1. COMPETITION - McCarthy Tétrault

The GI Act provides for registration of a Geographical Indication and the
authorized user thereof who is able to bring an action based on the
registration.
Registration of a Geographical Indication entitles the registered proprietor
and authorized users to the exclusive right to the use of the Geographical
Indication in relation to the goods in respect of which Geographical
Indication is registered, the right to obtain relief in respect of the
infringement of the Geographical Indication. Two or more authorized users
of a registered Geographical Indication have co-equal rights.
The registration of Geographical Indication is valid for a period of ten
years, and may be renewed thereafter for further periods of ten years. The
registration of an authorized user is valid for the earlier of ten years or on
the date when registration of Geographical Indication, with respect to
which the authorized user is registered, expires.
The GI Act prohibits assignment, transmission, licensing, pledge,
mortgage, or any such other agreement with respect to a Geographical
Indication. The Act also provides for infringement and passing off actions,
thus recognizing the common law right in a Geographical Indication, and
includes civil as well as criminal remedies. Infringement has been defined
to include unfair competition. Available remedies in a civil suit include an
injunction, discovery of documents, damages or accounts of profits,
delivering-up of the infringing labels, and indications for destruction or
erasure.
For more information please contact: vaibhav@nishithdesai.com
INDIA
SUPREME COURT CLEARS
TELECAST OF KARISHMA
Originally scheduled to be launched on 12th May 2003, Rupees One
Billion, mega-serial Karishma: The Miracle of Destiny (the "Karishma") was
telecast on Sahara Manoranjan after a 105-day delay on 25th August
2003.
Sahara Media Entertainment Ltd.'s (the "Sahara") 12th May launch of
Karishma was brought to an unexpected halt just four days before its
telecast. On 7th May 2003 - in a suit in which best selling romance novelist
Barbara Taylor Bradford alleged copyright infringement of her book "A
Woman of Substance" (© 1979) - the Single Judge Bench of the Calcutta
High Court issued an ex-parte injunction order prohibiting the telecast of
Karishma. The allegation of copyright infringement was based on an
alleged statement by the film's producer, made during an interview, that
Karishma was inspired by "A Woman of Substance."
On Monday, 12th May 2003, flurries of appeals were brought. The Single
Judge Bench refused Sahara's application for vacating the injunction. On
the same day, on appeal by Sahara, the Division Bench of the High Court
allowed the telecast of Karishma. Later that day, on Bradford's appeal, the
Vacation Bench of the Supreme Court stayed the airing of Karishma by an
ex-parte order. In the next hearing, the Supreme Court stayed the
proceedings that had been brought before the High Court and restrained
airing of Karishma until a decision was made as to Bradford's Petition. On
19th May 2003, the Supreme Court remanded the matter to the Single
Judge Bench of the High Court.
Thereafter, in the High Court, Sahara contended that Karishma was based
on a work entitled "parajita," by Sachin Bhaumick. Furthermore, he said
that, apart from the rags-to-riches theme, there was no similarity between
Karishma and Bradford's novel, and that only substantial similarity of
thought, sequence, and expression could be termed as infringement and
not mere similarity in idea, concept, or central theme.
On 30th June 2003, the Single Judge Bench vacated the injunction granted
on 7th May 2003, with a direction to begin the telecast on 7th July 2003.
Bradford promptly challenged this order before the Division Bench, which
ruled to extend the injunction until further hearings could take place, and
directed Bradford to submit a copy of her book.
Sahara submitted to the Division Bench that one of its business rivals was
instrumental in filing suit against Karishma. Producer Akashdeep Sabir's
counsel contested that during an interview his client had stated that the plot
of Karishma had been copied from Bradford's book.
On 21st July 2003, after considering the evidence, the Division Bench
permitted the telecast of Karishma: A Miracle Of Destiny, dismissed
Bradford's appeal, and refused to grant a stay of operation on its order as
prayed for by Bradford. The Division Bench observed that the interview
conducted by Pammi Somal shows, by its internal evidence, that
Akashdeep Sabir, had not read the book by Bradford. Rather, in the
interview Sabir had admitted to borrowing only the plot and some
characters. Therefore, the Division Bench observed, "Copyright
infringement cannot be established on this alone. No prima facie case has
been made. Infringement can be established only by comparing and
showing similarity of details, events, situations, expressions of language,
and imagination. Learned leading Counsel of both sides had not even read
the book. How can infringement be established when even the book had
not been read" (RG Anand v/s Deluxe Films, decided by the Supreme
Court was relied upon). The Division Bench also observed the balance of
convenience and considered Sahara's contention that they had spent over
Rupees One Billion and taken Rupees One Hundred and Ten Million from
advertisers. The Division Bench observed "plaintiffs will hardly suffer any
loss of value of their book; if an injunction is obtained after 15/20 episodes
(assuming there is going to be an infringement), the plaintiffs will get
practically their full relief, and the respondents will be in almost equal
problems as not starting at all. The balance of convenience heavily favors
the respondents." The Division Bench further observed that Bradford's
interlocutory application was premature. Bradford was ordered to pay
heavy costs to Sahara.
If after watching Karishma, Bradford can in fact establish infringement, it
appears from the order of Division Bench that she is free to move the High
Court once again to pray for an injunction. The Division Bench observed
that "If 15-20 episodes are shown, then details of similarity can be
established; the plaintiffs might, "have a prima facie case then; they have
none now."
On 21st July 2003, Bradford moved the Supreme Court challenging the
High Court order. On 4th August 2003, the Supreme Court dismissed
Bradford's Petition, but set aside the order imposing heavy costs and
damages on her.
Perhaps the tortuous destiny of Karishma might have been curtailed if the
two stories had been read sooner to determine whether there was in fact a
copyright infringement.
In suits based on copyright infringement, rival works should be examined at
the earliest possible opportunity to ascertain whether a prima facie case for
infringement is established. Since copyright exists in the expression of an
idea and not in the idea itself, close comparison of "expression" is
necessary to ascertain whether at least a prima facie case is made out.
Balance of convenience and comparative hardship are also factors to be
taken into consideration while granting or refusing interim injunction.
In India, where civil litigation can take approximately 10 to 12 years to be
final, the fate of parties in intellectual property infringement matters is
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