized the statutory protection afforded to ‘shape’ as a trade mark and upheld the rights of a trademark owner in the shape of a bottle.  The plaintiff, Gorbatschow Wodka KG, filed a suit for passing off against the defendant alleging that the defendant had invaded its intellectual property rights in the distinctive shape (onion dome) of its vodka bottle by adopting a deceptive variation of the same.  The Plaintiff had also filed for a trademark application to protect the distinctive shape of the bottle which application was pending before the Trade Marks Registry in India.  The defendant inter alia contended bona fide adoption, lack of intention to deceive and no likelihood of confusion.  The defendant also asserted that it had obtained a design registration for the shape of the bottle from the Designs Registry in India.  The Bombay High Court while granting injunction held that prima facie the shape of the bottle adopted by the defendant was strikingly similar to that of the plaintiff.  The Court further held that the fact that the defendant had obtained a design registration does not impinge the right of the plaintiff to move an action for passing off.

In Tata Sons Limited v. Greenpeace International and Anr(3), a case highlighting conflict between the right to freedom of speech and expression on one hand and trademark rights and corporate image on the other, Tata Sons (“Tata”) filed a suit for defamation, trademark tarnishment and infringement against Greenpeace International.  The right to freedom of speech and expression and parody won out over trademark rights and corporate image.  The Delhi High Court in refused to grant an interim injunction to Tata Sons against Greenpeace’s use of the Tata logo. Greenpeace India (‘Greenpeace’) had launched ‘Turtle vs Tata’ game (which was a parody of the famous pacman game) in 2010 to raise awareness of the danger to the Dhamra Port in Orissa (co-developed by TATA Steel and L&T) posed to the olive ridley turtles. Tata’s main arguments revolved around trademark dilution by way of tarnishment, defamation and damage to the reputation of the Tatas. Greenpeace rebutted the same claiming that the present suit was a SLAPP Suit intended to suppress freedom of speech and expression. Greenpeace further argued that the use of the TATA trademark with the ‘T’ device did not amount to trademark infringement because the use was non-commercial in nature and was used for the purpose of criticism.  Relying on numerous foreign case laws on this point, the Delhi High Court held that an injunction in favor of Tatas would effectually freeze public debate on the issue and hence dismissed the application for interim injunction.

In yet another first case of its kind, the Delhi High Court in the case of Super Cassettes Industries Ltd. v. Myspace Inc. & Another(4), dealt with the issue of intermediary liability for copyright infringement in India.  The Delhi High Court held that there is no safe harbor for intermediaries for copyright infringement in India.  The plaintiff in this suit had contended that the defendants were guilty of primary infringement as the defendants were communicating and disseminating copyrighted works of the plaintiff to the public and were providing a platform to the users for upload infringing content.  The plaintiff also contended that the defendant had knowledge of such infringement as the defendant was placing advertisements alongside the infringing content.  One of the arguments relied upon by the defendant was that the defendant was an ‘intermediary’ under the Information Technology Act, 2000 (“IT Act”) and therefore could not be held liable for copyright infringement committed by third parties, relying on the ‘safe harbor’ provisions under Section 79 of the IT Act. The Delhi High Court in holding the defendant liable for copyright infringement held that the IT Act does not protect intermediaries against copyright infringement claims as the non-obstante clause in Section 81 of the IT Act acts as a proviso to Section 79 and has an overriding effect.  This case is in stark contrast to certain other international decisions on this issue. It also remains unclear as to why the Parliament has carved out specific exceptions under Section 81 of the IT Act only for copyright and patent infringement and not for trademark infringement for instance or other tortious wrongs.  Under the present law, an ‘intermediary’ is eligible to claim ‘safe harbor’ for defamation but not for copyright infringement.  This decision will have a substantial impact on intermediaries and will unduly expose intermediaries to copyright infringement liability on the Internet. 


Nandan Pendsey is currently a Senior Associate in the Intellectual Property Team at AZB & Partners , one of the most prominent Indian law firms. He earned his B.S.L. LL.B Degree at the prestigious ILS Law College, Pune in 2001 and further earned his Masters Degree (LL.M) in Intellectual Property from the  Franklin Pierce Law Center, New Hampshire, USA in 2003. Mr. Pendsey is also a Registered Patent Agent with a technical background in Biotechnology. 

The focal areas of his practice Intellectual Property transactions and licensing, IP litigation and enforcement and patent and trademark prosecution and advisory. Mr. Pendsey also regularly provides advice on regulatory issues arising in relation to drugs, cosmetics, medical devices and clinical trials. He also has extensive knowledge in the areas of information technology, data privacy, outsourcing, cyber law, registration, protection and enforcement of domain names, and other internet related issues including jurisdictional and enforcement issues and  ISP liability.  Nandan can be contacted on +9122 6639 6880 or by email at 

(1) GA No. 3137 of 2010, C.S. No. 250 of 2010

(2) Notice of Motion No. 3463 of 2010 in Suit No. 3046 of 2010.

(3) MANU/DE/0220/2011: I.A.No. 9089/2010 in C.S. (O.S.) No. 1407 / 2010

(4) IA No. 15781/2008 and IA No. 3085/2009 in CS (OS) No. 2682/2008


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