Scope of Re-examination under Indian Evidence Act

With increasing trend of appointment of Court commissioners to overlook witness examinations, lawyers are required to be more vigilant during depositions. Earlier, if any question beyond the scope of re-examination was put to a witness, the Judge would generally not permit such question to be asked, notwithstanding a lack of objection from the opposing party. While reading a commissioner’s report, such a fact may not strike the Judge at all. If an objection to the question by the opposing party has not reflected in the report, rejecting such portion of the deposition may slip the Judge’s mind entirely and that portion of the evidence may remain on record till the proceedings are disposed of. Thus, it is essential to properly understand the scope of re-examination of witness.

SC: Limitation Not a Preliminary Issue under Section 9A (Per Incuriam?)

Section 9A which was inserted by a State Amendment to the Code of Civil Procedure, 1908 provides that when at the hearing of application relating to interim relief in a suit, objection to jurisdiction is taken, such issue to be decided by the court as a preliminary issue and the court must first proceed to determine the issue of jurisdiction as a preliminary issue before granting for setting aside the order granting the interim relief.

Till date, the Judges of the Civil Courts in Maharashtra would entertain even issues of limitation in section 9A applications. However, the Hon’ble Supreme Court has recently held in Kamalakar Eknath Salunkhe vs. Baburav Vishnu Javalkar & Ors. (Civil Appeal No. 1085 of 2015) that the word ‘jurisdiction’ used in section 9A did not include issues of limitation. However, the judgement has received some criticism, even from the Judges of the Supreme Court itself.

Specific Performance of Agreement for Sale - Leave under clause XII of Letters Patent

The Hon’ble Bombay High Court has held in Annete Bulchandani vs Mrs. Iris Fernandes & Ors that a suit for specific performance of an agreement for sale of land situated outside the jurisdiction of the Hon’ble Bombay High Court will be maintainable in the Court, after seeking leave under Clause 12 of the Letters Patent, even if the proposed Plaintiff has alternatively  prayed for setting aside sale of the land to a subsequent transferee. Judgment  can be found here. 

Judgement on ‘Honest Concurrent Use’ (Bombay High Court: [ITM Trust & Ors. vs Educate India Society])

Full text of the Bombay High Court Judgement can be found here.

For Plaintiffs: Mr. Aspi Chinoy, Senior Advocate a/w Ms.  Chandana Salgaoncar, Aditya Thakkar i/b Vigil Juris.

For Defendant: Mr. Arvind Chaudhary, i/b Amol Deshpande.

Coram                                                 : G.S.Patel, J.

Judgment Reserved on                       : 16th July 2014

Judgment Pronounced on                   : 15th September 2014

Brief Facts:

The Plaintiffs consisted of a public charitable and educational trust registered under the Bombay Public Trusts Act, 1950 and its trustees. Till 1991, the Plaintiffs trade mark was "INSTITUTE FOR TECHNOLOGY & MANAGEMENT" in a certain curved/spherical form around a circular device along with another device of a shield at the middle. The Plaintiffs claimed that the trademark was in use since 1993. In June 2010, the Plaintiffs filed an application for registration of the mark "ITM-University" in Class 41, on the pretext that it was in continuous and uninterrupted use since 2002.

Should Indian Lawyers be Allowed to Work on Contingency Basis – Sample Draft Contingency Fee Agreement Format

The Bar Council of India prohibits advocates from charging fees to their clients contingent on the results of litigation or pay a percentage or share of the claims awarded by the Court. Bar Council of India Rules: Part VI, Chapter II, Section II, Rule 20 which reads as under:

“20. An advocate shall not stipulate for a fee contingent on the results of litigation or agree to share the proceeds thereof.” (Rules can be read here.)

Many have the misconception that the reason why lawyers do not work on a contingency basis is

Trade Mark Dilution

Traditionally to prevent someone from using a trademark, one had to claim that it was causing confusion with an already existing mark. i.e. the ‘misrepresentation’ claim. However, now days even the Trademark dilution view is given merit. Trademark dilution is a claim which the owner of a famous trademark can make to forbid others from using a mark that reduces the value or distinctiveness of the famous mark.

Imagine if there was a watch being sold with the trademark ‘PEPSI’ or mineral water with the mark ‘ROLEX’. Now, there would obviously be no confusion that the mineral water was  not associated with the ‘ROLEX’ brand of watches. But if people start ROLEX mineral water, ROLEX restaurants, ROLEX publishers then the distinctive value of ROLEX brand will diminish. The exclusiveness and excellence of the brand will be associated with all the other good or services using the trademark ‘ROLEX’.

It is believed that it was the case V Secret Catalogue Inc v. Moseley, 54 U.S.P.Q.2d 1092 (The Victoria’s Secret Case) which made the U.S. Government feel the need for a Trademark Dilution legislation, which gave rise to Trademark Dilution Revision Act (TDRA) of 2006, several provisions of the EU Trademark Harmonization Directive of 2008 and

The Enercon Patent Case

History: A  Share Holder Agreement (SHA) allotted 56% shareholding of Enercon India to Enercon GmBH, while the remaining 44% went to the Mehra Group. Enercon GmBH filed a petition before the Company Law Board in the year 2007 alleging that the Mehra Group, was guilty of systematic concealment state of affairs of the company, financial mismanagement, non-payment of royalties etc.. Enercon GmBH therefore wanted the CLB to issue directions for the transfer of the remaining 44% to Enercon GmBH. The Board of the company was controlled by the Mehra Group despite the fact that Enercon GmBH had a majority share-holding Enercon India, started filing revocation petitions against Dr. Wobben’s patents. Once the company was rid of the patents it would have no IPR rights to assert in India.

IPAB: Dr. Aloy Wobbens claimed in a misc. petition that the attorney who had signed the revocation petitions was not authorized to do so because of earlier CLB orders. The IPAB after hearing the issue had dismissed Dr. Aloy's claims and continued to consider revocation petitions

Madras High Court: After an appeal the Madras High Court agreed with the IPAB's orders. In its order the Court also stated: "The Tribunal is requested to take up the Original Revocation Application along with the miscellaneous petition and hear and dispose of the same preferably within a period of three months from the date of receipt of a copy of this order". The Madras High Court's Judgment can be found here 

Delhi High Court:  Dr. Wobben appealed before Delhi High Court. The Delhi High Court had heard extensive arguments on the point of jurisdiction from both Dr. Wobben and Enercon India Ltd. before reserving the matters for judgment. However, before the Court could deliver judgment, Dr. Wobben had for unclear reasons filed withdrawal application in each of the three appeals.

Justice Gita Mittal

Justice Gita Mittal gave the judgement,  "However, it cannot be denied that valuable judicial time has been expended on hearing prolonged arguments on the respondents" preliminary objection which were raised at the first instance with regard to maintainability of the three writ petitions before this court. The prayer of the respondents for award of costs appears to be justified".

The plaintiff would have to pay costs of Rs. 50,000 each, to Enercon India Ltd. and the Government of India in each of the 3 appeals filed by him i.e. Rs. 1 lakh an appeal. The case continued till January 2010 when it was dismissed because of claiming similar remedies to those being sought by the IPAB. Delhi High Court's Judgment can be found here

Current: Among the nine patents that have are under consideration in the IPAB, Dr. Aloy himself admitted in European Courts that two of the patents were invalid. The European Court's Judgments can be found here. Dr. Wobbin had submitted to the IPAB some amendments to the patents. As per Section 31 of the Evidence Act, 1872 although certain admissions may not be conclusive they will still stop the person from changing his stance later. Therefore the amendments were rejected and both patents have been revoked.

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- Vikrant Shetty

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Recent Important IPR Judgments

(Also see the article on The Importance of IPR in the Business World)

·         Yahoo Inc. v. The Assistant Controller of Patents & Designs, & rediff.com india ltd.

Original Appeal No.: OA/22/2010/PT/CH/9507

Yahoo! logo

An invention 'Buck' which an be used to refine searches on the internet was denied patent because of section 3 (k) of Patent Act which states that business methods are not patentable. The specifications given in the application described its economic significance in e-commerce and therefore it was considered as a business method. Secondly, Rediff had used abovesaid method but Controller held that use of invention on internet amounts to public knowledge & prior use. The case was dismissed.

·         UMG Recordings In. MGB NA LLC LLC MBG UK v. Shelter Capital Partners LLC LP LLC

U.S. 9^th Circuit

Veoh had a network on which videos can be shared. They had taken precautions against copyright infringement. To upload one had to register and accept to abide with terms of PTC agreement and agree not to upload videos that infringe copyright. Over 60,000 videos including some of UMG's had been removed. On receiving notices the videos were removed immediately. However, in 2007 UMG filed a case against Veoh for facilitating infringement. (Also see the Napster case)

 Held: Merely hosting a category of copyrightable content, such as music videos, with the general knowledge that it can be used for infringement is insufficient to meet requirements of 'abetting infringement'

·         L'oreal v. Dushyant Shah

L'oreal paris trademark with
Scarlett Johansson in background

CS (OS) 600 OF 2007,  Delhi High Court

Section 134 (2) was given wider scope so that 'carries on business' refers to even a subsidiary office of the plaintiff that carries on business unlike the construction of 'carries on business' in Section 20 of CPC. Plaintiff's 'L'OREAL' trademark was held to be structurally and phonetically similar to 'TORREAL'/'INSTITUTE TORREAL' which is proposed to be used on similar products. Therefore, Defendant restrained from using similar marks with no order as to costs

·         St.Stephen's College v. St. Stephen's College Alumni Association & Ors.

CS(OS) 2364/2011, Delhi High Court

Former students of St. Stephen's college exercised fundamental right Art. 19(1)(c)i.e. freedom to form association and started 'St. Stephen's College Alumni Association'. Plaintiff claims it to e passing off since it is not an official or college approved association. The Defendants were restrained from using the official crest on their website, using the domain name 'http://ststephensalumni.Companyin.' and using the name 'St. Stephen's College Alumni Association'. They are entitled to use the name 'association of old Stephens' provided they display a disclaimer that it is not official/approved/recognized association of the college.



Labels: infringement, IPR, Jan 2012, l'oreal torreal trademark, latest Indian Intellectual Property Cases, rediff, st. stephen's college alumni website case, UMG Recordings, yahoo patent buck patentable,