Year in review 2020: intellectual property law

ITC Ltd v. Nestle India Limited: Intriguing Insights on Intellectual Property Law

  • The plaintiff (ITC Limited) is a multinational Indian company established in 1910. In 2010, ITC began offering noodles in two flavours, ‘Classic Masala’ and ‘Magic Masala’, under the name of ‘Sunfeast Yippee’.
  • The defendant (Nestle) is a multinational Swiss corporation set up in 1866. Under the name ‘Maggi’, Nestle introduced noodles for sale in India in 1983. In the pack of Maggi’s ‘Xtradelicious Magical Masala’ Nestle added the tagline in 2013.
  • The plaintiff (ITC Limited) has subsequently filed an action against the defendant (Nestle India Limited) for “passing off”, restraining the respondent from the mark ‘Magical Masala’ and any other mark identical to the mark ‘Magic Masala’.
  • The complainant alleged that the label ‘Magic Masala’ had been used since 2010 in noodles and claimed damages of more than ten lakh rupees.
  • The counsel of the plaintiff argued that the word ‘Magic Masala’ was associated with ‘Sunfeast Yippee’, so it would effectively be “passing off” by the defendant. They alleged that the defendant’s action will generate uncertainty in people’s minds that such a commodity is part of ITC Limited and ‘Sunfeast Yippee’.
  • The High Court in Madras eventually disposed of the suit seven years later and held that the case was not permitted. The Court made certain pertinent observations and clarifications in this matter.
  • It was held that the word ‘Magic Masala’ did not define the flavor because a flavor called ‘Magic’ did not exist. Instead, ITC was using the term ‘Magic Masala’ to laud Masala on the bag. This made it a laudatory word that could not be monopolized. Both terms were thus common to the packaged food industry and could not be attributed to a specific dealer.
  • Trademark Law requires the owner to assert exclusive rights only when a word has gained a secondary significance that “identifies it with a specific product”. In this case, however, the court held that the word ‘Magic Masala’ has been used to assist the customer to ‘discern the flavor’, and was not intended as a brand or sub-brand.
  • This case had a significant impact on the perception of what constitutes “passing off”, and made clear the limits of use of generic terms in the industry such that business may be promoted and commercial advertising through commonly laudatory terms and adjectives is carried on unhindered.


Examining the Copyright : Sameer Wadekar & Anr. v. Netflix Entertainment Services Pvt. Ltd & Ors.

  • The plaintiff (Sameer Wadekar), a writer, filed a suit in early May 2020, claiming copyrights on the story of the web series ‘Betaal’, against the defendants (Netflix, the writer, producer, and director of ‘Betaal’). The series had been created for the purpose of exclusive telecast on the online platform operated by the defendant.
  • The plaintiff claimed to have come to know of a trailer video of the upcoming web series ‘Betaal’, having encountered it on YouTube. The plaintiff alleged that the series was a copy of his original unpublished work in literature, ‘Vetaal’. Wadekar claimed infringement of the registered copyright of this unpublished work, and claimed the trailer video to have displayed a minimum of 13 similarities to his own work which had been registered under the Copyright Act, 1957, in 2015.
  • It was argued by the defendants’ counsels that the similarities pointed out by Wadekar happened to be mere generic concepts, and stressed on the apparent lack of any copyrightable elements.
  • The court, upon having heard the matter through videoconferencing, held that his mere claim of having shared work with a person who had contacts who worked at Netflix, was insufficient in order to grant an interim injunction and stay the release of ‘Betaal’. The court further referenced Hindu mythology wherein the folklore of “Vetalam” can be said to be the origin of the name ‘Betaal’.
  • Due to insufficient proof of copyright infringement, and delay in seeking remedy by the plaintiff, the interim injunction was denied. This judgement reinforced the importance of proving infringement of copyright, and what would constitute sufficient proof for such an infringement.


Examining the Geographical Indications of Goods (Registration and Protection) (Amendment) Rules, 2020

  • The Geographical Indications of Goods (Registration and Protection) Amendment rules, 2020 was brought about on 28th August 2020, through a notification by the Ministry of Commerce and Industries.
  • The amended rules include the requirement for application for authorised user registration to be made by the producer through Form GI-3, in addition to the requirement for a statement of the case establishing the claim of the applicant as the producer of the concerned registered Geographical Indication; as opposed to the previous rule which stated that the application for authorised users was to be made jointly by the registered proprietor as well as the proposed authorised user.
  • Another important change was made to the application fee as authorised user, under Form GI-3A, which has been reduced to Rs. 10 from Rs. 500. Further, the renewal fee for the authorised user has been reduced to Rs. 10 from Rs. 1000. Moroever, Entry 3B in Schedule I has been deleted, thus cancelling the fees charged for the issuance of certificates.
  • There is a reasonable possibility that the authorised user registrations for GI will increase due to amendment to Rule 56. Further, as opposed to the waiting period previously prevalent for obtainment of no objection certificates from the registered proprietor to receive authorised user certificate; the amendment effectively reduces delays and increases efficiency of the procedure. The amendment has the potential to bolster the intellectual property law framework in India, and make it more lucid, inclusive and accommodating.


Super Cassettes Industries Private Limited and Ors. v. Nandi Chinni Kumar and Ors.

  • The plaintiff (Super Cassettes), a music record label and film production company, claimed that the defendant, a gangster turned football player, through an agreement, had given the film rights of his life story for a certain sum of money, following which the film script was registered  with the title ‘Slum Soccer’, with the Telengana Cinema Wrietrs’ Association.
  • However, soon after, the film titled ‘Jhund’ came to the knowledge of the plaintiff, which was based on the life story of the second defendant, the defendant’s coach. The story included that of the defendant. The plaintiff accordingly proceeded to inform the defendants that the shooting of the film, if continued, will result in copyright infringement.
  • The plaintiff claimed to own the thought, concept, characterisation, imagery, identity, and expression, apart from copyright, with regards to the true life story events of the defendant, thus resulting in the actions of the defendants to constitute copyright infringement. The plaintiff sought a perpetual injunction against the defendants restraining them from broadcasting or exhibiting the movie in all theatres in India as well as abroad.
  • The defendants contended that no case had been made out, and further, despite the possibility of making a film on the coach excluding the player, it would significantly impact the film’s marketability and result in greater risk in reduction of commercial value due to inclusion of a celebrity figure.
  • The Telengana High Court, in this respect, observed that the teaser of the films displayed distinct similarities in plot, depiction, life and story. Thus, the court held that there was a strong prima facie case of copyright infringement against the defendants, and granted an interim injunction accordingly.
  • This case raises interesting questions pertaining to the interplay of intellectual property rights and a life story rights agreement. In light of the various biopics being produced in Indian as well as international film industries, this case holds relevance, and highlights the need to clarify the extent and limits to which the intellectual property rights pertaining to a person’s true life story, may be transferred for consideration.


Insights from Interdigital Technology Corporation & Ors. v. Xiaomi Corporation & Ors.

  • The plaintiff (Interdigital Technology) filed a suit against the defendant (Xiaomi), claiming infringement of a patent through utilisation of Standard Essential Patents pertaining to 3G and 4G technologies, without taking license from the plaintiff.
  • An interim injunction was issued by the Delhi High Court, against the order of a Wuhan Court pertaining to an Anti-Suit Injunction Application filed by Xiaomi prohibiting Interdigital from . It was held that the order of the Wuhan Court must not come in the way of patent rights with respect to Indian patents, which can only be enforced by Indian courts.
  • An Anti-Suit Injunction had been granted by the Wuhan Court in a case for settling of royalty rates favouring Xiaomi in restraining Interdigital from instituting proceedings in respect of patent infringement with respect to Standard Essential Patents that form a part of the Wuhan case.
  • The Delhi High Court observed, in addition to granting an ad interim injunction, that the Wuhan court does not possess the jurisdiction to prohibit infringement suits in India, and that the respective proceedings are significantly different from one another. The court held that municipal law, public policy and justice, take precedence over Comity principles, in respect of foreign judgements.
  • Thus, in respect of patent infringement, the case clarified the position of law on the jurisdiction of the courts in the international context, and potentially highlights the need for international framework pertaining to jurisdiction of foreign courts in matters concerning patent infringement.