Monthly Archives: May 2012

Removal from Trademarks Register Due to Non-Use

Is using and/or commercializing a registered Trade Mark really necessary in India or is simply sitting over it and renewing the same periodically enough to maintain the mark and gain from the protection it accords. Poorva Khandekar, an intern at Khurana & Khurana and 4’th year law student from KIIT Law School, Bhubaneswar explores the nuances of use of a registered mark in view of Section 47 of the Indian Trademarks Act, 1999.

We presently live in an era where time is money and therefore loss of time is equal to loss of money. I begin this piece of writing with this mundane phrase as it might turn out to be of specific interest to persons (artificial and natural) who lose money on unnecessary trademark litigations which could have been avoided, to a certain extent.

Section 47 of the Trademarks Act of 1999 puts forth two interesting scenarios regarding removal of a registered trademark from the trademark register. Under 47(1)(a), if it is proved that the trademark was not registered with a bona fide interest and was not put into use three months prior to the date of application then the trademark may be removed from the register.

Clause 2 of the same section discusses about removal of trademark in case it is left unused for a period of at least five years. This period is calculated from the date of registration upto three months before the filing of application for removal.

The problem area that we have identified today is significant but avoidable. While filing the form TM-1 (the details about the trademark), the status of use of the trademark is to be mentioned. Many of the trademarks are registered as “proposed to be used” as allowed by section 46 of the Act. This information is available to everybody and is generally relied upon by people. As mentioned above, if the mark is not put to use within five years then it can be removed from the register.

Looking through a few recent (or, fairly recent) cases on these points will help us get a clearer picture of the scenario. To begin with, it is essential to understand the meaning awarded to the word “use” in section 47. In a case of Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd.[1], the Supreme Court laid down that the word ‘use’ may encompass actions other than actual sale of goods or services. The intention to abandon the trademark has to be established by the party who approaches the court for removal of the mark from register. In some other cases[2] the Apex Court has observed that the mere presence of a mark in the register does not by itself prove its use at all. Also, the court has categorized promotional activity in India as a pre-cursor of the market reputation without having effected sales of the products in this country. These endorsements were given the status of validity for proving the knowledge of reputation to the other party and the dishonest intention thereof.

In a Delhi High Court judgment of Pfizer Products Inc. vs Rajesh Chopra[3], the plaintiffs filed a suit for infringement and passing off action on the defendants. In the instant case the propriety rights of a drug sold under the name of “Geodon” were challenged. The plaintiff registered the same in India on 18th July, 1996. The defendant, on the other hand, claimed proprietorship of ‘Geodon’ and use of the mark since 1st of June, 2003. One of the major contentions of the defendants was that the plaintiffs have failed to show use of the trademark since the registration and hence the mark is liable to be struck off from the register so as to leave a room for the defendant to market his product under the trademark. The balance of convenience favoured the plaintiff as it is a global player, selling the drugs by this name in more than 40 countries. Though, sale of those drugs in India could not be established, the importance of copying the trademark of such a global product in the field of medicine was established. Hence the trademark was not removed from the register.

In Vishnudas Trading as Vishnadas Kishendas Vs. Vazir Sultan Tobacco Co. Limited[4], the Supreme court laid down that “a trader or manufacturer who is trading in or manufacturing only one or some of the articles or goods under a trade mark and has no bona fide intention to trade in or manufacture the other articles or goods falling under that class but has obtained registration of its trade mark under that class which covers several other articles or goods, held, registration liable to be rectified by confining it to the specific articles or goods which are actually intended to be traded in or manufactured.” In the instant case, the application was filed to limit the use of trademark “Charminar” to the manufactured class of cigarettes. The registration was obtained in zarda and quiwam too, in which the applicant wished to use the trademark. The court applied the provisions of non-use and ordered rectification in the register.

In another case decided on 6th January 2012[5], a trademark of a company “Kellogg Company” possessing global recognition was directed to be removed by IPAB for non-use for 22 years. The appellants claimed that their products were basically chewing gum, bubble gum and dairy products which were not likely to cause confusion in the minds of consumer for the products of breakfast global giant “Kellogg”.

After scrutiny of these cases, we have a few suggestions to make. If you are a trademark owner, then the time to change the status of your trademark from “proposed to be used” to used shall depend on these few factor:

  • You have started popularizing your products/services, though the manufacturing has not yet started.
  • You have started proceeds relating to establish a market, like- hiring an authorized agent for marketing, etc.

For the purpose of initiating this change in the register, Form TM-16 has to be submitted along with a fee of Rs. 500 to the Trademark Registry. If you wish to initiate this change in someone else’s trademark then resort to Form-26 which has to be submitted with a fee of Rs.3000.

Thus, filing of this change (by Form-16) may result in enabling information to other parties who wish to take you to the court of law for “non-use” of the registered trademark even though it is already being used. Hence, saving your time and the time of court which spent on litigations pertaining to non-use.


[1] AIR 2003 SC 3377

[2] Corn Products Refining Co. v. Shangrila Food Products Ltd and Consolidated Foods Corporation vs Brandon And Company Private Ltd. [AIR 1965 Bom 35]

[3] 2007 (35) PTC 59 Del

[4] 1997 4 SCC 201

[5] M/s Pops Foods Products (P) Ltd. v. M/s Kellogg Co.

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The Copyright Amendment Bill, 2011: Proposed Impact on the Film Industry in India

With the recent developments in the Copyright Act and with the Rajya Sabha very recently passing the proposed amendments in the Copyright Act, 1957, we thought of aggregating the major issues with the current version of the Act and the proposed changes in the Act, and how such changes might impact the overall rights of the stakeholders, particularly the ones in the Music and Media Industry. Here is what Rupkatha Basu, an Intern at Khurana & Khurana and 3’rd year student at KIIT School of Law, Bhubaneswar has to say:

When the legendary lyricist Javed Akhtar raised a furor demanding Amit Mehra and Apoorva Lakhia to seek permission from him before opting to remake the cult Bollywood movie Zanjeer, the question arose, is his demand lawful or even justified? The argument that Akhtar raised based on the moral rights of the creator may hold good in his case, but the right to integrity as u/s 57 of The Copyright Act,1957 definitely perishes once the work is made a part of a cinematograph film. There is increasing demand in the film industry to give more rights to the performers, the composers, the lyricists and most importantly the directors. This is because at present, producers of films are keeping all rights with themselves. As a result the lyricists and singers are not getting royalty in case their works are used for commercial purposes.

In the wake of such a scenario comes, The Copyright Amendment Bill, 2011. It was first introduced in the Rajya Sabha in November, 2010 but later on was recommended to the Parliamentary Standing Committee. The PSC has put forth certain recommendations and the final result is the Amendment Bill, 2011.

The Present Law

Section 2(d) of the Copyright Act, 1957 states that in relation to a cinematograph film or sound recording, it is the producer who is the sole author of the work. Reading section 17 along with this, it becomes clear that the producer is the first owner of the copyrighted work. It leaves no doubt that it is he who solely has all the rights and thus only he can assign or transfer it. The lyricist, composer, artists, script-writer, even the director are appointed by him and thus he also holds the copyright being the employer since the work has been created during the course of the employment. The Director, though being the brain behind the film, does not hold any right whatsoever on the movie other than the moral rights. He is not a performer within the meaning of section 2(qq) and thus cannot claim rights u/s 38 of the Act. In fact, as per section 38(4), once a performer has consented to the incorporation of his performance in a cinematograph film, all rights u/s 38 are denied to him.

Presently, the lyricist or the composer of the song receives no royalty once the song has been incorporated in a cinematograph film. This is the position subsequent to the decision of the Hon’ble Supreme Court in its landmark judgment Indian Performing Rights Society Ltd. v. Eastern India Motion Pictures Association[1] (IPRS Case). In the afore-mentioned matter the Copyright Board initially decided that composers and lyricists retained copyright in their musical works incorporated as sound tracks in cinematograph films and thus can collect fees, royalties and charges with respect to those films. On appeal, the High Court set aside the decision of the Board. Finally, the Supreme Court held that interpreting section 17(b) and (c) in terms of section 13(4) would mean that the rights of the music composer and lyricist are defeated by virtue of the producer becoming the first owner of the copyright. If the author of a lyric or musical work authorizes a film producer to make a cinematographic film on his composition, he cannot later claim copyright infringement.

The Road Ahead: The Copyright Amendment Bill, 2011

The Amendment aims to bring the Indian law in conformity with the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.

The 2010 Bill is aimed to give authorship not only to producers like UTV Motion Pictures but also to directors like Imtiaz Ali and Sujoy Ghosh who actually make the movies. It was proposed to amend sub-clause (v) of section 2(d) to acknowledge both the producer and the principal director as the “authors” of a cinematograph film. But this has been deleted from the 2011 version of the Bill on the recommendation of the Parliamentary Standing Committee.

It is further proposed to insert a “Proviso” to section 18 prohibiting lyricists and composers from assigning away their right to receive royalties other than to the legal heirs or to a copyright society for the collection and distribution. Sub section 9* is also to be added to section 19 providing that no assignment of copyright in any work to make a cinematograph film or sound recording shall affect the right of the author of the work to claim equal royalties with the producer in case of utilization of the work in any form other than as part of cinematograph film or sound recording. This is definitely going to benefit lyricists, composers, scriptwriters when their work is being used outside the movie viz., in commercials. Such modifications were suggested to bring about greater clarity in matters related to royalty.

The Bill proposes to insert section 38A and 38B replacing section 38(3) and (4). These aim to give exclusive rights to the performers and introduce moral rights for them as well. It says that once the performer has consented to the incorporation of his performance in a cinematograph film, he cannot object to the enjoyment of the performer’s rights by the producer.[2] But the “proviso” to it reads that the performer will still be entitled to royalties in case of making of the performance for commercial use. In both UK and US, royalties accruing by utilization of a copyrighted work in a cinematograph film are the legitimate right of the lyricist or the composer.

Section 38B has been proposed in consonance with the existing section 57 which gives moral rights to the author. If the Bill is passed by the Parliament and receives the assent of the President, even the performers can claim moral rights. Injunction or damages can be claimed for mutilating any performance. Thus, when films like Agneepath are remade, the performers of the earlier film can claim damages if their performance is deteriorated by the subsequent performance. Thus, Amitabh Bachchan can definitely have a case if he finds that the remake is by anyway degrading his performance.

Conclusion

The Bill has received widespread support from the International Confederation of Authors and Composers[3]. The restriction on the assignment of the right to royalty may be argued to be in violation of freedom of contract granted as an extension to the freedom of trade guaranteed by Article 19(1)(g) of the Indian Constitution but in reality it is just a reasonable restriction as other welfare legislations like the Minimum Wages Ac, 1948.

The amendment providing joint authorship to the director was required since the film is essentially a director’s brainchild. Moreover, there is no other way provided in the Bill to protect the interests of the Director.

The Bill is no doubt a necessary change required to undo the injustice caused by the IPRS case and to implement the observation made by Justice Krishna Iyer where he had categorically asked the legislature way back in the ‘70s to do something to help the authors and music composers who are left in the cold


[1] 1977 SCR(3) 206

[2] Section 38A(2) to be inserted by the Copyright Amendment Bill, 2011

[3] Kirti Dahiya, Cinematographic Lyricists Right to Royalty: Myth or Reality? Journal of Intellectual Property Rights, Vol.6, July, 2011 available at http://nopr.niscair.res.in/bitstream/123456789/12448/1/IJPR%2016%284%29%20335-340.pdf  visited on 14.05.2012