Infringing scholastic material not requiring close study

In the recent case of Oswaal Books and Learning Private Limited v Bokaro Students Friend Private Limited and Ors, the plaintiff, Oswaal Books and Learning applied for and was granted an urgent ex parte order preventing the defendant, Bokaro Students Friend from selling pirated versions of their books and study materials.

The plaintiff is in the business of publishing educational books and study material for board exams conducted by the ICSE, CBSE and various states, as well as for other competitive examinations such as the JEE, the NEET, the CAT and the CLAT. It sells its books through a network of 16,000 bookstores across 500 districts. The plaintiff registered the trademark Oswaal Books, its logo and the name under which the books were sold. The plaintiff also claimed copyright in its study materials, sample question papers and solutions. The plaintiff claimed that it had provided answer keys to the questions in the study material through QR codes unique to each book.

Purchasers of the infringing study material contacted the plaintiffs, complaining that the QR codes were not functioning and they could not access the answer keys. On investigating, the plaintiff found that unknown publishers were selling identical books with the same covers. However, such study material was defective, with blurred cover pages, QR codes that did not work or were missing and low-quality printing. The counterfeit books were clearly not the original high-quality materials of the plaintiffs.

The plaintiff’s name and goodwill were being tarnished by the circulation of the inferior books and study materials. The plaintiff had suffered economic loss, and the students had suffered from the poor quality of the study material. The samples submitted to the court showed that the infringing material showed a sufficiently superficial similarity that students would be duped into buying the counterfeit material, assuming it to be genuine.

The plaintiff’s investigations led it to sources in Delhi, such as Bokaro Students Friend and Kashyap Book Depot, that were supplying the infringing copies. Many bookshops across various states were identified as selling the counterfeit material. None of the suppliers and sellers had responded to the plaintiff’s legal notices.

Aggrieved by the actions of the defendants, the plaintiff applied to the court for ex parte interim injunctions against the defendants. The plaintiff argued that the acts of piracy and counterfeiting were jeopardising the careers of students and causing the loss of goodwill, reputational harm and financial loss to the plaintiffs while channelling wrongful gain to the defendants.

After hearing the plaintiff and examining the pirated and original books, the court was satisfied that the plaintiff had made a good case for admitting the case and restraining the defendants. The court held that the balance of convenience was in favour of the plaintiff because of the loss being caused. There was an urgent need for injunctions pending the final hearing of the case against the defendants, who the court found were selling pirated versions of copyrighted study materials and sample question papers under the plaintiff’s trade name, trade dress and colour scheme.

The court ordered the defendants be restrained from publishing, printing, offering for sale or advertising in any manner any product bearing the plaintiff’s registered trademark, Oswaal Books, or any other mark that was deceptively similar or passed off as the plaintiff’s products, infringing on their copyright in the study materials.

The court appointed local commissioners to enter the premises of the defendants with the police, by force if necessary. The local commissioners were authorised and instructed to gather all infringing material at the various premises bearing the logo, trademarks and trade names of the plaintiff, and the plaintiff’s published and unpublished copyrighted study material. They were to make inventories, which after being duly sealed and signed in the presence of the parties, would be released to the defendants as and when required by the court. The local commissioners were also instructed to obtain copies of the books of accounts, including ledgers, cash registers, stock registers and invoices. These will be used to assess the losses suffered by the plaintiff when the court comes to fix damages.

Manisha Singh and Puja Tiwari are partners at LexOrbis.