Thursday, 8 March 2018

CONFIDENTIAL INFORMATION

Introduction:

In a free market economy, where competition is fierce, every businessman looks forward to outwit his rival. This he may do by capturing more market or eliminating his rivals from the market, if necessary.

Therefore, businessmen are very careful and impart their business or trade related confidential information to only some responsible employees for the purpose of business. In other words, the access to such information is restricted.

The concept of confidence arises from trust in a relationship* between two or more persons. The person who receives the confidential information is under an obligation to protect the information and not to use it for purposes other than those for which such information was first imparted. A confidence is thus regarded as a legal obligation enforceable by law.

*Relationships of trust wherein an obligation of confidence to others arise are: Employees to their employers, consultants to their clients, and doctors to their patients, advocates to their clients.

Jurisdictional Bases of the Law of Confidence

The jurisdictional bases of the action of breach of confidence can be classified into the following categories: [ Prince Albert v. Strange (1849]

Contract
The obligation to protect confidential information may be incorporated in a contract either in express or implied terms. The express contractual obligation with respect to the confidential information makes the recipient of the information liable, if he breaches his obligations. The implied term may be considered to exist if a plain reading of the contract & its circumstances lead one to conclude that but for the contract, such information would never have been revealed. (However, courts may disregard unreasonable conditions imposed by the confider on the recipient of the information)

Property
In law, confidential information is not treated as property. If at all the word property has been used in some judicial decisions it is merely aimed to reflect the confider’s rights in contract & equity.

Tort
Since confidential information is an intangible property, jurisdiction under tort may be invoked. Relying upon tort, the confider can take action against third-party who wrongfully acquires his information in prejudice to his benefits. The jurisdiction under the law of tort may also be invoked when it appears that the third party has induced the receiver of the information to breach his contractual obligations with respect to the confidence.

Equity
(In law, the term "equity" refers to a particular set of remedies and associated procedures involved with civil law. These equitable doctrines and procedures are distinguished from "legal" ones. A court will typically award equitable remedies when a legal remedy is insufficient or inadequate.)

The jurisdiction on the basis of contractual obligation cannot be invoked against a third party because according to the principle of Privity of Contract, the confider cannot take action against a stranger to the contract who obtains the confidential information from a contracting party. To deal with such situations, equity comes in to provide justice to the parties who deserve it.

Equity may be used independently of any legal right. A party may avail those remedies to which he is not entitled under other jurisdictional sources at least in three situations:

1.     When no contractual relationship exists, the user of confidential information may be held liable by equity for the misuse or unauthorised disclosure of the information.
2.     Equity plays a distinct and concurrent basis for remedies despite the fact that there exists a contractual obligation.
3.     When the recipient of information conveys the information to a third party who is not cognizant of the breach of confidence at the time of the reception but later becomes aware that what he has received is confidential information.

The law of confidence is based on the broad principle of equity that he who receives information in confidence should not take unfair advantage of it by using it to the prejudice of the person who imparts it. [Saltman Engineering Co. Ltd. v. Campbell Engineering Co. Ltd. (1948)]

TRADE SECRET

According to World Intellectual Property Organization (WIPO):

A trade secret is information of any type that is actually or potentially valuable to its owner and not generally known or readily ascertainable by the public, and which the owner has made a reasonable effort to keep secret. A trade secret generally has come cost associated with its development, and it is not common knowledge in the industry. Even negative information, such as research options that have been explored and found worthless can be a trade secret. Practically any type of technical and business information can be protected as a trade secret provided that it meets these requirements.

·      Trade secret is confidential information of a business or enterprise.
·      A trade secret is any information that can be used in the operation of a business or other enterprise and that is sufficiently valuable to afford an actual or potential economic advantage over others. 
·      Trade secret must not be something which is public property or public knowledge.

It is perfectly possible to have confidential document, be it a formula, a plan, a sketch or something of that kind, which is the result of work done by the maker upon materials which may be available for the use of anybody…. What makes it confidential is the fact that the maker of the document has used his brain and thus produced a result which can only be produced by somebody who goes through the same process.

·      The owner of trade secret should take every precaution to keep it secret.
·      The information which is in public domain, voluntarily revealed, insufficiently guarded, or reverse engineered may not be protectable.

Kinds of Trade Secrets

1.    Technical Secrets: which are related to manufacture or improvements of quality of goods or conduct of services and which include secret process for manufacturing specific products, the secret formulae or the design of the product, know-how etc.;
2.     Business Secrets: which are administrative and strategic in nature and developed internally, such as cost and pricing data, sales statistics, lists of customers and suppliers, market predictions, expansion plans etc.
Examples:
Designs, drawings, architectural plans, blueprints and maps; data compilations such as list of customers; algorithms and processes that are implemented in computer programs and the programs themselves; instructional methods; manufacturing or repair processes, techniques and know-how; document tracking processes; formulae for producing products; business strategies, business plans, methods of doing business, marketing plans; financial information; personnel records; schedules; manuals; information about research and development activities; etc.

Know How:
Know-how is required or developed by a person in the course of research and development activities or through the application of industrial and business techniques in the operations of the enterprise. It is, therefore, data or knowledge resulting from experience and skills and can be identified in terms of relevant documentation. E.g. Diagrams of the layout of the plant, drawings or blueprints of machines, manuals or instructions prepared by the operation of machines or the assembly of components, specifications of raw material, labour and machine time calculations, packaging and storing instructions etc.

Factors to consider the nature of trade secret
The following six factors may be considered to determine whether information owned by an enterprise is a trade secret. These are:
1.     The extent to which the information is known outside the enterprise;
2.     The extent to which the information is known by employees and others involved in the enterprise;
3.     The extent of measures taken by the enterprise to guard the secrecy of the information;
4.     The value of the information to the enterprise and to competitors;
5.     The expenditures incurred by the enterprise in terms of time, money and efforts in developing the information; and
6.     Ease or difficulty with which the information could be properly acquired or duplicated by others.

Conditions for an Action for Breach of Confidence:
In an action for breach of confidence following conditions must be established; [Coco v. A. N. Clark (Engineers) Ltd. (1969)]
1.     Information in dispute must be confidential and not a public knowledge.
·      The test to protect the confidentiality is inaccessibility. If it is found that information is not a deliberately kept within limited circle, it may lose confidentiality.
·      Publication of information may result in loss of confidentiality if information has been distributed widely. On the other hand, if by publication of information it is made available to limited recipients, it may still be considered confidential.
·      Confidential information may be imparted in different ways. It may be imparted in tangible form e.g. drawings, graphs, diagrams, photographs, equipments, printed lists of agents or suppliers or customers etc. or communicated orally*. *[Seager v. Copydex (No. 1) (1967)]
The information, therefore, can be held confidential regardless of its form.
2.     Recipient of information under obligation to respect confidentiality.
There must be an express or implied obligation on the recipient of information to respect the confidentiality of information. In other words, information should have been imparted to its receiver in circumstances imposing an obligation of confidence on him. In this context, obligation of employee is worth discussing:
·      Obligation of Employee
·      Employer-employee relationship plays an important role to protect confidential information from disclosure. An employee is under an obligation to respect confidentiality of information. He must observe his ‘duty of fidelity’ while he remains in employment. This duty of fidelity embraces the protection of confidential information which is given to him and which he generates in the course of his work. Therefore, an employee is under an obligation not to engage in competitive work, either with another person or on his own.
·      The problem arises when an employee accepts a new job leaving the former one. He carries confidential information of his former employer. The former employer, therefore, seeks to restrain his ex-employee from disclosing or using his confidential information for the benefits of others. [Burlington Home Shopping(P)  Ltd. v. Rajnish Chibber (1995), Diljeet Titus Advocate & Others v. Alfred A. Adebare & Others (2006), American Express Bank Ltd., v. Priya Puri (2006) & Tractors & Farm Equipment Ltd. v. Green Field Farm Equipments Pvt. Ltd. & Others (2006)]

3.     Unauthorised use of confidential information:
To bring an action for breach of confidence it is essential to establish that the recipient of the information is made or is about to make an unauthorised use or disclosure of that information. In other words the recipient of information breaches the obligation to using it in a manner other than for which it was imported.

Confidential information and copyright:
Copyright subsists in expression of idea and not in ideas per se. Howsoever valuable the idea may be, if it is not expressed in a material form, it is not protectable under the copyright law. However, the law of confidence extends the protection of those subject matters which are not predictable and copyright law  provided the information was given in confidence and the recipient was put under an obligation to protect it.  These subject matters include ideas, schemes, plots, etc. [Zee Telefilms Ltd. v. Sundial Communications Pvt. Ltd. (2003) & Urmi Juvekar Chiang v. Global Broadcast News Ltd. (2008)]

Confidential Information and Patent:
·      Patent means a statutory grant of the exclusive right to a person to exploit is invention for 20 years from the date of application. The patentee, however, is put under an obligation to describe his invention in the specification with such clarity and completeness of all the technical details that any one having ordinary skill in the art should be able to carry out the invention.
·      In an unpatented invention, the whole process of invention is kept secret. An inventor may, therefore, prefer not to get his invention patented in order to avoid disclosure of his invention. But at the same time, he is running the risk of his invention relating secrets being leaked. Therefore, inventors often secure patents for their central inventions, while much that is learned in the process of bringing it into commercial production, popularly known as ‘know-how’ is kept secret, which is predictable under the law of confidence.

Remedies:

1.     Injunction
Being an equitable remedy injunction is discretionary and the decision to grant an injunction is influenced by several factors.
The list of factors militating against an injunction may include:
·      The fact that the defendant was copying only subconsciously for some reason innocently:
·      The gratuitous manner of the plaintiff’s communication;
·      The fact that he was not himself utilizing the idea but was rather pursuing an alternative in collaboration with another producer;
·      The extent of the defendant's own contribution to the design of a successful product;
·      Whether the information was economic or personal;
·      The relatively mundane or subsidiary character of what was taken;
·      The fact that the information had become public;
·      Possibly even the patentable nature of the idea - thus requiring the plaintiff who wants a full right of property to apply for a patent.

2.     Damages
Where the information has been disclosed or used in some way in breach of confidence and such breach of confidence is also breach of contract or a general tort, court will award damages in accordance with normal principles applying to these common law wrongs. The courts while laying down the formulae for determination of damages stated that the value of confidential information depends on its nature.  The formulae are:
a.     The damages would be equivalent to the fee of consultant if there was nothing really special about the information and it could have been obtained by employing a competent consultant; and
b.     That the damages would be equivalent to the price, which a willing buyer would pay for the information if the information was something special and involves an inventive step.
c.      In some cases the courts decided that payment of damages in the form of royalties would be an adequate remedy.

3.     Account of profits
The remedy of a account of profits is available to the plaintiffs where the information has been exploited commercially by the defendant in breach of confidence. The remedy of account of profits is not available in addition to damages. It is an alternate remedy and is discretionary. [Peter Pan Manufacturing Cop. v. Corsets Silhouette Ltd. (1963)]

4.     Delivery up or destruction
The court may order the defendant to deliver the articles or destroy them in which the defendant had used the confidential information of the plaintiff in breach of confidence. This is also an equitable remedy and therefore discretionary.

Cases:
1.     Prince Albert v Strange was a court decision made by the High Court of Chancery in 1849, and began the development of confidence law in England. The court awarded Prince Albert an injunction, restraining Strange from publishing a catalogue describing Prince Albert’s etchings. Lord Cottenham LC (Charles Pepys, 1st Earl of Cottenham) noted that "this case by no means depends solely upon the question of property, for a breach of trust, confidence, or contract, would [sic] of itself entitle the plaintiff to an injunction".
Summary:
Both Queen Victoria and Prince Albert sketched as a hobby. Sometimes they showed them to friends or gave them away. Strange obtained some of these sketches from a person named Brown and scheduled a public viewing of these. He also published a catalog listing these sketches. Prince Albert filed a suit for the return of the sketches and a surrender of the catalog for destruction. His plea was granted.

2.     Saltman Engineering Co. Ltd. v. Campbell Engineering Co. Ltd (1948)
Lord Greene observed that the defendants "dispensed in certain material respects with the necessity of going through the process which had been gone through in compiling [drawings of a product] … thereby saving themselves a great deal of labour and calculation and careful draftsman ship".
 That is, the defendants in that case relied upon the work carried out by the plaintiff (including the time, effort and expense involved in carrying out that work) to more quickly develop and manufacture their own product. Such reliance, in effect, allowed the defendants to "springboard" to a better position than they would have been if they independently developed that product themselves without reference to the plaintiff's drawings.
Summary:
The plaintiffs gave designs to the defendants in order that they could make leather-working tools for the plaintiffs. The defendants used the drawings to make tools, which they sold on their own behalf. This was a breach of confidence, as they knew that the drawings had been given to them solely for the purpose of making the tools for the plaintiff.

3.     Coco v. A. N. Clark (Engineers) Ltd. (1969)
Justice Megarry held, “In my judgment, three elements are normally required if, apart from contract, a case of breach of confidence is to succeed. First, the information must itself … have the necessary quality of confidence about it. Secondly, that information must have been imparted in circumstances importing an obligation of confidence. Thirdly, there must be an unauthorised use of that information to the detriment of the party communicating it.”
Summary:
Coco was developing a motor-assisted cycle or moped. He entered into negotiations with AN Clark to develop the moped and provided information to A.N. Clark about his moped. After some time, A.N. Clark elected to not further develop the Coco moped and instead began to develop its own moped. Coco became suspicious that A.N. Clark was using some of his designs for the new moped. He therefore applied for an injunction to stop A.N. Clark making or sell any moped using his confidential information. A.N. Clark had just released its moped on the market while Coco had stopped developing his moped.
Had Coco established a strong prima facie case that the information was confidential or that there had been a breach of confidence? Should an injunction be awarded to prevent the making and selling of the moped?
It was ruled that Coco had failed to establish that the similarities between the two mopeds were achieved by the use of information provided by him to A.N. Clark. Also an injunction was not appropriate as the evidence for the case had not been properly tested and Coco had not developed his own moped and therefore it did not need protection from the sale of the rival moped.

4.     Seager v. Copydex (No. 1) (1967)
“Confidential information does not have to be in a particular form and may be communicated orally and a breach may still be actionable.”
Summary:
Mr. Seager had invented a patented carpet grip which he manufactured and marketed under the trademark Klent. There were protracted negotiations between Mr. Seager and Copydex over a proposal for Copydex to market the Klent. One of the issues in the negotiations was the price at which Mr. Seager was to supply the product. During a meeting with two representatives of Copydex Mr. Seager disclosed to them an alternative design of grip which could be produced more cheaply. Although there was a dispute as to precisely what had been disclosed at the meeting, there was no dispute that the disclosure was in confidence The defendants had manufactured a carpet grip, honestly and unconsciously making use of that confidential information. The alternative design was not covered by Mr. Seager’s patent.

5.     Burlington Home Shopping (P) Ltd. v. Rajnish Chibber (1995)
This is a landmark case, which laid to rest the confusion whether a database consisting of a compilation of addresses developed by any one by devoting time, money, labour and skill, though the sources may be commonly situated, amounts to a `literary work' wherein the author has a copyright.
Summary:
Burlington Home Shopping (plaintiff) was a mail order service company engaged in the business of publishing various mail order catalogues of several consumer items. These were posted to the select list of plaintiff's clients. The plaintiff maintained a compilation of a list of his customers in a self-created database. It was developed over a period of 3 years whereby the plaintiff invested substantial amount of money and time for its creation.
Mr. Rajnish Chibber (defendant) was an employee previously working for the plaintiff. However, his duties had nothing to do with the compilation of the database. It so happened that after leaving the plaintiff's establishment, he became the latter's competitor by entering into a mail order shopping business. While at the time of his association with the plaintiff previously he managed to get a copy of the latter's database. Now after the commencement of his own business he started making use of the said database for establishing relationship with the plaintiff's customers.
The plaintiff contended that the database was an original literary work wherein he enjoyed the copyright over the same and that the defendant had infringed his copyright by his act.  Accordingly a suit was filed by the plaintiff in the Delhi High Court seeking an injunction thereby restraining the defendant from make use of the said database for carrying out his business. The defendant contended that the said database was not developed by the plaintiff and as a result of which the latter enjoyed no copyrights over the same. Further he stated that he had developed his own database and the act of using it for his business would never amount to any kind of infringement of the plaintiff's copyright.
In order to gather the relevant evidence the court appointed a Commissioner. He made a comparison of both the databases and found that a substantial number of entries on the defendant's database were comparable word by word, line by line and even space by space to that of the plaintiff’s. In some of the entries the locations of commas and full stop were also comparable. In a good number of entries spelling mistakes occurring in the plaintiff's data were found in the data compilation of the defendant as well. Hence, the court was satisfied that the defendant had infringed the plaintiff’s copyright.

6.     Diljeet Titus Advocate & Others v. Alfred A. Adebare & Others (2006)
“As an advocate or a law firm develops its work and relationship with other law firms or clients, the details about the particular persons in such law firms handling certain nature of work or as to which officer in a client company is material for getting the work becomes of great importance. Such a list is of great importance to an advocate or a law firm. The mere fact that defendants would have done work for such clients while being associated with the plaintiff would not give them the right to reproduce the list and take it away,” wrote Justice Kaul in his judgment.
Summary:
Titus and Co. was set up in Delhi in 1997 when its founder Diljeet Titus left Singhania and Co. along with two other Singhania lawyers, Seema Ahluwalia Jhingan and Alfred A. Adebare.
Seven years later, when Jhingan, Adebare and two other Titus lawyers, Alishan Naqvee and Dimpy Mohanty, left Titus to set up LexCounsel, Titus filed a criminal complaint against them under the Information Technology Act, 2000, for alleged data theft.
Titus alleged that the four were criminally liable for stealing “various proprietary drafts of precedents, agreements, forms, presentation, petitions, confidential documents, legal opinions, legal action plans, computerized database containing client information, proprietary client list, proprietary potential client list and other related information” from a computer in his law firm’s office.
According to the judgment in the case: “Just a couple of days before leaving [Titus], [Adebare] is stated to have visited the office of [Titus] after office hours and requested the security guard to allow him to enter the office on the pretext of downloading some information from the computer for a project handled by him. The guard had no reason not to permit [Adebare] to enter [Titus’] office, who brought a CD-Writer with him and connected the same to the computer in [Titus’] office, which was inter connected with [Titus’] Local Area Network (LAN) with Windows Server having 7.2 GB of data. Thus, all the confidential information was copied using the CD-Writer.”
The four LexCounsel founders in turn filed a counter claim against Titus in the Delhi high court, challenging his copyright to the allegedly stolen data, based on the ground that, as partners and not employees of Titus and Co., they had as much propriety over the data as Titus. They also filed an anticipatory bail petition and were granted bail by the Delhi high court on a personal bond of Rs.1,00,000 and a surety of Rs.1,00,000 each.
Delhi high court judge Sanjay Kishan Kaul, on 8 May 2006, restrained Jhingan, Adebare, Naqvee and Mohanty from using Titus’ data for their own benefit or disseminating or exploiting it in any other way.
Kaul ruled that they were not partners in Titus and Co. but were employees of the firm, getting their salaries as a fixed percentage of clients’ fees, having had no written partnership arrangement with Titus, maintaining time sheets in the name of the firm and not in their own name, and going through no legal separation of assets at the time of exiting from the firm.

7.     American Express Bank Ltd., v. Priya Puri (2006)
The court held that “trade secrets are acquired over a period of time and are the formulae, technical know-how or a peculiar mode or method of business adopted by an employer which is unknown to others….” In the above case, the defendant had acquired all the information and data during her course of employment. Trade secrets do not cover the knowledge which is attained through daily operations of the business. The court further stated that the defendant couldn’t be prohibited from changing her job as it helps in overall development.
Summary:
The defendant was given the responsibility of supervising the Wealth Management Division of the plaintiff (the employers) and was required to act in accordance with the code of conduct for all employees. The defendant was not allowed to engage in activities, which conflicted with the plaintiff’s interest. Additionally, during the defendant’s course of employment, all confidential information, like customer records and information, was to be protected from the society and the competitors. The defendant gave her resignation letter to the Director of the Wealth Management Department. It was soon discovered that the defendant was in the process of joining a competitor firm. It was also found that the defendant had taken advantage of her position and had acquired a comprehensive list of all customer information and investment related data. The plaintiff, being a reputed bank, filed a suit for injunction against the defendant restricting her not to release any confidential information and trade secrets related to the transactions as they have a duty of confidentiality to their customers. It was contended by the plaintiff’s that even though the confidential information is not in any document, it existed in the mind of the defendant. Hence, this existent, intangible threat was sufficient enough to prevent her from disclosing it.
On the other hand, the defendant asserted that customer details like their phone numbers and addresses cannot come under the ambit of confidential information or trade secrets. The reason being that the same were common knowledge and could be easily accessed as they were in the public domain.

8.     Tractors & Farm Equipment Ltd. v. Green Field Farm Equipments Pvt. Ltd. & Others (2006)
The picture that emerges from the above case law is that the court shall entertain injunction only if the same is protected either through Copyright or Designs along with a non-disclosure agreement.
Summary
The applicant/plaintiff, M/s Tractors and Farm Equipment Ltd   (TAFE) manufactured   tractors.   The   second respondent/defendant had been an employee of the plaintiff TAFE when it had developed the idea of a tractor called ‘Hunter’, who as per the plaintiff had direct access and information   regarding the said program. The second respondent/defendant had tendered his resignation from, plaintiff TAFE and joined Green Field Farm Equipments Private Limited, promoted by his wife.  Till he resigned from the plaintiff company, there had not been much activity in the defendant’s company.  Thereafter the defendant started manufacturing tractors by name Maharaja 3300. The applicant/plaintiff company claimed that they conceived  a project called ‘Hunter Project’ for producing tractors and entered into a tie up with some UK companies to design the tractor. These companies developed the design and assigned the rights therein to the plaintiff, TAFE. The second respondent/defendant while in service of the plaintiff company was deputed to UK in his capacity as senior member of the R&D team of Hunter Project for the purpose of developing the design for the tractor.  All communication   emanating from the UK design partners had been accessible to the defendant. The plaintiff, TAFE alleged that the first respondent/defendant company registered a design, which according to the plaintiff company was the design of tractor developed under the Hunter project. On comparing the designs, the court found that the registered design was a copy and plain imitation of the design developed by the British companies for TAFE.  Since the second respondent/defendant had access to the Hunter tractor designs as a result of his association with this program during his employment in TAFE and    since    such    tractors    were    not manufactured   by   TAFE, the   court   held   that   the defendant ex-employee alone could have copied and registered   the   design   in   the   name   of   the   first respondent, Green Field Farm Equipments. Additionally,  no  material  was  produced  before  the court  by  the  defendants  to  show  that  they  developed the   design   on   their   own   and   that   the   applicant/ plaintiff did not have any claim over it. While employing the second respondent/defendant, the plaintiff TAFE, had entered into a confidential agreement which stipulated that if he had acquired any knowledge of confidential or restricted nature either developed by itself   or   through   technical collaboration or   licenses, he   should   not   make available or accessible such knowledge to third parties either directly or indirectly for a period of three years.
Based on  its  finding  that  the  Hunter  tractor  design and   the   design   of   the   tractor   registered   by   the defendants  under  the  Designs  Act  were  one  and  the same, the court concluded that the second respondent who  was  in  the  service  of  the  plaintiff,  unlawfully copied the original designs assigned to applicant/plaintiff  by  the  British  companies.  It was held that    the second respondent/defendant had committed a breach of trust and   confidentiality agreements for which he should be restrained by an order of injunction. The court also found a subsisting copyright in favour of the plaintiffs in the Hunter tractor design and restrained the defendants from infringing the copyright.
But the court made it clear that the injunction will not be applicable if the   defendants are manufacturing tractors on their own not connected with the digital images and photographs of Hunter tractor design since there cannot be any blanket injunction against anybody preventing the production of a tractor of his own design and configuration, not offending the rights of others.

9.     Zee Telefilms Ltd. v. Sundial Communications Pvt. Ltd. (2003)
‘There can be no copyright of ideas or information and it is not infringement of copyright to adopt or appropriate ideas of another or to publish information received from another, provided there is no substantial copying of the form in which those ideas have, or that information has, been previously embodied. But if a person under such circumstances has acquired the ideas or information that it would be a breach of good faith to publish them and he has no just case or excuses for doing so, the court may grant injunction against him. …. Copyright is good against the world generally while confidence operates against those who receive information or ideas in confidence. Copyright has a fixed statutory time limit which does not apply to confidential information, though in practice application of confidence usually ceases when the information or ideas becomes public knowledge..”
Summary:
The employees of the plaintiffs – a company engaged in the business of producing television serials - had developed the concept for a program, which they had registered with the Film Writers Association. Subsequently, they made a confidential pitch of the concept to the representatives of the defendants, a well-known TV channel. Although initially the defendants appeared reluctant to take the concept forward, they proceeded later on, without the authorization of the plaintiffs, to produce a TV serial that closely mirrored the ideas contained in the show conceived by the plaintiff. In an action seeking to restrain the defendants from proceeding with their production, the High Court agreed with the plaintiff’s claims both on the count of copyright infringement and confidentiality. Curiously, the determination of both issues turned on the similarities between the plaintiff and defendant’s concepts – which is traditionally a determination relevant only to copyright cases.

10. Urmi Juvekar- Chiang v. Global Broadcast News Ltd. (2008)
An idea per se has no copyright. But if the idea is developed into a concept fledged with adequate details, then the same is capable of registration under the Copyright Act
Summary:
In November 2005, Urmi Juvekar, a documentary filmmaker, came up with a concept which she called ‘Work in Progress”. The concept note, which was registered with the Film Writers Association, Mumbai, disclosed the idea of a reality show on TV, which would follow citizens from around the country as they took the initiative to solve a civic problem of their choice in their locality. The show would follow the citizens and telecast the hurdles that the citizens face in solving the problem – the bureaucracy, the general attitude of the people and the final outcome.
The concept note was sent to CNN-IBN, which initially took great interest in it and a number of meetings with directors, line managers and producers followed. Discussions continued until February 2007 and then stopped abruptly. On April 19, 2007, Ms. Juvekar-Chiang saw promotions of the program titled “Summer Showdown” on CNN-IBN which, in the words of Rajdeep Sardesai, CNN-IBN’s editor in chief, “promise[d] to be a captivating account of citizens from across the country on the civic conditions of their cities.” Mr. Sardesai further stated, “With inclusive journalism as our mantra, CNN-IBN hopes to not only give voice to the plight of citizens but also elicit among others a sense of civic responsibility.” The program was to be aired daily in the form of short three-minute stories on CNN-IBN’s news. Ms. Juvekar filed a petition claiming injunction and damages on the grounds of breach of confidentiality and copyright infringement on May 21, 2007 before the Mumbai High Court.

11. Peter Pan Manufacturing Cop. v. Corsets Silhouette Ltd. (1963)
A trader who receives confidential information and makes no use thereof, is not thereby debarred from making use of that knowledge when it is no longer secret.
Summary:
A licence agreement contained a clause prohibiting the licensee from using, after termination of the agreement, the technical information supplied under it. After termination, the licensee manufactured a range of goods incorporating the patentee's designs. The patentee sued for breach of confidence, and breach of contract, and contended that the licensee was indefinitely precluded from using the patentee's methods of construction, even though these might cease to be confidential. The patentee further contended that the licensee should be restrained from using a material of which particulars had been supplied to it in confidence, notwithstanding that no use had been made of that information until it had ceased to be confidential.
It was held that the patentee was entitled to an injunction restraining further manufacture of the range of goods immediately concerned, but not to the wider relief asked for.
The successful plaintiffs having elected to take an account of profits:
It was held that they were entitled to an order in the form of an account of the profits made by the defendants from the sale of the offending goods, and not merely an account of the additional profit made by the defendants as a consequence of their use of confidential information.

GEOGRAPHICAL INDICATIONS

A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production. The connection between the goods and the place becomes so famous that any reference to the place reminds the goods being produced there and vice versa. E.g. The reference to District of Champagne, France brings to mind the wine ‘Champagne’ which is being produced there.

In France the concept of geographical indications emerged with the law of 1919 that established geographical indications as collective intellectual property and granted legal recognition to unions for the protection of appellations of origin. 

At the international level the Lisbon agreement for the protection of Appellations of Origin and their International Registration, 1958, was adopted to provide for the protection of “appellations of origin”, which is defined to mean the “geographical name of the country, region, or locality, it serves to designate the product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographic environment, including natural and human factors”.

Definition

The Geographical Indications of goods (Registration and Protection) Act, 1999 defines “geographical indication” in relation to goods as ‘an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of the country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods, one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be’.

The term ‘goods’ has been defined to mean ‘any agricultural, natural or manufactured goods or any goods of handicraft or of industry and includes food stuff’. ‘Indication’ has been defined to include ‘any name, geographical or figurative representation or any combination of them conveying or suggesting the geographical origin of goods to which it applies’.

Rationale

Geographical indications have features that respond to the needs of indigenous and local communities and farmers. Geographical indications:
a.     Are based on collective traditions and a collective decision making process;
b.     Reward traditions while allowing for continued evolution;
c.      Emphasize the relationship between human efforts, culture, land resources and environment; and 
d.     Are not freely transferable from one owner to another. 

Geographical indications therefore, reflect inter alia, the traditions, culture, human efforts, resources and environment of particular regions.

Functions

Geographical indications are valuable property to producers from particular geographical regions. They basically perform three functions. 
a.     They identify goods as originating in a particular territory, or a region or locality in that territory; 
b.     They suggest the consumers that the goods come from an area where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin; and 
c.      They promote the goods of producers of a particular area.

Difference between Trade Mark & Geographical Indication

Although the geographical indications are as valuable as trademarks, yet the functions of geographical indications are different from that of the trademarks. Trademarks are owned by enterprises and used to identify products and services in the market, in particular to distinguish them from competing products and services whereas a geographical indication never belongs to a particular enterprise. A geographical indication can be used by several enterprises have the same time, provided that the products for which it is used originate in the geographical area to which the indications refers.

Development

Prior to 1999, there was no specific law in India on geographical indications which could adequately protect the interests of the producers. Despite India being a party to the TRIPS agreement, she did not enact a law on geographical indications until 1999. The judiciary however, has been active in preventing persons to take an unlawful advantage of geographical indications. [Mohan Meakin v Scotch Whisky (1980) & Scotch Whisky Association v Pravara Sahakar Karkhana (1992)]

Register

The Geographical Indications Registry has been established in Chennai to administer the Geographical Indications Act, 1999 under the Controller General of Patents, Designs and Trademarks. 

Registration

The geographical indication may be registered in respect of any or all of the goods, comprised in a prescribed class of goods and in respect of a definite territory of a country or region or locality, as the case may be. The classification shall, as far as possible, conform to the International classification of goods. Where any question arises regarding classification of goods or the determination of the definite area, the registrar whose decision in the matter shall be final shall determine it.

Section 9 of the act prohibits the registration of certain geographical indications:

A geographical indication-

a.     The use of which would be likely to deceive or cause confusion; or

(Confusion regarding GI may be visual or phonetic in nature i.e. contextual confusion or as to trade origin. The purchaser may actually be deceived. They may be induced to believe the goods sold under the GI emanates from the same trade source. The deception or confusion need not be actual. It may also be probable.)

b.     The use of which would be contrary to any law for the time being in force; or

(For example, if the GI applied for registration is prohibited under the Emblems & Names (Prevention of improper use) Act, 1950, it shall be refused registration)

c.      Which comprises or contains scandalous or obscene matter; or

(It has to be decided on the facts and circumstances of each case. In case of objection to registration, the onus is on the applicant to show that the GI applied for is not scandalous or obscene)

d.     Which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or

e.     Which would otherwise be disentitled to protection in a court; or

f.      Which are determined to be generic names or indications of goods and are, therefore, not or ceased to be protected in their country of origin, or which have fallen into disuse in that country; or

(Generic names or indications in relation to goods means the name of goods which although relates to the place of the region where the goods was originally produced and manufactured, has lost its original meaning and has become the common name of such goods and serves as a designation for or authentication of the kind, nature, type or other property or characteristics of the goods.)
g.     Which, although literally true as to the territory, region or locality in which the goods originate, but falsely represent to the persons that the goods originate in another territory, region or locality, as the case may be, shall not be registered as a geographical indication.

Explanation 1. - For the purposes of this section, "generic names or indications'', in relation to goods, means the name of a goods which, although relates to the place or the region where the goods was originally produced or manufactured, has lost its original meaning and has become the common name of such goods and serves as a designation for or indication of the kind, nature, type or other property or characteristic of the goods.

Explanation 2. - In determining whether the name has become generic, account shall be taken of all factors including the existing situation in the region or place in which the name originates and the area of consumption of the goods.

Note:
Registration of Homonymous (ambiguous or having the same designation) geographical indications
Where the geographical indication is homonymous indication to an already registered geographical indication, the material factors differentiating the application from the registered geographical indications shall be provided. The registrar in that case would have to consider the practical question to differentiate the two homonymous indications, ensure equitable treatment of the producers of the goods concerned and avoid confusion in the market. It is of paramount importance that the consumers of such goods are not confused or misled in consequence of such a registration. 

Application

An application for registration of a geographical indication may be made to The Registrar of GI by any association of persons for producers or any organisation or authority representing the interests of the producers of the concerned goods. The applicant has to be a legal entity and should be representing the interest of the producers of the good applied for. Any such organisation or association being not that of the producers may have to prove that they represent the interest of the producers. Any applicant authority also has to prove that they represent the interest of the producers. 

Note:
It is noteworthy that many communities which are holders of traditional knowledge and goods produced and sold using geographical indications have not formed associations. In many cases, it is the distributors of these groups who have formed associations, and they may be in a position to obtain registration for the geographical indications. Thus, as per the law these associations will have to prove that they represent the interest of the producers.

The application for registration must contain the following:
a.     A statement as to how the geographical indication serves to designate the goods as originating from the concerned territory of the country or region or locality in the country, as the case may be, in respect of specific quality, reputation or other characteristics of which are due exclusively or essentially to the geographical environment, with its inherent natural and human factors, and the production, processing or preparation of which takes place in such territory, region or locality, as the case may be; 
b.     The class of goods to which the geographical indication shall apply; 
c.      The geographical map of the territory of the country or region or locality in the country in which the goods originate or are being manufactured; 
d.     The particulars regarding the appearance of the geographical indication as to whether it is comprised of the words or figurative elements or both; 
e.     A statement containing such particulars of the producers of the concerned goods, if any, proposed to be initially registered with the registration of the geographical indication as may be prescribed; and 
f.      Such other particulars as may be prescribed.

A document entitled ‘statement of case’ is to be annexed with application form which shall contain:

a)    Specification – A brief statement on specifications and quality parameters of the goods in about 50 to 100 words.
b)   Description – Detailed description of the Goods & geographical linkage.
c)    Proof of Origin – Historic proof in the form of documentary evidence to prove the existence of the Geographical Indications.
d)   Method of Production – Process involved, raw materials & tools, packaging specialty if any.
e)    Uniqueness – Special Characteristics if any.
f)     Inspection Body – Details of the Inspection Body set up by the applicant to monitor the production in respect of quality, integrity & consistency of the product. 
g)    Other – The present scenario of the GI Product i.e. the market, details of exports, if any, total turnover of the product & the activities undertaken by the applicant association in development & promotion of the GI.

The Procedure

STEP 1Filing of application
Please check whether the indication comes within the ambit of the definition of a Gl under section 2(1)(e).
The association of persons or producers or any organization or authority should represent the interest of producers of the concerned goods and should file an affidavit how the applicant claims to represent their interest.
  • Application must be made in triplicate.
  • The application shall be signed by the applicant or his agent and must be accompanied by a statement of case.
  • Details of the special characteristics and how those standards are maintained.
  • Three certified copies of the map of the region to which the GI relates.
  • Details of the inspection structure if any to regulate the use of the GI in the territory to which it relates.
  • Give details of all the applicants together with address. If there is a large number of producers a collective reference to all the producers of the goods may be made in the application and the G.I., if registered will be indicated accordingly in the register.
Send your application to the following address in India:
Geographical Indications Registry
Intellectual Property Office Building
Industrial Estate, G.S.T Road
Guindy, Chennai – 600 032
Phone: 044 – 22502091-93 & 98
Fax: 044 – 22502090
E-mail:gir-ipo@nic.in
Website: ipindia.gov.in
The applicant must have an address for service in India. Generally, application can be filed by (1) a legal practitioner (2) a registered agent.

STEP 2 and 3Preliminary scrutiny and examination
  • The Examiner will scrutinize the application for any deficiencies.
  • The applicant should within one month of the communication in this regard, remedy the same.
  • The content of statement of case is assessed by a consultative group of experts will versed on the subject.
  • The will ascertain the correctness of particulars furnished.
  • Thereafter an Examination Report would be issued.
  •  
STEP 4Show cause notice
  • If the Registrar has any objection to the application, he will communicate such objection.
  • The applicant must respond within two months or apply for a hearing.
  • The decision will be duly communicated. If the applicant wishes to appeal, he may within one month make a request.
  • The Registrar is also empowered to withdraw an application, if it is accepted in error, after giving on opportunity of being heard.

STEP 5Publication in the geographical indications Journal
Every application, within three moths of acceptance shall be published in the Geographical Indications Journal.

STEP 6Opposition to Registration
  • Any person can file a notice of opposition within three months (extendable by another month on request which has to be filed before three months) opposing the GI application published in the Journal.
  • The registrar shall serve a copy of the notice on the applicant.
  • Within two months the applicant shall sent a copy of the counter statement.
  • If he does not do this be shall be deemed to have abandoned his application. Where the counter-statement has been filed, the registrar shall serve a copy on the person giving the notice of opposition.
  • Thereafter, both sides will lead their respective evidences by way of affidavit and supporting documents.
  • A date for hearing of the case will be fixed thereafter.
STEP 7Registration
  • Where an application for a GI has been accepted, the registrar shall register the geographical indication. If registered the date of filing of the application shall be deemed to be the date of registration.
  • The registrar shall issue to the applicant a certificate with the seal of the Geographical indications registry. 
STEP 8Renewal
A registered GI shall be valid for 10 years and can be renewed on payment of renewal fee.

STEP 9Additional protection to notified goods*
Additional protection for notified goods is provided in the Act.
(*Additional protection to certain goods: An application may be made to the registrar in respect of goods notified by the central Government for additional protection for a registered geographical indication in Form GI-9 accompanied in triplicate along with a statement of case and shall be accompanied with the copy of the notification issued.The application shall be made jointly by the registered proprietor of the Geographical indications in India and by all the producers of the Geographical indication.)

STEP 10Appeal
Any person aggrieved by an order or decision may prefer an appeal to the intellectual property appellate board (IPAB) within three months. The address of the IPAB is as follows:
Intellectual Property Appellate Board
Annexe 1, 2 nd Floor, Guna Complex,
443, Anna Salai, Chennai – 600 018

Authorised User

Since a registered the graphical indication is a community intellectual property and the registered proprietor is an organisation or authority, the system of registration of authorised users offers protection to the individual producers manufacturers and traders. This system ensures the bona fide of a GI product dealt with or produced by a genuine person and further ensures the protection to the consumers. 
Authorised users get the exclusive right to use the registered geographical indication and can independently sue an infringer; and also renew or restore such indications, if the registered proprietor fails to renew the same. 

Prohibition of Registration of Geographical Indication as Trade Mark

The act prohibits the registration of a geographical indication as a trademark as it could lead to expropriation of a public property by an individual leading to confusion in the market. 

Note:
·      The act provides for protection of a trademark which contains or consists of a geographical indication which has been applied for or registered in good faith under the trademark law or where such trademarks have been used in good faith before the commencement of the geographical indications act or before the date of filing of an application for registration of a geographical indication, even if the trademark is identical with or similar to such a geographical indication. 

·      The act does not apply to a geographical indication with respect to goods or classes of goods which have become the common name of such goods in India on or before January 1, 1995. 

·      The act does not affect the right of any person to use, in the course of trade, that person's name or the name of that person's predecessor in business, except where such name is used in such a manner as to confuse and mislead the people.


·      No action in connection with the use or registration of a trademark shall be taken after five years from the date from which such use or registration which infringes any registered geographical indication registered has become known to the registered proprietor or to the authorised user.

Term of Geographical Indication

The registration of a geographical indication and authorised user shall be for a period of 10 years. Both the registrations may be renewed from time to time on the payment of a prescribed fee for a term of 10 years from the date of last renewal of registration for an indefinite period. However, if the renewal is not effected within the prescribed or extended time, the geographical indication or the authorised user, as the case may be is liable to be removed from the records. Provision is also made for restoration of registration. 
Where a geographical indication has been removed from the register for failure to pay the renewal fee, it shall nevertheless be deemed to be geographical indication on the register unless the tribunal is satisfied either:
a)    That there been no bona fide trade use of that geographical indication within two years immediately preceding its removal or;
b)   That no deception or confusion would be likely to arise from the use of the geographical indication. 


Rights Conferred by Registration

The rights conferred by registration are as follows:
a)    To the registered proprietor and authorised user or users the right to obtain relief in respect of infringement of such a geographical indication; 
b)   To the authorised user the exclusive right to the use of the geographical indication in relation to the goods in respect of which the geographical indication is registered.

However, the right of authorised user to use the graphical indication is subject to the conditions and limitations to which the registration is subject. Two or more authorised users of a registered geographical indication shall have co-equal rights.

Infringement

A person who is not an authorised user of a registered geographical indication infringes it when he:
a)    Uses such geographical indication by any means in the designations or presentation of goods that indicates or suggests that such goods originate in a geographical area other than the true place of origin of such goods in a manner goods which misleads the persons as to the geographical origin of such goods; or
b)   Uses any geographical indication in such manner which constitutes an act of unfair competition including passing off in respect of registered geographical indication.

Explanation 1. -"Act of unfair competition'' means any act of competition contrary to honest practices in industrial or commercial matters.
Explanation 2. - For the removal of doubts, it is hereby clarified that the following acts shall be deemed to be acts of unfair competition, namely:  
a.     All acts of such a nature as to create confusion by any means whatsoever with the establishment, the goods or the industrial or commercial activities, of a competitor[The Tea Board vs ITC Limited (2016)]
b.     False allegations in the course of trade of such a nature as to discredit the establishment, the goods or the industrial or commercial activities, of a competitor;
c.      Geographical indications, the use of which in the course of trade is liable to mislead the persons as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods;

c)    Uses another geographical indication to the goods which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the persons that the goods originate in the territory, region or locality in respect of which such registered geographical indication relates.

Note
·      Where the goods in respect of which a geographical indication has been registered are lawfully acquired by a person other than the authorised user of such geographical indication, further dealing in those goods by such person including processing or packaging does not constitute an infringement of such a geographical indication, except where the condition of goods is impaired after they have been put in the market. 

·      A geographical indication once registered shall prima facie be evidence of the validity of the registration and the certificate of registration shall be admissible in all courts and before the Appellate Boards in all legal proceedings relating to geographical indication without further proof for production of the original. However the right of action in respect of an unregistered geographical indication shall not be affected by the aforesaid provision.

·      A geographical indication is a public property. Any right to a registered geographical indication is not a subject matter of assignment, transmission, licensing, pledge, mortgage or any such other agreement. However, on the death of an authorised user his right in the registered geographical indication shall devolve on his successors in title.

Rectification & Correction of Register
Power to cancel or vary registration and to rectify the register.  Section 27 of the Act reads as follows:
1)   On application made in the prescribed manner to the Appellate Board or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a geographical indication or authorised user on the ground of any contravention, or failure to observe the condition entered on the register in relation thereto.
2)   Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.
3)   The tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.
4)   The tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2).
5)   Any order of the Appellate Board rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.

Correction of register
 Under Section 28; the Registrar may, on application made in the prescribed manner by the registered proprietor or the authorised user, —
i)     Correct any error in the name, address or description of the registered proprietor or the authorised user, as the case may be, of a geographical indication, or any other entry relating to the geographical indication on the register;
ii)    Enter any change in the name, address or description of the association of persons or of producers or any organisation or authority, as the case may be, who is registered as proprietor of a geographical indication on the register;
iii)  Cancel the entry of a geographical indication on the register;
iv)  Strike out any goods or class or classes of goods from those in respect of which a geographical indication is registered from the register, and may make any consequential amendment or alteration in the certificate of registration, and for that purpose, may require the certificate of registration to be produced to him.

Alteration of registered geographical indications
Under Section 29 of the Act;
1.    The registered proprietor of a geographical indication may apply in the prescribed manner to the Registrar for leave to add to or alter the geographical indication in any manner not substantially affecting the identity thereof, and the Registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit.
2.    The Registrar may cause an application under this section to be advertised in the prescribed manner in any case where it appears to him that it is expedient so to do, and where he does so, if within the prescribed time from the date of the advertisement any person gives notice to the Registrar in the prescribed manner of the opposition to the application, the Registrar shall, after hearing the parties if so required, decide the matter.
3.    Where leave is granted under this section, the geographical indication as altered shall be advertised in the prescribed manner, unless the application has already been advertised under sub-section (2).
(E.g. If ‘Darjeeling Tea’ is registered as a GI in English, a subsequent request may be made to depict the registered GI in Hindi (Devanagiri Script)

Application of Geographical Indication to Goods

Under Section 37 of the Act,  a person shall be deemed to apply a geographical indication to goods who —
a)    Applies it to the goods themselves; or
b)   Applies it to any package in or with which the goods are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or manufacture; or
c)    Places, encloses or annexes any goods which are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or manufacture, in or with any package or other thing to which a geographical indication has been applied; or 
d)   Uses a geographical indication in any manner reasonably likely to lead to the belief that the goods in connection with which it is used are designated or described by that geographical indication; or
e)    In relation to the goods uses a geographical indication in any sign, advertisement, invoice, catalogue, business letter, business paper, price list or other commercial documents and goods are delivered to a person in pursuance of a request or order made by reference to the geographical indication as so used.

A geographical indication shall be deemed to be applied to goods whether it is woven in, impressed on, or otherwise worked into, or annexed or affixed to, the goods or to any package or other thing.

Infringement & Passing Off

·      Institution of a Suit before the District Court
A suit:
a)    For the infringement of a registered GI; or
b)   Relating to any right in a registered GI; or
c)    For passing off arising out of the use by the Defendant of any GI which is identical with or deceptively similar to the geographical indication relating to the plaintiff, whether registered or unregistered,
 Shall be instituted before the district court having jurisdiction to try the suit. 

The district court having jurisdiction includes a district court within the local limits of whose jurisdiction, the person or one of the persons instituting the suit or proceeding actually and voluntarily resides or carries on business or personally works for gain. The term “person” includes the registered proprietor and the authorised user.

·      Civil Remedies
The act provides for the following simple remedies for the infringement of a registered geographical indication:
a)    Injunction.
b)   Damages or account of profits.
c)    Delivery-up of the infringing labels and indications.
These remedies are inclusive, not exhaustive and the court may provide some other remedies in addition to the aforesaid such as Anton Piller order.

Injunction
Injunction includes temporary and permanent injunction. Further, the court may also ordered an ex parte judgement for:
a)    Discovery of documents.
b)   Preserving of infringing goods, documents or other evidence which are related to the subject -matter of the suit; and
c)    Restraining the defendant from disposing of or dealing with his assets in a manner that may adversely affect the plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.
The aforesaid remedy of injunction is more effective and can prevent a greater harm to the plaintiff.

Damages or account of Profits
The remedy of damages or account of profits is not cumulative but alternative. The plaintiff has to elect one of the two remedies at an earlier stage of the suit. The remedy of damages (other than nominal damages) or account of profits may be denied with the defendant satisfies the court that he was unaware and had no reasonable grounds for believing that the geographical indication of the plaintiff was registered when he commenced to use it: and that when he became aware of the existence and nature of the plaintiff’s right in the graphical indication, he forthwith ceased to use it.

Delivery-up of the infringing labels and indications
It is in the discretion of the court to order the defendant to deliver-up the infringing labels and indications for destruction and erasure. The court by taking the relevant circumstances into account may or may not order for such remedy.

Passing Off
All the aforesaid remedies that are available for the infringement of a registered Geographical Indication are also available in a passing off action in case of unregistered geographical indication.

Note
Usually, the invalidity of registration is pleaded by the accused against the charge of falsely applying a geographical indicator; or selling goods to which false geographical indication is applied.

Cases
1.     Mohan Meakin v Scotch Whisky (1980)
The Delhi High Court affirmed the order of the Registrar of Trade Marks by which he refused to register the applicant’s mark proposed to be used on whisky produced in India consisted of the words ‘Highland Chief; and the device of the head and shoulders of a gentleman dressed in Scottish highland costume wearing, inter alia, feather bonnet and plaid and edge with tartan, a well-known symbol of Scottish origin.


2.     Scotch Whisky Association v Pravara Sahakar Karkhana (1992)
Indian courts have maintained the action of passing off to protect geographical indications.
In this case the plaintiff, the Scotch Whisky Association, a company incorporated under the Companies Act of the United Kingdom instituted the passing-off action against the defendants; a manufacturer of various brands of Indian whisky known as ‘Blended Scotch whiskey’ or ‘Blended with Scotch’, under various brands, namely ‘Drum Beater’ and ‘God Tycoon.’ On these facts the Bombay High Court held:
a.     The plaintiffs have sufficient interest and locus standi to prevent passing-off of Indian whisky manufactured by defendant as ‘Scotch whisky’ and to prevent damage to reputation and goodwill of Scotch whisky.
b.     The plaintiffs have made out a strong prima facie case that the defendants are passing-off their goods as Blended Scotch whisky or goods closely and substantially associated with Blended Scotch whisky when in fact they are not. The plaintiffs have, therefore, made out a case for grant of an interim injunction on merits of the case.
c.      The defendants are deliberately and intentionally passing-off their product as if ‘Blended Scotch’ although as a matter of law, even unintentional misrepresentation is also actionable. It is unfortunate that the defendants have resorted to unfair device by using the words ‘Blended with Scotch’ and indulged in colorable imitation and unfair trading in an attempt to reap harvest by appropriation of plaintiff’s goodwill in Scotch whisky trade. The attempt of the defendants to justify the use of the words ‘Blended with Scotch’ has totally failed. The balance of convenience is in favour of the plaintiffs and not in favour of the defendants.
d.     The defendant is restrained from advertising or offering for sale or distributing in any country whisky which is not Scotch whisky with the description ‘Blended with Scotch whisky’ or ‘Blended Scotch whisky’ or ‘Blended with six year old Scotch’ or ‘Blended with six year old Vatted Malt Scotch’ or the word ‘Scotch’ or the impugned labels or the impugned carton which bear the mark ‘Gold Tycoon’ containing the word ‘Scotch’ or the description ‘Blended Scotch whisky’ or ‘Blended with six year’.
3.    The Tea Board vs. ITC Limited (2016)
The court opined that the usage of the term DARJEELING for a lounge does not create a situation where any person with an average intelligence would find it difficult to differentiate between the already existing Darjeeling tea and the lounge DARJEELING. Plus any form of confusion wherein any beverage or food article provided in the lounge might belong to the Tea Board of India is not bound to happen.

Summary
a.     The Tea Board of India holds the famous GI “Darjeeling” and the logo of a woman holding tea leaves, as well as the certification trade mark “Darjeeling” under the Trade Marks Act, in connection with “tea”.
b.     ITC, Limited used “Darjeeling Lounge” as the name for its executive lounge at its Kolkata hotel, the ITC Sonar.
c.      The Tea Board had previously filed a suit against ITC for using the word Darjeeling for their lounge. The suit mainly revolved on issues of infringement of the GI and the certification TMs, as well as for passing off and dilution.
d.     The matter was rejected by the one judge bench, due to which an appeal was made before the Division bench of the Kolkata high court.