Beruar & Beruar recognized as one of the top 5 Copyright Firms in India for the year 2018 by Asia IP Awards
Beruar & Beruar has been recognized as one of the top five copyright firms in India by the 9th Annual Asia IP Awards for the year 2018. The shortlisting by Asia IP was compiled based on client experiences, peer reviews as well as survey submissions and the views of their own editorial team.

With this distinctive nomination in the Firm’s first year itself, we would like to take this opportunity to express our gratitude towards our clients, colleagues and friends for their continued trust in the team of Beruar & Beruar and our services.
Beruar & Beruar welcomes back co-founder and partner, Ms. Nidhi Jain
We are pleased to welcome Nidhi back after maternity leave. Congratulations on her healthy little bundle of joy!

Nidhi is a co-founder and leads the firm’s dispute resolution practice, advising clients on a wide range of contentious matters including general corporate and commercial litigation, property and estate law, company law, intellectual property rights, banking, white collar crimes, labour law, constitutional and administrative law, environmental law, criminal constitutional as well as freedom of speech related issues.
Christian Louboutin SAS v. Nakul Bajaj & Ors., CS(Comm) No. 344 of 2018, Delhi
High Court
Deciding on the liability of e-commerce platforms in a dispute for trademark infringement, the Hon’ble Delhi High Court has, in Christian Louboutin sas vs Nakul Bajaj and Ors., examined the scope and applicability of the exemption granted to intermediaries under the Information Technology Act, 2000 (hereinafter ‘IT Act’) and held that in cases of active participation of e- commerce platforms in the trade, the said platforms shall not qualify as an intermediary and could not benefit from the exemption under the IT Act.

The Plaintiff, Christian Louboutin SAS, owner of a luxury shoe brand, had filed an infringement suit against the defendants, operating a website,, offering various products of the Plaintiff for sale. Plaintiff’s products are allowed to be sold only through an authorized network of distributors globally (two of which are in India), and thus argued that the Defendants’ actions of selling the Plaintiff’s products on their impugned website without any authorization/permission from the Plaintiff as well as displaying the entire catalogue of the Plaintiff’s products and the picture and write-ups of the Plaintiff’s founder and using the names “Christian” and “Louboutin” as meta-tags to attract traffic to their website amounted to infringement of the Plaintiff’s trademarks, violation of personality rights of its founder, Mr. Louboutin and also caused dissolution of the luxury status enjoyed by the Plaintiff and its brands.

Defendants, on the other hand, argued that they were not selling the goods but merely enabling the customers to place orders through their online platform (website). Defendants contended that since the orders were fulfilled by third-party sellers from across the globe, the Defendants could not be held liable for the seller’s actions and were entitled to immunity under Section 79 of the IT Act.

The Hon’ble Court, however, examined the scope of exemption from liability granted to an intermediary under the Section 79 of the IT Act, as well as the international legal position on intermediary liability particularly with reference to e-commerce websites and identified that knowledge as well as extent of active participation in the trade of the website owners are crucial parameters for assessing liability. The Hon’ble Court further observed that while the safe-harbor provisions/exemptions for intermediaries are to promote genuine businesses which operate
purely as intermediaries, the obligations of due diligence placed on the intermediary as well as the requirement of compliance with the intermediary guidelines [Information Technology (Intermediary Guidelines) Rules, 2011], clearly indicates that e-commerce platforms which actively conspire, abet or aide, or induce commission of unlawful acts on their website cannot go scot free. The Hon’ble Court, thus, held that merely claiming oneself to be an intermediary will not automatically render e-commerce platforms eligible for exemption from liability.

Accordingly, after evaluating the various policies, warranties and disclaimers present on the defendants’ website, including the fact that the said website was a “members only” website with a non-refundable membership of INR 2000, the Hon’ble Court observed that the defendants were not mere intermediaries, but in-fact had an active involvement in the trade. Therefore, while decreeing the suit in favour of the Plaintiff, the Hon’ble Court directed the defendants to remove all the meta-tags consisting of the Plaintiff’s trademarks, disclose the list of all the sellers operating through its website, obtain a certificate from all its sellers that the goods are genuine and in case of overseas sellers, to notify the Plaintiff as well as to secure permission prior to offering for sale any such products on its website inter alia.

Star India Private Limited v. Department of Industrial Policy and Promotion & Ors,
Civil Appeal Nos. 7326-7327 of 2018, Supreme Court

The Hon’ble Supreme Court of India, in an appeal filed by Star India Private Limited, along with other broadcasters (hereinafter ‘Broadcasters’), upheld the validity of the recent regulations and tariff orders made under the Telecommunication Regulation Authority of India Act, 1997 (hereinafter ‘TRAI Act’) which allegedly had the effect of regulating pricing and terms and conditions of licensing of TV channels, including their packaging and bundling.

The Broadcasters had challenged the validity of certain clauses of the Telecommunication (Broadcasting and Cable) Services Interconnection (Addressable Systems) Regulations, 2017 (hereinafter the Regulation) and the Telecommunication (Broadcasting and Cable) Services (Eighth) (Addressable Systems) Tariff Order 2017 (hereinafter the Tariff Order) made under the TRAI Act on the ground of being outside the scope of Telecom Regulatory Authority of India (hereinafter TRAI)’s jurisdiction as defined under the TRAI Act and foraying into the matters governed by the Copyright Act, 1957 (hereinafter the ‘Copyright Act’). The Broadcasters argued that the impugned clauses of the Regulation and Tariff Order, including those fixing the maximum retail price for each TV channel, had the effect of regulating pricing and terms and conditions of licensing of TV channels, including their packaging, bundling and other manner of offering the said channels and their underlying programs and therefore, violated the broadcasters’ rights under the Copyright Act.

The Broadcasters relied upon the amendments made to the TRAI Act in the year 2000, Central Government’s notification dated 9.01.2004 as well as the definition of telecommunication under the TRAI Act, to contend that the TRAI Act was carriage-centric and thus, limited to regulation of services in transmission of signals alone and does not extend to or include the subject matter or content of the transmission; and in-fact, it was the Copyright Act, that, being content-centric, dealt with the broadcasters’ intellectual property rights, both in the form of copyright as well as broadcast reproduction right inter alia. The Broadcasters, thus, submitted that the tariff which related to content could only be governed by the Copyright Act and not by the TRAI Act, whereas only the transmission and delivery of signals to consumers, i.e. carriage, was under TRAI’s jurisdiction. Accordingly, the Broadcasters submitted that both the Copyright Act as well as TRAI Act, being passed by Parliament, should be harmonized, and such harmony could only
be maintained if TRAI was restrained from encroaching upon the domain covered by the Copyright Act.

Respondents, on the other hand, argued that the impugned Regulation and the Tariff Order did not interfere with the content that could be transmitted by the broadcasters, but only regulated the manner of such transmission. Respondents further submitted that the TRAI Act was conceived in public interest, in order to protect the interest of both service providers (including the broadcasters) as well as the customers and also relied upon the consultations between all stakeholders and consumers which led up to the impugned Regulation, balancing the interests of broadcasters and consumers. Respondents argued that Regulation essentially required the broadcasters to offer TV channels on a non-discriminatory basis and therefore, the only reason for including pricing of bundles/channels in the impugned clauses was to ensure compliance of the said requirement. Accordingly, the Regulation and the Tariff Order, when read as-a-whole, would in fact, not impact the content at all but regulate the transmission/carriage of signals only.

The Hon’ble Supreme Court of India, after considering the submissions made by both the sides, held that both the Acts operated in different fields and impugned Regulation and the Tariff Order did not transgress into the field of Copyright Act as even after the restrictions imposed under the Regulation, the broadcasters were free to provide whatever content they chose on the TV channels, for which they transmit the signals to the ultimate consumer. The Hon’ble Court observed that while copyright is meant to protect the proprietary interests of the owner (in the present case, broadcaster) in the work i.e. the original work, its broadcast and/or its re-broadcast, TRAI, while exercising its regulatory functions under the TRAI Act, looks into the interest of both the broadcaster and subscriber so as to provide a level playing field. Further, addressing the Broadcasters’ argument of the impugned Regulation and Tariff Order impinging upon compensation payable for copyright to the broadcasters, the Hon’ble Court clarified that, in case on conflict, the two statutes must be harmonized in such a way that the TRAI Act, being conceived in public interest and which serves the interest of both broadcasters and consumers, must prevail to the extent of any inconsistency over the Copyright Act, which protects the property rights of the broadcasters.

N.V Distilleries Pvt Ltd v. Frost Falcon Distilleries Ltd, CS(Comm) No. 1170 of 2018,
Delhi High Court
The Hon’ble Delhi High Court, in the matter of N.V Distilleries Pvt Ltd v. Frost Falcon Distilleries Ltd, clarified the law on territorial jurisdiction under Section 20(a) of the Civil Procedure Code 1908 (hereinafter ‘CPC’), allowing the Plaintiff to institute the suit at the place of Defendant’s registered office, despite the Defendant having a sub-ordinate office at the distinct place of accrual of cause of action.

Plaintiff, N.V. Distilleries Pvt Ltd, owner of the trademark ‘CRAZY ROMEO’ for alcoholic beverages, had filed a suit against the Defendant, selling its products under the infringing mark ‘CRAZY RIDER’ in Haryana, seeking permanent injunction restraining infringement of trademark, copyright and passing off inter alia. Plaintiff had invoked the territorial jurisdiction of Delhi High Court under Section 20 of the CPC, pleading that the defendant has its registered office in Delhi and while, the Defendant had as on date of filing the suit, not sold its products in Delhi, there was a reasonable apprehension that the Defendant will soon be launching its products under the impugned mark in Delhi. Defendant, however, filed an application for rejection of plaint on the ground of lack of territorial jurisdiction, arguing that , in view of the explanation to Section 20 of CPC, the suit could have been filed only at Haryana and not at Delhi since the cause of action accrued in Haryana and the Defendant, owning to having a factory in Sonipat, Haryana has a subordinate office at Haryana. Defendant relied upon the decision of the Hon’ble Supreme Court in Patel Roadways Ltd., Bombay v. Prasad Trading Company, (1991) 2 SCC 270 in support of its interpretation of the explanation to Section 20 of CPC.

Section 20(a) of the CPC provides for institution of a suit in the Court within the local limits of whose jurisdiction “the defendant……… actually and voluntarily resides, or carries on business, or personally works for gain”, while Section 20(c) provides for institution of a suit in the Court within the local limits of whose jurisdiction “the cause of action, wholly or in part, arises.” The explanation to Section 20, however states that “A corporation shall be deemed to carry on business at its sole or principal office in India or, in respect of any cause of action arising at any place where it has also a subordinate office, at such place.

The Hon’ble Court, while dismissing the defendant’s said application, noted that reliance placed by the Defendant on Patel Roadways was misplaced. The Hon’ble Delhi High Court clarified that while the Hon’ble Supreme Court had in Patel Roadways held that ‘where a corporation has subordinate office in the place where the cause of action arises, it cannot be heard to say that it
cannot be sued there because it does not carry on business at that place
’, the said judgment was concerned only with the alternative “carries on business” of the several alternatives in Section 20(a) and therefore, the said judgment could not be read to bar the option given by the legislature to a Plaintiff, under Section 20(a) of the CPC to sue a Defendant at a place where actually and voluntary resides. The Hon’ble Court further noted that since it is well established that the residence of a company is where its registered office is located, the Defendant in the instant case, having its registered office in Delhi could be sued in Delhi.
ITC Limited vs. Arora Offset Printers and Ors., CS(Comm) No. 1512 of 2016, Delhi
High Court
Delhi High Court in the matter of ITC Limited v. Arora Offset Printers & Ors while confirming the interim injunction against the Defendants, relied upon the Defendants’ conduct of discontinuing the business of relevant goods under any mark/packaging whatsoever, post the ex- parte injunction order restraining them from using the impugned marks, to hold that the Defendants were in-fact riding on the goodwill of the Plaintiff to sell their products under the impugned marks/packaging and also determined the balance of convenience in favour of the Plaintiff.

The Plaintiff, ITC Limited, registered proprietor of trademark “MANGALDEEP” in relation to pooja dhoop and other cognate goods, had instituted a suit seeking permanent injunction to restrain the Defendants from using identical/deceptively similar trademarks/trade dress/labels/packaging, including “SHUBH MANGALAM DHOOP”, “SHUBH MANGALAM DEEP” inter alia in respect of same or similar goods. When the suit first came for hearing before the Hon’ble Court, the Plaintiff was denied the relief of ex-parte order of injunction as well as issuance of commissions. However, in the appeal instituted by Plaintiff against the said order of learned Single Judge, the Division Bench of Hon’ble Delhi High Court was pleased to grant an ex-parte interim injunction against the Defendants and also issued commissions as requested by the Plaintiff. The Hon’ble Court, subsequently disposed off the appeal directing continuance of the interim injunction until disposal of the application of interim injunction in the original suit.

Accordingly, the learned Single Judge while deciding the application for interim injunction in the original suit, noted that the Defendants had failed to urge any new fact, which was not considered by the Division Bench while granting the ex-parte order and therefore, there was no reason for this Hon’ble Court to alter the interim injunction granted by the Division Bench. Additionally, the Hon’ble Court observed that the fact that the Defendants did not deem it fit or profitable to carry on the business without the impugned packaging or the impugned mark after the grant of ex-parte injunction by the Division Bench in 2016, showed the Defendants’ inability to sell their product under any other non-deceptive packaging and consequent dependency on the goodwill and reputation of the Plaintiff’s trademark. The Hon’ble Court further noted that since the Defendants were admittedly not in business for nearly the last two years, whereas, the Plaintiff was continuously in business, the balance of convenience also favored the Plaintiff against the Defendants. The Hon’ble Court, therefore, confirmed the interim injunction order granted by the Division Bench to continue till the disposal of the instant suit.

This newsletter is intended for general information and education purposes only and the material content herein does not constitute legal or other professional advice. If you wish to learn more about the information published herein or unsubscribe to this newsletter, kindly write to or Beruar & Beruar, D-155, Third floor, Defence Colony, New Delhi 110024.
Beruar & Beruar LLP
D-155, Third Floor, Defence Colony, New Delhi - 110 024 | T: +91 11 41079789, 41556787 | E:
© Beruar & Beruar, 2018