Standard for granting injunctions clarified

In Dr Reckeweg and Co GmbH v Adven Biotech Pvt Ltd (IA 7326/2007 CS (OS) 1189/2007, July 1 2008), the Delhi High Court has clarified the standard to be adopted by the courts in deciding whether to grant an injunction in cases involving trademark and copyright infringement. The decision further splinters the prevalent ‘sweat of the brow’ test for determining subsistence of copyright in a literary work.
Dr Reckeweg and Co GmbH, a German-based company, claimed to have been manufacturing homeopathic products known as the 'R-Series' in Germany for the past 60 years and to have sold such products in India since 1980. Reckeweg filed suit against Adven Biotech Pvt Ltd, alleging passing off and infringement of copyright in respect of identification numbers and catalogues for homeopathic medicines prepared following the German Homeopathic Pharmacopoeia.
Reckeweg's medicines were numbered from R-1 to R-95. Reckeweg claimed that the letter 'R' was derived from the name of Dr Reckeweg, its founder, and that the numerals indicated the characteristics of the medicinal formulations. Adven's medicines bore the alphanumeric series A-1 to A-75. Reckeweg alleged that Adven's use of the same numerals with regard to the same ailment was a calculated attempt to cash in on its goodwill. Reckeweg thus sought an order restraining Adven from:
  • passing off its products as those of Reckeweg; and
  • infringing Reckeweg's copyright in its literature (ie, the alphanumeric series, the medicinal formulations along with their respective potency, the description of the various ailments and the compilation of curative effects).
Reckeweg's claims for passing off and copyright infringement were rejected by the court. With regard to passing off, the court pointed out that an injunction will be granted only if the marks are identical or deceptively similar, so as to cause confusion among the public. In the present case, the court held that there was no likelihood of confusion between the parties' alphanumeric marks because:
  • the essential feature of Reckeweg's mark (the letter 'R') was not included in Adven's alphanumeric series;
  • the name of the parties were displayed prominently on the labels of the medicines; and
  • the colour scheme and type setting of the respective labels were different. 
Therefore, the court concluded that the average consumer would not be deceived into thinking that Adven's products originated from Reckeweg.
In addition, the court rejected Reckeweg's copyright claim on the following grounds: 
  • Alphanumeric series - such series cannot be afforded copyright protection, unless they possess a certain degree of originality and a "modicum of creativity";
  • Medical formulations - granting copyright protection to such formulations would indirectly amount to granting a right over the medicines themselves;
  • Description of ailments: the use of common words to describe medicines demonstrated no creativity or skill; and
  • Compilation of curative effects - compilations may be granted copyright protection only where uniqueness or intellectual creativity has been demonstrated.
The court relied on the Supreme Court decision in Eastern Book Company v DB Modak [(2008) 1 SCC 1], in which the court considered whether a publication reporting Supreme Court judgments was copyrightable. The Supreme Court held that the skill, labour and time expended (known as the 'sweat of the brow' test) were not determinative; the work must be original by virtue of selection, coordination or arrangement of pre-existing data, Therefore, a derivative work must be somewhat different in character from that produced by the author.
In the case at hand, the court examined the separate parts of the work rather than the work as a whole. The court held that Reckeweg's literature was a compilation of elements which were not individually capable of protection under copyright law. The decision highlights the fact that a work must be complex in order to be granted copyright protection. The compilation of commonplace elements does not result in an original work. 
It will be interesting to see whether the decision is appealed, especially since, in an earlier decision (Dr Reckeweg and Co GmbH v SM Sharma), it was held that Reckeweg's literature (considered as a whole and not in parts) was capable of copyright protection.
Binny Kalra and Abhilasha Kumbhat, Anand and Anand Advocates, New Dehli

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