Copyright Trademark

‘Sweat of the Brow’ may be of the Past: Reckeweg v. Adven Biotech

On July 1st, 2008, the Delhi High Court through Justice Ravindra Bhat delivered (once again) a fabulous judgment, clarifying the standard to be adopted by Courts in deciding grant of injunctions in trademark infringement and copyright subsistence in a work.

Briefly, the facts of the case are as follows. The Plaintiff, Reckeweg, is a German based homeopathic company and claim to specialize in the ‘R-Series’ line manufactured globally by them and in sold in India since 1980. “The letter “R” is derived from Dr. Reckeweg, the founder promoter of “Dr. Reckeweg & Co. GMBH, Germany and the numerals 1,2,3 and so on indicate specialties of the medicinal formulations of the first Plaintiff.” They claimed to have noticed in June 2007,

Trademark Infringement: A complete duplication of the alpha numeric series and corresponding ailment indicated on the product. The Plaintiffs asserted that replacing the letter ‘R’ by the letter ‘A’ in the alpha-numeric series would not make the same distinctive from the drugs manufactured by the Plaintiffs. Use of the same numeral for curing the same ailment was claimed to be a “calculated attempt to trade upon and cash on the plaintiff’s goodwill.” As proof, the Plaintiffs cited absent entries in the alpha numeric series that they claimed were present in the Defendant’s material as well.

Copyright Violation: a. Copy of substantial portion of the literature/catalogue which gives the unique composition and description of the homeopathic products. Once again, the use of accompanying literature for an ailment of the Plaintiffs by the Defendant was claimed to be an indication of the mala fide intention to use the Plaintiff’s reputation and goodwill. As proof, the Plaintiffs cited several inadvertent mistakes in the literature that they claimed were present in the Defendant’s material as well.

b. The plaintiffs next alleged a copyright violation in the literary works held in the unique compositions of their medicines, since they hold proprietary rights by virtue of registered copyright in such formulations.

To strengthen their case the Plaintiffs relied most importantly on two cases to prove their points of law:

Cadila Health Care v. Cadila Pharmaceuticals When the products are deceptively similar, an injunction must be granted.

Burlington Home Shopping v. Rajneesh Chibber, PTC (15) 1995 279 When a work has been compiled after expending money, time, labour and skill, the same would be a ‘literary work’ in which copyright subsists. Therefore, the compilation of the alpha numeric series, with the particulars of the ailment as well as its cure would be a literary work within the meaning of the Copyright Act.

The Defendant’s however very simply put forth the following:

* Firstly, that an order was passed by the Delhi High Court in January of 2002, [Dr. Reckweg v. Dr. Wellnan Laboratories, 2002 (25) PTC 98(Del)] where there was a refusal to grant an injunction from use by the Defendants of the alphanumeric series ‘WR’. The Defendants asserted that this was because no case of passing off was made in relation to alphanumeric series in question.

* Since under Section 3 of the Patents Act, no process of medical treatment of human beings is patentable, the Plaintiff’s argument as to indirect protection of the formulation of the medicines under the law of copyright is fallacious.

Most importantly, they claimed that the compositions and formulation of the medicines are found in various Homeopathic Pharmocoepia and therefore not exclusive to the Plaintiffs.

* The description of the medicines, ailments, symptoms, and recently changed labels use common parlance and therefore, no copyright can be claimed on them.

* Further, an additional contention put forth was names of common parlance used in conjunction with the alphanumeric series by the Plaintiffs for their various products, which were not copied by the defendant.

The Court upon consideration of all the claims of the parties, in yet another well researched, reasoned and refreshingly clear and comprehensive judgment held:

1. For the grant of an injunction, especially in the case of trademark infringement, the first thing to be established is a prima facie case of likelihood of deception. This may be done if the marks are identical or deceptively similar. The standard to judge the similarity between marks is one laid down in several Supreme Court judgments, is that the marks must be examined ‘as a whole and not in distinct parts’. In the present case, Justice Bhat opined that since the marks of the Defendant’s were dissimilar both visually and phonetically, the average unaware consumer would not be deceived into mistaking the products of the manufacturers.

2. After a comparison with the relevant judgments in various jurisdictions (United Kingdom, US, Canada), followed the standard set by the Supreme Court of Canada in Canadian Ltd., Vs. Law Society of Upper Canada, (2004) SCC 13 and more or less adopted by the Indian Courts in the case of EBC v. DC Modak (readers will remember extensive posts on this by Shamnad and Yasha). The standard set is one that aims to create a balance between the modicum of creativity standard set by the case of Feist v. Rural , 199 US 340 (1991) and the age old Common law doctrine of the “sweat of brow” that was laid down in University of London Press Ltd. Vs. University Tutorial Press Ltd. In effect, the judgment “mandates that not every effort or industry, or expending of skill, results in copyrightable work, but only those which create works that are somewhat different in character, involve some intellectual effort, and involve a certain degree of creativity”.

a. Following, the standard set above, the Court held that no protection of copyright could be granted on the nomenclature of the drugs as the R 1 series, nor the curative element compilations that used “medical and common terminology to convey what problems the medicines would cure” since the same was a mere compilation.

b. Additionally, no copyright was held to subsist in the sequencing of the medicine series in that particular order, since the same was admittedly as per the directions in the German Homeopathic Pharmocoepia and therefore amounted to a derivative work in the sense of being a collection or sequencing of already existing information.

c. The literature of the plaintiff is in fact a compilation of the names, the series of the medicines, its curative elements etc, which, as has been held above are not individually capable of being protected under copyright law. Despite the brochure of the Defendants having the series, the names of the medicines and the curative effects- and having copied some of the mistakes and omissions committed by the plaintiff in their literature, the Court held that no copyright subsisted in the work of the Plaintiffs. Furthermore, the “law does not remedy every act of copying. Therefore, even if it were assumed that the literature of the plaintiffs, considered as a whole and not in parts, were capable of copyright protection”. [This was held in Dr. Recekeweg and Ors v. SM Sharma, 130 (2006) DLT 16 where the copying of individual factors, themselves not capable of copyright protection because of lack of creativity, cannot result in the grant of an injunction].

3. Upon analysis the Court found the formulations of the medicines to be mere information and the description of the medicines to be made in language commonly used within the medical community. The information and description amounting to an idea, as against an expression, no copyright was found to subsist in either.

Analysis: While the judgment more or less follows previously held Supreme Court judgments, it is astute in its analysis. It has clearly highlighted the manner in which there can be a comprehensive comparison with judgments from other jurisdictions- juxtaposing the same in the Indian context.

While the claim as regards infringement of trademark and passing off is simple enough, the judgment does a commendable job in reiterating and clarifying the standard set for copyright to subsist in a work. Effectively, it has insisted on a slightly high standard of creativity by emphasizing that earlier propositions like ‘sweat of the brow’ are doctrines of the past and do not have any significant relevance in the present. By moving to a slightly higher standard of creativity, this judgment, like EBC v. Modak has ensured that Indian copyright law is evolving with the times.

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