Category Archives: Trademark

Khurana & Khurana expands footprint in South East Asia

With business models over the world turning more idea-driven, Intellectual Property Rights (IPRs) are now one of the most valuable assets for any economy. With a significant increase in IPR related activities, South East Asia is developing as a key market for IP Protection and initiating Enforcement actions. Khurana & Khurana, Advocates and IP Attorneys (K&K) one of the leading IP and Commercial law firms in India is committed to provide high quality consistent End-to-End Legal Services in IP and Corporate Legal Matters, and with a belief that success comes only when one has a long-term perspective and high level of client orientation, we are expanding our footprints in South Asian countries (Bangladesh, Vietnam, Myanmar, Nepal) with our strong associations with an objective of being a single-point of contact for IP Prosecution Matters in South-East Asia.

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About K&K

Khurana & Khurana, Advocates and IP Attorneys (K&K) is more than a full-service Intellectual Property and Commercial Law firm.  K&K was formed with a very firm focus on providing end-to-end IP Prosecution/ Litigation and Commercial Law services in a manner that is Corporate Centric and follows stringent delivery practices that are consistent and are above-defined quality standards. K&K works closely with its sister concern IIPRD, both of which supplement each other in order to provide end-to-end IP Legal, Offshored IP Support, and Commercialization/Licensing services to over 3000 Corporates.

Our team of over 95 professionals spread across 6 Offices in India having high level of technical and legal competence, gives us the right competitive edge and positioning, as a law firm focused on creating immense IP value for our clients. K&K, through its experienced and qualified team of Attorneys/Practitioners, across Technology and Legal Domains, gives a rare synergy of legal opinion, out-of-box thinking for the protection of ideas/IP’s and entrepreneurial spirits to its client base. K&K is strongly ranked and recommended by Chambers and Partners, IAM, MIP, Legal 500, Asia IP, among other like agencies, and is an active member of INTA, APAA, AIPLA, LES, and AIPPI.

Fighting with Counterfeit Menace: Montblanc Simplo GmbH vs. Gaurav Bhatia & ors. CS(OS) 2563/2013: Granting Injunctive Relief

Introduction:

It always has been a well known fact that the markets in India are targeted by large number of counterfeit products/goods. Popular brands like LV, GUCCI, Burberry, Armani, Hermes inter alia; are frequently pirated in local commercial markets. Among others, the most popular counterfeit products in market include hardware, software, clothing, watches, writing instruments.

At that backdrop, Indian system is striving hard to deal with the menace caused by the counterfeit products in the market which not only endangers country’s reputation and goodwill but also affect country’s financial market. Indian judiciary has timely made its presence felt by passing landmark judgments with various issues Indian market is facing. Recently, Hon’ble Delhi Court passed orders in one such case which dealt with counterfeit issue.

Facts of the case:

Delhi High Court in its recent judgment dated January 04, 2017 in the matter of Montblanc Simplo GmbH vs.  Gaurav Bhatia & ors. CS (OS) 2563/2013, The Court has restrained an electronic commerce web portal functioning under the Trade name “www.DIGAA.com”. The Defendant’s impugned website was alleged dealing with the manufacturing, selling and advertising of counterfeit Montblanc products which are registered under the Trademark of the Plaitiffs.

Background of the case:

Plaintiff:

A German company incorporated under the laws of the country having its registered office at Hamburg. The registered company named “Montblanc Simplo GmbH” has its work engaged in the manufacturing, distribution and sales of pens & other writing instruments under the registered Trade name MONTBLANC MEISTERSTUCK,. The plaintiff’s company Trademark also include “The Star Device” which is a white stylized six pointed star with circular edges and the “The three ring Device” comprised of three metallic bands located close to the middle of body of pen cap. The plaintiff’s company claims its product registered under proprietors name within India as well as other countries across the world.

In July 2013, the plaintiff through its office in India came to know that the said defendant was selling counterfeit products on a lesser rate from original product of plaintiff. The defendant represented his product as original product of Plaintiff Company. Hence, the present suit was filed.

Submission by the parties:

Plaintiff’s Submission:

  • Plaintiff claimed that his company is losing reputation and trust of his clients because of defendant’s counterfeited products. Plaintiff claimed to be suffering loss and demanded damage worth INR 2,005,000.
  • Plaintiff stated the price of original MEISTERSTUCK CLASSIQUE is INR 30,000 whereas the defendants were selling similar counterfeit product for INR 6,860.
  • Plaintiff in his submission stated that they purchased writing instrument, namely, the MEISTERSTUCK CLASSIQUE from the website defendant was using to sell the products, which were being sold at a discounted price and falsely represented as a product of the plaintiff upon examination that the product was a counterfeit.
  • It was submitted by the plaintiff that the defendant’s product is of inferior quality; also the refill used in Defendants instrument was different than that of original product. Defendant’s instrument has a different color combination than that of plaintiff. Also, the tip of the refill of defendant’s writing instrument has a plastic ball which is different than that of plaintiff’s original product. The serial numbers on the product were also fabricated by the defendant.

The defendants after filing their Written Statement stopped appearing in court and the suit was preceded Ex-parte.

Observation by the Hon’ble court:

  • Court observed some of the consumers complaints filed against the defendant including one customer who purchased counterfeited product from defendant and suffered subsequently lodged a complaint before the cyber cell of Chandigarh Police under section 420 & 406 of Indian Penal Code and section 66A of Information Technology Act.
  • Plaintiff’s brand name MONTBLANC is a well-known mark having goodwill and reputation in its market. It is also proved that public identified plaintiff’s product from its trade dress which includes “The Star Device” and “The Three Ring Device”.
  • Plaintiff also proved on record its notice published in India, and related information from the defendant’s web portal displaying counterfeit products of the plaintiff’s Trademark, They also attached the invoice alongside of the purchased products and photographs of counterfeit products and their warranty card.
  • The court observed that the plaintiff had proved that the defendant was counterfeiting its goods and thereby, infringing its Trademark.

Held:

The Hon’ble Court, in view of the above case granted relief of permanent injunction against the Defendants as sought by the plaintiff  and also passed a restraining order against them to restrain them from Passing-off their counterfeit products as that of plaintiff’s. However, the claim for damages was rejected by the court on the ground that Plaintiffs have not produced sufficient evidence to show the extent of actual damage suffered by the company. Hence, the judgment was in the favor of the plaintiff. Pertinently, it is important to note that in order to claim damages proper and sufficient evidence must accompany to get monetary relief against damages suffered.

About the author: Mayank Srivastav, an intern at Khurana & Khurana, Advocates and IP Attorneys

India’s time to delve into IP laws

Shireen Shukla, legal intern at Kkurana & Khurana, probes the recent International IP Index report, released by U.S. Chamber of Commerce, where India stood at 43rd position, out of 45 countries.

On 8th February, 2017 U.S. Chamber of Commerce released its 5th annual International IP Index, “The Roots of Innovation,” rating 45 world economies on patents, trademarks, copyright, trade secrets, enforcement, and international treaties with the aim to provide both, an IP report card for the world and a guidebook for policymakers seeking to bolster economic growth and innovation.

It is an undeniable fact that protection of intellectual property serves dual role in the economic growth of a country. Where on one hand it promotes innovation by providing legal protection of inventions, on the other it may retard catch-up and learning by restricting the diffusion of innovations. Therefore a sounder IPR protection in a country encourages technology development and technology transfer from developed to least developed countries. Countries that would demonstrate a commitment to IP laws will only reap rewards.

Often we have seen that major companies and brands invest their money or open their outlets in another country only after seeing the soundness of their IP laws. This proves the role of IP laws and enforceability on the GDP of a country.

GIPC is leading a worldwide effort to champion intellectual property rights as vital to creating jobs, saving lives, advancing global economic growth, and generating breakthrough solutions to global challenges  (Reddy, 2017). The Index ranked the IP systems of 45 countries. Where on one hand United States was ranked number 1, India and Pakistan were ranked 43 and 44 respectively.

Image Source: U.S. Chamber International IP Index: http://www.theglobalipcenter.com/ipindex2017-chart/#

 

Some major facts from the IP Index:

  • A pack of global IP leaders emerged among the 2017 Index rankings, with the U.S., UK, Japan, and EU economies, ranked more closely together than ever.
  • Canada signed the Comprehensive Economic and Trade Agreement (CETA), which raised the bar for life sciences IP protection.
  • Russia introduced new forced localization measures.
  • Japan’s score increased by 10% due to ratification of TPP and accession to the Index treaties.
  • South Korea passed amendments to the Patent Law.
  • Uncertainty around software patentability, Section 3(d) of the Patent Law, and High Court copyright decisions in India continue to present challenges.
  • Indonesia’s Patent Law included a heightened efficacy requirement and outlawed second use claims.
  • South Africa introduced new local procurement policies.
  • UAE created a specialized IPR Court.
  • Indian government issued the National Intellectual Property Rights Policy in 2016.

India announced the much-awaited National IPR Policy in May 2016. This act proved to be a positive attitude to foster the IP laws in India. The Policy is a boon for the IP industry as it provides constructive ways and methods to improve IP administration. The policy has enumerated the importance to educate Indian businesses about IP rights.

The Policy makers realizing the real issue in hand, addressed a number of important gaps in India’s national IP environment, which included the need for stronger enforcement of existing IP rights through the building of new state-level IP cells and investing more resources in existing enforcement agencies; reducing processing times for patent and trademark applications; as well as the need for introducing a legislative framework for the protection of trade secrets

Major developments and landmark judgments in Intellectual property laws since 2015:

  • The Delhi high court on 7 October 2015, barred Mumbai-based Glenmark Pharmaceuticals Ltd from selling, distributing, marketing or exporting its anti-diabetes drugs Zita and Zita-Met,as they tentatively infringed the patent of US-based pharmaceuticals company Merck Sharp and Dohme Corp.
  • In March, 2016, the Delhi High court in the case of Ericcson v. CCI for the first time ever, considered at how IP law interfaced with competition law. It allowed Competition Commission of India (CCI) to continue its investigation into anti-competitive practices by Ericsson regarding use of its SEP’s by other companies such as Micromax and Intex.
  • National IPR Policy in 2016, released last year is entirely compliant with the WTO’s agreement on TRIPS.
  • Examination time for trademarks has been reduced from 13 months to 8 months in the 2016 policy.
  • Bombay HC passed a series of judgments cases (Phantm Films pvt, Ltd. v. CBFC & Anr; Eros International Media Ltd. & Another v. Bharat Sanchar Nigam Ltd.) laid down a strict agenda for the grant of John Doe orders leading to path breaking shift in the John Doe jurisprudence in India. The above-mentioned judgments are focused on balancing the interests of not just copyright holders but also the Internet users and innocent third party providers.
  • The judgment by Bombay HC in Eros v. Telemax, is a pioneer that unwrapped the scope of arbitration of IP disputes arising out of licensing and other commercial transactions.
  • In December 2016, the Delhi High Court in the case of Agri Biotech v. Registrar of Plant Varieties declared section 24(5) of the Plant Varieties Act unconstitutional. The court giving a momentous judgment stated that the section violates Article 14 as it gives unchecked powers to the Registrar. The registrar is not required to be from a legal background in order to grant interim relief to a breeder against any abusive third party act during the period its registration application is pending.This lead to arbitrary use of powers by the registrar.

Beside the above-mentioned developments and progressions, PM Narendra Modi’s “Make in India” initiative also aims to promoting foreign direct investment and implementing intellectual property rights. In these initiatives, the government has decided to improve the intellectual property rights for the benefit of innovators and creators by modernizing infrastructure, and using state of the art technology.

One of the most recent and effective change brought in the trademark rules was on 6th march 2017, where the number of trademark forms have been reduced from 74 to 8 with an aim of simplifying the process of trade mark applications. The new rules promote e-filling of the trademark applications. The fee for online filing of the application is 10 per cent lower than that of the physical filing.

Steps India can take to strengthen its IPR laws:

  • India should implement speedy examination and registration procedures.
  • It should take effective steps to achieve the target of one month (as stated in IPR policy 2016).
  • The number of patent examiners and trademark offices should be increased to improve efficiency and disposal speed.
  • Section 3(d) of India’s Patent Act 1970, relating to restrictions on patenting incremental changes should be amended. Norms relating ever greening should also be revised.
  • A new and revised IPR laws and policies should be implemented so as to make it compatible with IPR laws of WIPO, TRIPS and other major dominant countries like US & UK

Every fiscal year, enormous time and money is being invested on R&D to improve the existing status of the Intellectual property laws in India, to bring it at par with the IP laws of US. We hope by following the above guidelines and following the National IPR Policy, India’s position improves in the next International IP Index 2017.

References :

  1. Prashant Reddy, The Press Release Journalism Around the GIPC IP Index, February 13, 2017, < https://spicyip.com/2017/02/the-press-release-journalism-around-the-gipc-ip-index.html&gt; Last accessed: 28th February 2017
  2. Merck Sharp And Dohme Corporation. v. Glenmark Pharmaceutical, FAO (OS) 190/2013, C.M. APPL. 5755/2013, 466/2014 & 467/2014, (Delhi High Court) (20.03.2015)
  3. Telefonaktiebolaget LM Ericsson v. Competition Commission of India, W.P.(C) 464/2014 & CM Nos.911/2014 & 915/2014, (Delhi High Court) (30.03.2016)
  4. Phantom Films Pvt. Ltd. v. The Central Board of Film Certification, W.P.(L) 1529 /2016, (Bombay High Court) (13.06.2016)
  5. Eros International Media Limited v. Bharat Sanchar Nigam Limited, C.S. No.620 /2016 & O.A.Nos.763 to 765/2016 (Madras High Court) (25.10.2016)
  6. Eros International Media Limited v. Telemax Links India Pvt. Ltd., Suit no. 331 /2013, (Bombay High Court) ((12.04.2016)
  7. Prabhat Agri Biotech Ltd. v. Registrar of Plant Varities, W.P.(C) 250/2009, (Delhi High Court) (02.12.2016)

 

NEPAL’S IP LAW: AN ENCAPSULATION

Intellectual property law in Nepal is comparatively new and it enjoys the extension provided for under the TRIPS agreement to the least developed country. The Patents, Designs and Trademarks are protected under one head, and the governing act/ legislation is known as “The Patent, Design and Trade Mark Act, 2022 (1965)” (hereinafter referred to as “Act”).

Trademarks

Section 2: Definitions: Unless the subject or the context otherwise requires in this Act:

“Trade-mark” means word, symbol, or picture or a combination thereof to be used by any firm, company or individual in its products or services to distinguish them with the product or services of others.

FILING PROCEDURE:

Step 1: Filing

  • Who may apply: Section 17:
  • Any person desirous to register the trademark of his business shall submit an application to the Department in the format specified in Schedule 1(C).
  • Document: Four specimens of the Trade Mark sought to be registered.
  • Fees: NPR 2000.

Trademark Application in Nepal can be filed in a single class only. Mutli-class Application cannot be filed.

Step 2: Investigation:

  • Section 18: When an application is received by the department, it conducts necessary investigation/examination and provides an opportunity of being heard to the applicant in case of any concerns/objections.
  • Examination is done with regard to distinctiveness, possibility of distinctiveness and conflicting trademarks.

Step 3: Grant/ Refusal:

  • If the department is satisfied with the application for registration, it shall register the trademark in the name of the applicant and grant him a certificate. Registration fees: NPR 5000.
  • It may conduct further inquiry/ investigation.
  • The mark shall not be registered/ registration is liable to be cancelled when the subject mark:
  • Hurt the prestige of individual/ institution
  • Adversely affect public conduct or morality
  • Undermine the national interest
  • Undermine the reputation of another’s trademark
  • Found to have already been registered in the name of another person.
  • If the registered trademark is not used within 1 year from the date of registration, the department may cancel the registration after conducting necessary inquiries.
  • The term of the registered trademark shall be 7 years from the date of registration.

Step 4: Publication:

  • Section 21A: The department shall publish the trademarks registered under section 18. Such publication is made in the Trademark Journal.
  • Anyone who has any objection to the same shall file a complaint to the department within 3 months from the date of such publication in Trademark Journal.
  • Necessary actions shall be taken by the department after conducting inquiries.

Step 5: Renewal and Cancellation

  • Renewal: Section 23B:
  • A trademark holder needs to renew the registration within a period of 35 days from the date of expiration of the term for which he is entitled to use the same.
  • The prescribed form is Schedule 2(F) and the fee is NPR 500 each time.
  • When the time limit of renewal expires, renewal may be done within 6 months from the date of expiry of the time limit for the same along with a fee of NPR 1000.
  • A trademark can be renewed indefinitely for a period of 7 years each time after a payment of renewal fee.

 

Patents

Section 2: “Patent” means any useful invention relating to a new method of process or manufacture, operation or transmission of any material or a combination of materials, or that made on the basis of a new theory or formula.

FILING PROCEDURE:

Step 1: Filing:

  • Who may apply: Section 3 and 4:
  • Any person desirous of having any patent registered in his name shall submit an application to the Department in the format prescribed in Schedule 1(A) containing the following particulars, along with all evidences related to the same in his possession:
  • Name, address and occupation of the inventor (person inventing the patentable subject matter)
  • If the applicant is not the inventor, then information as to how and in what manner has he acquired title thereto from the inventor
  • Process of manufacturing, operating or using the patent
  • If the patent is based on any theory or formula, then the same needs to be mentioned.
  • Maps or drawings, if any.
  • Application fees: NPR 2000

Step 2: Investigation:

  • Section 5: On receipt of an application for registration, the Department shall conduct all investigation or study to ascertain two things:

(a)  Whether the patent claimed in the application is a new invention or not

(b)  Whether it is useful to the general public or not.

 

  • Section 6: The Department shall not register any patent under this Act in the following circumstances:

(a) In case the patent is already registered in the name of any other person, or

(b) In case the applicant him/herself is not the inventor of the patent sought to be so registered nor has acquired rights over it from the original inventor, or

(c) In case the patent sought to be registered is likely to adversely effect the public health, conduct or morality or the national interest, or

(d) In case it is contradictory to the prevailing laws (the registration of the patent) will constitute a contravention of existing Nepal law.

The Examination/Investigation is of two kinds namely;

  1. Formality Examination- It is done to determine whether the application for patent fulfills the requirements of the same.
  2. Substantive Examination- It is done to determine the patentability of the invention, whether;

–  The claimed product/process is patentable or not.

–  The claimed invention is new i.e passes the test of Novelty.

–  The claimed invention is capable of Industrial Application.

– The invention involves a ‘innovative step’

Step 3: Grant/ Refusal:

  • If the Department is satisfied with the findings under Section 5, it shall register the patent in the name of the applicant.
  • In case, the Application does not fulfill the statutory requirements, a notice to the applicant is sent regarding the Rejection of Application.
  • Section 7: Issue of registration certificate:
  • When the registration of the patent is granted, the Department shall issue a certificate of registration in the name of the applicant in the format prescribed in Schedule 2(A).
  • The fee for the same is NPR 10,000.
  • Section 8: The term of the patent granted shall be 7 years from the date of registration.

Grounds of refusal/ cancellation of registration: Section 6:

  • The patent is already registered in the name of other person
  • The applicant is not the inventor of the subject matter of the patent and has not acquired rights over it from the original inventor
  • The patent sought adversely affects public health, conduct or morality, or national interest
  • The patent sought is contradictory to existing Nepalese laws.
  • The applicant will be provided a reasonable opportunity of being heard before the department cancels the registration of the patent.

Step 4: Publication:

  • Section 7A: All patents registered under the Act, except those that are kept secret in the national interest, shall be published in the Nepalese Gazette by the department.
  • In case of objections, the complaint may be filed within 35 days from the date of seeing or copying the Patent, and thereafter, the Department shall conduct necessary inquiries and take further action. The fee for complaints and objections is NPR 1000.
  • In case anyone wants to see or copy the particulars, maps or drawings of a patent, he can do so by paying the prescribed fee of NPR 750.

Step 5: Renewal

  • Section 23B: Renewal:
  • A patent holder shall renew the registration within a period of 35 days from the date of expiration of the term for which he is entitled to use the same.
  • The prescribed form is Schedule 2(D) and the fee for
  1. First time: NPR 5000
  2. Second time: NPR 7500.
  • When the time limit of renewal expires, it may be done within 6 months from the date of expiry of the time limit for the same along with a fee of NPR 1000.
  • A patent can only be renewed twice for a period of 7 years at a time.

 

FILING CONVENTION PATENT APPLICATIONS IN NEPAL:

Nepal being party to Paris Convention since June 2001, an applicant desirous of filing patent application in Nepal claiming priority from one or more convention countries based on same invention may file such application within 12 months from the date of earliest priority. Pertinently, Nepal is not a member of PCT (Patent Cooperation Treaty).

 

Designs

Section 2:

“Design” means the form or shape of any material manufactured in any manner.

FILING PROCEDURE:

Step 1: Filing:

  • Who may apply: Section 12 and 13:
  • A person desirous to register the design of any article manufactured or caused to be manufactured, shall submit an application in the format specified in Schedule 1 (B) to the Department.
  • The applicant shall also furnish four copies of such design and maps, and drawings and particulars thereof.
  • Fees: NPR 1000.

Step 2: Examination

This involves “Formality check” and “Substanstive check” –

  1. Formality Check- An application is submitted to check if the statutory formalities and procedural requirements are fulfilled.
  2. Substantive Check- After the formality check, a substantive examination is carried out, weather ;

–  There is existence of a prior application or registration of the same.

–  Such design will hurt the prestige or interest of an individual or institution or conduct of public or morality of undermines national interest.

If either of the above mentioned points are

Step 3: Grant/ Refusal:

  • Section 14: On receipt of the application filed by any person under Section 13, the Department shall register the design in the applicant’s name and issue a certificate of registration in the format specified in Schedule 2(A). i.e If it has passed the stage of Examination.
  • In case, the Application is rejected, a Notice of Rejection is sent to the Applicant.
  • Registration fees: NPR 7000.
  • The term of a registered design is five years from the date of registration.
  • Renewal: Section 23B:
  • A design holder shall renew the registration within a period of 35 days from the date of expiration of the term for which he is entitled to use the same.
  • The prescribed form is Schedule 2(E) and the fee for
  1. First time: NPR 1000
  2. Second time: NPR 2000.
  • When the time limit of renewal expires, it may be done within 6 months from the date of expiry of the time limit for the same along with a fee of NPR 1000.
  • A design can only be renewed twice for a period of 5 years at a time.

Step 4: Publication:

  • Section 21A: The department shall publish the designs registered under section 14, along with their particulars of renewal or cancellation.
  • Anyone who has any objection to the same need to file a complaint to the department within 35 days from the date of such publication.
  • Post receiving the complaint, Department takes necessary actions after conducting inquiries.

Step 5: Renewal/ Cancellation

Grounds of refusal/ cancellation: Design is liable to be refused or cancelled, if the design or design registration, as the case may be:

  • Hurt the prestige of individual/ institution
  • Adversely affect public conduct or morality
  • Undermine the national interest
  • Found to have already been registered in the name of another person.
  • The design holder will also get an opportunity to show cause as to why his registration must not be cancelled.

Simplified account of Trademark Registration in India

We had written an article giving a simplified account of Patenting procedures in India to enable readers who are new to the Patents. Similar attempt is being made here to provide answers to the Trademark FAQs so as to enable readers who are new to the Trademark.

  1. What is trademark? What is mark? What are some examples?

Answer: Trademark can be defined  as “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours;..”.

“Mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

Below are some examples of trademarks:

  1. Word: IBM, Google
  2. Fanciful designation: Kodak
  3. Names: Disney
  4. Slogan: Hum hain na! (ICICI bank limited)
  5. Device: pepsi_2007
  6. Number: the 4711 cologne

7.Picture:   lacoste-logo-880x660 Lacoste logo

Registering your trademark helps you secure exclusivity over your mark, helps you get geographical coverage throughout country/region of registration, gives you a complete defence that you are not infringing rights of other person, helps you create brand value.

  1. What does trademark-logo1 and  registeredtm-svg  signify, when can we use them?

Answer:  trademark-logo1 is used to indicate that the trademark is unregistered but this mark is used for promote goods. trademark-logo1 can be used even for trademarks for which registration is not applied to claim use over it.

 registeredtm-svg is used to represent a registered trademark/ service mark that provides the applicant complete ownership and legal rights over the trademark/ service mark.

  1. Who can apply for trademark? Where should trademark application be filed?

Answer:  An application can be made for registration of trademark actually used or proposed to be used by any person claiming to be proprietor of the trademark. In India, for facilitation of the registration of the trademarks, Trademark registry operates from five locations i.e. Delhi, Mumbai, Ahmadabad, Kolkata, and Chennai.  In case of Indian applicants, jurisdiction is decided based on the principal place of business of applicant and in case of foreign applicants, jurisdiction is based on where applicant’s agent or attorney is situated.

More info about jurisdiction and locations of Trademark registry can be obtained from by visiting http://ipindia.nic.in/tmr_new/location_jurisdiction.htm .

For e-filing, manual available at https://ipindiaonline.gov.in/trademarkefiling/UsefullDownloads/User_Manual_etrademarkfiling.pdf may be referred.

  1. What are the general stages of trademark registration?

trademark-flowchart

  1. An optional initial trademark search (identical search or similarity search) may be conducted on the government
  2. Once there is a go ahead for trademark filing, an application for Trademark will be made through relevant forms provided by the trademark office/ Registrar of
  3. In the next step, the trademark office will issue an examination report and formality check report to communicate objections or to request clarifications with the There is no need to file request for examination i.e. examination of trademark is automatic. In this examination report, mark is examined basically on three grounds i.e. distinctiveness, descriptiveness and similarity to the prior marks. To qualify for registration, mark should be distinctive, non-descriptive, and there should not be any similar prior marks.
  4. A reply has to be made to the trademark office in lieu of the reports that may be accepted or may be followed by a The applicant or agent if appointed is required to respond to the examiner’s objection(s) within a period of one month from the date of receipt of Examination Report. Failure to respond to examination report within this specified period can lead to abandonment of application.
  5. If the trademark office is satisfied that the trademark request complies with all the necessary provisions under the act, the mark is advertised before
  6. Once the mark is advertised in trademark journal, it is open for a period of 4 months for third parties to
  7. If no opposition is received during the specified period, the Trademark is deemed to be
  8. Once registered, there is no post-grant opposition.

 

  1. Is the registration of trademark compulsory?

Answer: No. Registration of a trademark is not compulsory. However, the registration is the prima facie evidence of the proprietorship of the trademark under registration. However,  it is to be noted that no suit can be instituted for infringement of unregistered trademarks. For unregistered marks, action can be brought against any person for passing off goods or services as the goods of another person or as services provided by another person. The latter is said to be common law right.

  1. Can a registered trademark be amended at later date?

Answer: Yes, the filed mark is allowed to be amended as per the provision of Section 22 of the Trademarks Act, which allows the amendment of the mark provided it does not amount to a substantial change in the character of the mark as such. It is practice of the Registrar of Trade Marks that if the mark applied as a label mark, any superficial or insignificant character or feature of the said mark, is allowed to be amended, if a request filed in the prescribed format along with 16 copies of the amended label mark.

  1. What is collective Trademark?

The collective mark is owned by an association of persons not being a partnership. It belongs to a group and its use therefore is reserved for members of the group. The primary function of a collective mark is to indicate a trade connection with the association or organization who is the proprietor of the mark. Section 63 of Trademarks Act, 1999 and Rule 128 of the Trademarks Rules, 2002 deal with this.

  1. What is Certification mark?

The purpose of a certification trade mark is to show that the goods or services in respect of which the mark is used have been certified by some competent person in respect of certain characteristics such as Origin, mode of manufacture, quality etc. Section 74 of Trademarks Act, 1999 and Rule 135 of the Trademarks Rules, 2002 deal with this.

  1. What are the modes of filing trademark internationally? Can a foreign applicant claim the priority based on earlier application?

Answer: International registration of trademark is facilitated through Madrid Protocol which allows trademark application in one country/region to take priority from trademark application filed in other country/region. This priority has to be claimed within six months. India is member of the Madrid Protocol with effect from July 08, 2013.

  1. Once registered for what period of time, a trademark is effective? Can a trademark registration be renewed?

Answer: The registration of a trademark is valid for a period of 10 years. It can be renewed every 10 years, perpetually. In India, renewal request is to be filed in form TM-12 within six months before the expiry of the last registration of trademark. If renewal fee is not paid till the expiration of last registration, surcharge has to be paid along with prescribed fee accompanied to form TM-10. If renewal fee along with surcharge is not paid till the expiry of six months after expiration of last registration, trademark is liable to be removed. Once removed, restoration of trademark can be requested in form TM-13 along with prescribed fees and applicable renewal fees. TM-13 can be filed from six months of expiration of last registration till the expiry of 1 year from the expiration of last registration.

  1. Is the trade mark liable for removal on the ground of non-use?

Answer: Yes, a registered trademark can be removed on the basis of non use. Except as excused in clause 3 of section 47 of trademarks act, 1999, a trade mark may be removed on the ground of non-use if:

  1. that the trade mark was registered without any bona fide intention and was not used till a date three months before the date of the application for removal; or
  2. trademark was not used for a continuous period of five year from the date of registration of trademark and application was made after three months from the expiry of five years.

  1. Is the sound or smell registrable as trademark? How are these marks specified?

Answer: Yes, sounds or smells are registrable as a mark. However, they should be capable of being reproduced graphically and should be distinctive. Sound can be represented as musical notations along with the sound recording Smell can be represented as chemical formula along with the sample.

  1. Is a three-dimensional mark registrable?

      Answer: Yes, a three-dimensional mark is registrable.

  1. What is classification of goods adopted in India?

Answer: International Classification of goods and services (Nice Classification) is adopted in India.

  1. What are the grounds for refusal of registration of trademark?

Answer:  Section 9 of the trade marks act, 1999 provides absolute grounds and section 11 provides relative grounds for refusal of registration of India. Trademark laws mandates trademark to be distinctive and non-descriptive in order to get registered. Rationale behind this provision is that non-distinctive or descriptive marks can’t be granted monopoly being generic to the trade and are open for public use without any exclusive rights over the same. Some of the examples of non-distinctive or descriptive marks are give below:

  1. Dalal street for financial services
  2. Best restaurant for food services
  3. Strong furniture for furniture
  4. High tech for technology related goods/services

  1. Can a registered user restrain third party from using identical or similar mark if third party is continuous and prior user of the mark?

Answer: A registered user can’t restrain third party from using identical or similar mark if third party has been continuously using the mark in relation to the same goods or services for which mark of registered user is registered provided third party has been using the mark from a date prior to date of use of registered mark or date of registration, whichever is earlier.

 

  1. Before applying for registration, where can search be done to check if identical or similar marks already exist?

Answer:  In case you wish to carry out your own search (identical as well as similarity), following are the recommended steps for the same:

At the first step, you may check your mark’s availability on a free government portal using the following steps:

  1. Go to the government search portal : https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx
  2. Select the relevant class of search from a list of 45 different business classes listed here: http://ipindiaonline.gov.in/tmrpublicsearch/classfication_goods_service.htm

For  Wordmark:

  1. Search using the “Contain” in the drop-down instead of “Start With” to have a broader
  2. Please note that Trademark Registry will also object if the name is similar Thus, for better results, search similar sounding words as well. Example: A keyword like Kryzal can have following terms that are similar sounding: Crizal, Cryzal, Creezal, Crisal, Crysal, Creesal, Krizal, Kreezal, Krisal, Kreesal, Krysal.
  3. Also note that the website often encounters downtime error, and sometimes shows “no record found” while that is And thus a minimum of 2 time confirmation is recommended if such a scenario occurs.
  4. Please note that the normal update in the portal is done on an average period of one Thus recent filings will not reflect in the search.
  5. If you find any result similar to your mark and the same/ similar class or same similar business description, the name is recommended to be changed to avoid any objection/opposition during the trademark registration

For Logo:

  1. For a logo, Vienna code classification search is to be carried The relevant Vienna code class can be searched on this interface: http://www.wipo.int/classifications/nivilo/vienna/index.htm#  by clicking on the search button (top left) and then enter the keyword (top right), followed by browse through the category to identify relevant Vienna Classification.
  2. Once the relevant Vienna code is found out, please enter the same in the Search interface using dropdown to select Search Type as “Vienna Code” instead of “Wordmark”
  3. Enter the Relevant Vienna Code in the following format: 1.1.1 will become 010101 while 1.2.12 will become 010212.
  4. Enter the relevant class and Relevancy criteria will be similar to the wordmark

THE ORIGIN STORY OF “SUPERHERO”

Ms. Sakshi Sharma, an intern at Khurana & Khurana looks into recent opposition matters pertaining to the Trade Mark Superhero of DC and Marvel.
Upon uttering the word Superhero, pretty obviously all you can picture are comic books or movies, the characters themselves or the two comic book giants which are constantly at loggerheads with each other, Marvel and DC. Hence, it comes as no surprise that the trademark of Superhero is registered by both of them. Yes, you read it right, both of them.
The instances of jointly registering trademarks are rare but not unknown and the words “Superhero” or “Superheroes” (and the diametric opposite i.e. Super villain) and all alternate versions involving these words are all registered as trademarks of Marvel and DC both. In fact, if usage of the trademark in this very article could amount to trademark infringement, provided that it is used for commercial purposes and unjust enrichment by means of free riding on the good will of the owner of the marks.
Through the years, Marvel or DC has pursued litigation against people for infringement of their trademark, the most recent being where a British Businessman was sued for the title of his book, “Business Zero to Superhero” and he won the suit. More about this can be read from here . But this suit has led to looking closely into the very existence of this trademark and on whether this is actually beneficial or not, both to the consumers and the owners of the mark.
Although joint ownership is not recognized in trademarks, in the year of 1979, Marvel and DC had applied for the mark and were granted so by the United States Patent and Trademark Office in the year 1981. The mark governs publications, but basically comic books and magazines. Also, cardboard stand-up figures, playing cards, paper iron-on transfers, erasers, pencil sharpeners, pencils, notebooks, stamp albums, and costumes. Since the ‘80s, they have owned the mark, and were granted renewal in 2009 last . Now, one can’t just register and renew the mark but must also take progressive steps to protect the mark from parties infringing, thus avoiding an opportunity of Trademark Office or the courts to state instances where the Comic Book houses (DC and Marvel) have failed to restrict the usage of the mark to themselves and thus use it against them.
There had been few popular instances which are noteworthy, apart from the above mentioned case of the British author’s book are, Superhero Cleaners, a house cleaning service where the employees were supposed to be dressed in the traditional tights and capes of a Superhero but Marvel and DC had sent them a notice when they attempted at registering their service under the Trademark of Superhero Cleaners, and their registration was subsequently abandoned.
Superhero Donuts, where two students aimed at selling donuts inspired not from comic books (and to avoid Marvel/DC from holding them for trademark infringement and to skip the line of usage permission) but from the heroes of the Bible. However, the term Superhero is still used by them.
Other instances include – Cup O’ Java Studio Comics being sued for their book, “A world without Superheroes” or how “Superhero Happy Hour” was changed to “Hero Happy Hour”. More cases can be read here
Now, the problem with the registration of the term “Superhero” with these two companies is that, firstly, the trademark and resultant rights arising from this are highly generic in nature. Take instances of Xerox or Frisbee, which unique terms in themselves have been so oftenly used that they are now used to denote a photocopy and a flying disc based toy and common association by the consumers is an essential to note here. Thus, in my opinion, the term Superhero, is neither an invention of a new term or any element of uniqueness, thus making the mark generic, not only by means of common usage but because of lack of the new creative element as well.
However, if the term superhero is considered to be generic then why hasn’t the Court struck it down yet. Further, drawing from the examples of Xerox and Frisbee itself, the companies still do own the trademarks, despite them becoming really common among the public. To decide on whether the mark is generic or not, what must be looked at, is the way it is used as in the registration of the mark itself, it is defined as descriptive and has been used that way by both the houses. In addition to this, there exist other superheroes that are famous and do not belong to either DC or Marvel, like Hell Boy or Spawn or Teenage Mutant Ninja Turtles and all of them are pretty famous amongst the masses as comic books or licensed movies. Therefore, though Marvel and DC comics are associated with “superheroes” the claim that the public associates the term “Superheroes” with these two houses only, in my opinion, is a feeble ground, thus rendering the claim of the mark as invalid.
Secondly, the concept of trademarks works in the way of protection of the product name and goodwill of companies by means of consumer recognition and since there are two competing houses registering for the same mark, it goes against the very nature and essence of trademarks being identification of a single source for the good. Apart from this, this registration can also be viewed as a market strategy by means of two houses monopolizing on the mark, thus eliminating competition. This registration thus, just seems unfair to small businesses, which is explained in detail in this article by Ross D. Petty where he states instances as to how Marvel and DC comics often bombard the smaller businesses with notices, thus leading to them abandoning their registration application.
The concept of joint ownership in trademark law is not new, but still is rare. There are three instances where the joint ownership of a mark is permitted. The first is in the context of a “composite mark” used by a joint venture where two unrelated entities may form a single joint venture, licensing their intellectual property, including trademarks, to that joint venture for use in the market. The second situation is “concurrent use,” whereby two parties are granted separate registrations, permitting them to use the same mark in connection with a similar product albeit in different geographic markets. The third scenario is when joint ownership is permitted and appears to extend logically from the classic Menendez doctrine: a trademark registration may be jointly owned by, and the goodwill associated with the mark apportioned among, the heirs of a unitary owner.
The joint ownership of the mark by DC/Marvel was not evolved overnight and in fact, both the competing houses had originally decided to battle for the owning the mark as well, by filing separately for the same. However, both these houses (and their smart lawyers) realized that the other would be using the mark as much as the one owning it, thus competing against one another in the courts for something as simple as the name of the book that they are publishing as well. To minimize this and the confusion at the source, joint registration of the mark was allowed and the rest they say is history.
In conclusion, whether or not this mark is actually a means of eliminating competition by limiting their usage of the term “Superhero” or is exploitative to smaller businesses or is what two owners of a registered mark do as their genuine duty for the protection of the mark is something that needs to be decided by the courts as and when disputes arise on a case to case basis but the recent case is a glimmer of hope, an exception to the usual rulings and stands true to one of the principles that “Superheroes” embody, nothing is impossible.

SEVEN TOWNS V. KIDDLAND: DELHI HIGH COURT ON TRADE DRESS PROTECTION

The concept of trade dress, although closely associated with trademarks is not explicitly recognized in Indian legislations unlike its U.S.A. counterpart. In Indian context, upon looking closely at the definitions of “mark” and “package” under S. 2 of the Trade Marks Act, 1999 we see that the trade dresses are also protected.

To define it, trade dress is the visual or sensual experience of a product and is inclusive of the packing, shape and combination of colours used in packaging, such that it distinguished the product from the ones of its competitors. So anything from the wrapping of Cadbury chocolates to the design of flagship stores of Apple Inc. would fall within the ambit of trade dress now.

A landmark case discussing the concept is the case of Walmart Stores v. Samara Brothers[i] where trade dress was defined as “a category that originally included only the packaging, or ‘dressing,’ of a product, but in recent years has been expanded by many courts of appeals to encompass the design of a product.”

However, the case of Vision Sports Inc. v. Melville Corp.[ii] draws a distinction as to the protection of trade dress and trademark protection wherein it was held that – In contrast, trade dress involves the total image of a product and may include features such as size, shape, colour combinations, texture, or graphics. Trade dress protection is broader in scope than trademark protection, both because it protects aspects of packaging and product design that cannot be registered for trademark protection and because evaluation of trade dress infringement claims require the court to focus on the plaintiff’s entire selling image, rather than the narrower single facet of trademark. This was also reiterated in the case of Colgate Palmolive v. Anchor Health[iii].

In the recent case, Seven Towns v. Kiddland[iv], the concept of trade dress is discussed in detail along with comments on the previous case laws discussing the same subject matter. The dispute is with regard to infringement of trade dress of the Rubik’s cube by the product of the defendant called Rancho’s cube, in terms of not only the product in itself but also the packaging and labeling.

Brief Facts of the case:

The plaintiff in this case, Seven Towns and Funskool are the original manufacturers and distributors of the product called “Rubik’s cube” which has been sold since 1975, all across the globe. The inventor of the cube, Mr. Rubik had the invention of the toy patented, in addition to the product being trademarked after his own name, after an amendment to the original name of “Magic Cube”. The plaintiffs allege that the defendants have used a deceptively similar trade dress to that of their product in order to confuse the consumers and take undue advantage of their goodwill. Hence Plaintiff filed suit for permanent injunction, restraining infringement of copyright, passing off, dilution, and various other reliefs against the defendants along with the application for seeking various interim reliefs against the defendants.

Arguments of the Petitioner:

In order to prove that the defendants have used a deceptively similar trade dress to that of Plaintiff’s  product in order to confuse the consumers and take undue advantage of their goodwill, plaintiffs in the form of a table shown the similarities in the packaging of their product with that of the defendant like – copying of the diagonal shape of packaging which gives an impression of a 3D triangle bulging out, the usage of 6 primary colors to denote the product’s name, its font and a label that denotes the appropriate age for the product being placed at the lower left hand of the label to name a few. The Plaintiffs did not claim rights over the cube per se, but the expression of the cube i.e. a cube comprised of 36 smaller cubes, 3X3X3 cube with black as its base and green, red, blue, yellow, white and orange being the different colors on each surface of the cube. The petitioners also rely on the fact that they have obtained considerable goodwill and reputation in the market as manufacturers of the cube and how they have been vigilantly acting against any company that infringes their product, in addition to the worldwide recognition and reputation wherein the toy in itself is referred to “Rubik’s cube”. This petition is thus presented before the High Court against the defendants for the tort of passing off and infringement of trade dress, which has resulted in considerable loss to the plaintiff. The plaintiff further relied on the case law of Ideal Toy Corporation v. Plawner Toy Mfg. Corp.[v] where the U.S. Court of appeals relied on acquired distinctiveness and trade dress serving the purpose of identification of source, apart from determining the trade dress of the plaintiffs and how it was considerably reputed and recognized. Further reliance is also placed on the case law of Heinz Italia v. Dabur India Ltd.[vi] which states that an injunction must follow where it prima facie appears that the adoption of the mark in itself was dishonest, thus praying for the interim relief of an injunction against the defendants.

Arguments of the Defendants:

The defendants denied that the trade dress of the plaintiff is distinctive or well recognized and hence, the same cannot acquire goodwill or be reputed. They also claim that the product is not of superior quality and that they have substantially invested in the advertising of their product. A dissimilarity table is produced on behalf of the defendants and reliance is placed on the sale of units, the difference in price to show that the plaintiffs wish to eliminate the serious competition that they fact from the defendants. The defendants also mention the difference in name, in the place of manufacture as points of distinction in addition to stating that the trade dress of the plaintiff fails to be a well known mark as specified under s. 11(6) and s. 2(zg) of the Trade Marks Act, 1999 as the plaintiffs have failed to provide any documentary proof of the same.  The defendants further bring forth the concept of trans-border reputation stating that “The trademark registrations in other countries would show that the trade dress of the Rubik’s Cube enjoys statutory protection, recognition and popularity in a significant number of countries worldwide. The goodwill and reputation as part of products of plaintiff No.1 in India and its recognition and popularity has seeped into India on account of transborder reputation.”[vii] The defendants further rely on several judgments to show that trade dress must be examined in its entirety and not looking at specific elements like L’oreal India Pvt. Ltd. v. Henkal Marketing India Ltd.[viii] and Kellogg Company v. Pravin Kumar Bhadabhai[ix] and the case law of Frito Lay India v. Uncle Chips Pvt. Ltd.[x] which states that competition must be free. Additionally, reliance is placed on s. 15(2) of the Copyright Act, 1957 and the case of Microfibres Inc v. Girdhar Co.[xi] which states that copyright ceases to exist when more than 50 copies of the product are made. In addition to this, the defendants also state that only colors cannot be monopolized as they are not distinctive and lack creative or artistic input, relying on Colgate Palmolive v. Anchor Health.[xii] Further, the primary colors of the cube are a functional element of the puzzle and cannot be monopolized. The defendants also allege that the patent to the invention of “Magic Cube” has expired and the product is now in the public domain. Furthermore, reference to the puzzle as “Rubik’s Cube” is not an indicative of the reputation and good will that the product carries, quoting the examples of packaged drinking water being known as ‘Bisleri’ commonly and photocopies being called ‘Xerox’. The defendants also rely on Cipla v. M.K. Pharmaceuticals[xiii] to indicate as to how the trade dress of medicine worked in favour of the second entrant to the market.

Observations & Conclusions of the Court

Manmohan Singh, J. decided the matter on September 6, 2016 making interesting observations with regard to the general nature of trade dress, deciding on the test against which passing off and deceptive similarity must be determined, the extent of unfair trade practice by the second or subsequent entrant in addition to the actual dispute of granting of an interim relief to the plaintiff on the existence of a strong prima facie case.

In the case of Hodgkinsons and Corby v. Wards Mobility[xiv], the English courts had held that the test for determination of passing off was a 3 step process where – the plaintiff must have considerable goodwill in the market, there must be misrepresentation by the respondent and there must be consequent damage caused to the plaintiff. Justice Singh relies on Microlube India Ltd. v. Rakesh Kumar Trading as Saurabh[xv] to state that regardless of subsistence of design right or its exhaustion, a passing off action can lie in given cases and discusses the observations of the case of Laxmikant V. Patel v. Chetanbhat Shah and Another[xvi], to state that passing off would be when a competitor initiates sale of goods and services in the same name or imitates the name causing injury to the business of the one who has property in that name. While commenting on the general nature of trade dress and thus what would comprise of passing off, Justice Singh uses the case of William Grant and Sons v. McDowell & Co. Ltd.[xvii]which further states for injunction there must be material disclosing that the public associates the object in question only with the plaintiffs. The case of William Edge & Sons Limited v. William Niccolls & Sons Limited[xviii] is relied on to explain that simply naming a product that was previously unnamed but had considerable popularity in the market as belonging to the subsequent entrant would not be distinguishing of the goods but would give the impression as belonging to the original manufactures and hence, passing off. The case of Anglo Dutch Paint Colour and Varnish Works Pvt. Ltd. v. Indian Trading House[xix] is also reiterated to explain that the subsequent entrant had no reason to use the applicant’s color arrangements save as with the improper motive of benefitting from his good will and the essential question that needs to be asked is why the same colours would be used but to attract the plaintiff’s goodwill and trade reputation which would amount to passing off. Justice Singh also uses the case law of Reckitt & Colman Products Ltd. v. Borden Inc. & Ors.[xx] to reiterate that the question that needs to be asked here is not whether the plaintiff can sell his product the way he does but why the defendant would deliberately adopt the same and the case of Colgate Palmolive v. Anchor Health[xxi] which states that “Trade dress is the soul of identification of a product” and the test for passing off is likelihood of confusion or deceptiveness and it is the duty of the subsequent comer to avoid unfair competition and become unjustly rich. This is also explained in the case of Cadbury v. Neeraj Food Products[xxii]where it is stated that deception is the essence of the tort of passing off.

Justice Singh clarifies the position with respect to where similarities or dissimilarities are to be considered in the case of the tort of passing off, stating that it was the points of similarity that need to be considered rather than the points of dissimilarity thus taking into consideration the judgments of S.M.Dyechem v. CadburyIndia Ltd.[xxiii]and Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd[xxiv]. Relying on the judgment of Sanjay Kapur v. Dev Agri Farms[xxv] and several other judgments cited within the case, the learned judge in this judgment states that affixing their own label does not amount to exclusive trade dress capable of distinction and there must be clear distinctions and the duty lies on the second entrant to ensure that he is not indulging in unfair trade practices or free riding the goodwill and reputation of an existing competitor. Justice Singh also states that monopoly over a single colour can surely not be enjoyed but that is certainly not the case here as it is the combination of colours that the plaintiff allege as infringed and is protected as their trademark. There exists considerable goodwill on the side of the plaintiff and they do have a huge reputation in the market, thus ensuring that the mark is well known under s. 11(6) of the Trade Marks Act. In arguendo, although the defendants claim that they can change the shape of the cubes to make them distinctive of the plaintiff’s product, Justice Singh states that this question can be answered later, when such case arises. The defendants relying on the case of Cipla v. M.K. Pharmaceuticals[xxvi] is also declared as wrong as the purchase of toys is distinct from that of medicines which is elaborated in the judgment.

Therefore, the Delhi High Court in this case ruled in favour of the plaintiff finding a prima facie case and granted them an injunction against the product of the defendants while also clarifying significant changes with respect to trade dress protection. This case is certainly an essential to understand the concept of trade dress and the extent of protection in the light of monopoly over colours, the test of similarities and labeling products if indicative of distinctiveness. However, Hon’ble Court has also specifically mentioned that the findings are tentative in nature and the same shall not have any bearing when the same would be decided on merits. It would be interesting to note the final outcome of the suit.

About the Author: Ms. Sakshi Sharma, Intern at IIPRD and Khurana & Khurana, Advocates and IP Attorneys.

References:

  1. Wal-Mart Stores vs. Samara Bros., 529 U.S. 205, 120 S. Ct. 1339 (2000).
  2. Vision Sports, Inc. v. Melville Corp. 12 USPQ 2d 1740.
  3. Colgate Palmolive v. Anchor Health, 108 (2003) DLT 51.
  4. Seven Towns v. Kiddland, I.A. No.13750/2010 in CS(OS) No.2101/2010, as decided on September 06, 2016.
  5. Ideal Toy Corporation v. Plawner Toy Mfg. Corp, 685 F.2d 78 (3rd Cir. 1982).
  6. Heinz Italia v. Dabur India Ltd., (2007) 6 SCC 1.
  7. Seven Towns v. Kiddland, Para 16.
  8. L’oreal India Pvt. Ltd. v. Henkal Marketing India Ltd, 2005 (6) BomCR 77.
  9. Kellogg Company v. Pravin Kumar Bhadabhai, 1996 (36) DRJ 509.
  10. Frito Lay India v. Uncle Chips Pvt. Ltd., (2000) 86 DLT 31.
  11. Microfibres Inc v. Girdhar Co, (2006) 128 DLT 238.
  12. Colgate Palmolive v. Anchor Health, 108 (2003) DLT 51.
  13. Cipla v. M.K. Pharmaceuticals, MIPR 2007 (3) 170.
  14. Hodgkinsons and Corby v. Wards Mobility, [1997] FSR 178.
  15. Microlube India Ltd. v. Rakesh Kumar Trading as Saurabh, (2013) 198 PTC 120.
  16. Laxmikant V. Patel v. Chetanbhat Shah and Another, (2002) 3 SCC 65.
  17. William Grant and Sons v. McDowell & Co. Ltd., 55 (1994) DLT 80.
  18. William Edge & Sons Limited v. William Niccolls & Sons Limited, (1911) AC 693 at 709.
  19. Anglo Dutch Paint Colour and Varnish Works Pvt. Ltd. v. Indian Trading House, AIR 1977 Delhi 41.
  20. Reckitt & Colman Products Ltd. v. Borden Inc. & Ors., 1990 R.P.C. 341 at page Nos.414 to 416, 422, 426.
  21. Colgate Palmolive v. Anchor Health, 108 (2003) DLT 51.
  22. Cadbury India Ltd. v. Neeraj Food Products, 142 (2007) DLT 724.
  23. S.M.Dyechem v. Cadbury India Ltd., (2000) 5 SCC 574.
  24. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 783.
  25. Sanjay Kapur v. Dev Agri Farms, 2014 (59) PTC 93 (Del).
  26. Cipla v. M.K. Pharmaceuticals, MIPR 2007 (3) 170.

Movie Titles and their Protection in India

Ms. Shreya Shrivastava, an intern at Khurana & Khurana, Advocates and IP Attorneys looks into the aspect of protection of Movie titles in India along with the parameters to avail the same.

What’s in a name? That which we call a rose by any other name would smell as sweet.” Turns out this quote by William Shakespeare does not hold true for the Producers of motion pictures. A name is an identity for a person, product, company, books or movies.

When it comes to choosing a title for a movie, film makers are very particular about the uniqueness and suitability. A title that is catchy and distinctive finds a place in the minds of the audience instantly and thus lots of money and efforts are put into achieving the right one.

The conventional practice followed by the film producers is to get the plot or titles registered with the film industry associations like Indian Motion Picture Producers’ Association;Film Writers’ Association; Television Producers’ Guild of India; Association of Motion Pictures and Television Program Producers and Film and Western India Film Producers Association. These associations are working consistently to endorse and encourage the production of motion pictures and to protect the commercial interest of films produced in India. Before registering a title, the association usually verifies the registration of same or deceptively similar title with other associations. However such registration has no effect on any legal proceedings, it only establishes precedence in the adoption title.

Under Indian Copyright Act, protection is conferred on literary works, dramatic works, musical works, artistic works, cinematograph films and sound recording but not to titles alone. Thus copying of a title alone and not the plot of the movie, the characters, songs etc does not fall under the ambit of copyright protection. It is common, rather it is imperative, to give title to literary or entertainment works. The literary work produced by the author or the work of entertainment produced by a producer needs a name. It is only then that such work would be identified. The term ‘literary title’ is used to encompass the titles of books, periodicals, newspapers, plays, motion pictures, television series, songs, phonograph records, cartoon features and the like.[1]

Movie titles in India may be registered under Class 41 of the Trademarks Act 1999. Movie titles can be bifurcated into two heads, that is, titles of series of movies, like for instance ‘Munna bhai MBBS’ and ‘Lage raho munnabhai’ and title of a single movie. In case of a single movie title, it must be established that the title has acquired secondary meaning amongst the public at large. The test of secondary meaning for literary titles is basically to determine whether in the minds of a significant number of consumers, the title in question is allied with a single source of the literary work.

In Kanungo Media (P) Ltd. v. Rgv Film Factory And Ors.[2] Kanungo media had produced a Bengali documentary movie titled Nisshabd, which had won numerous awards in various significant film festivals but was not released commercially. The plaintiff challenged the use of their highly acclaimed film title Nisshabd by the defendant for its upcoming Bollywood movie. The Court held that while the title of a literary work could be protected under the trademark law, in order to prove likelihood of confusion, it would be vital to establish consumer recognition and secondary meaning. The Court denied the relief of injunction based on the fact that the plaintiff’s film has not acquired secondary meaning. Also plaintiff approached the court very late after huge expenses had been made by defendant in advertising, promoting the movie and other marketing strategies and thus there was delay in filing the suit.

In Biswaroop Roy Choudhary v. Karan Johar[3] , Producer Biswaroop Roy filed a suit in the High Court seeking permanent injunction to restrain Karan Johar from using the title “Kabhi Alvida Naa Kehna”. The title had been filed by Karan Johar with the Association of Motion Pictures and TV Program Producers and the Film and Television Producers Guild of India also. The court dismissed the petition on the grounds that where words or phrases in common parlance are sought to be used with exclusivity, the Court should take care to determine which of the parties has ended its journey or traversed appreciably longer way in the use of such words as a trademark or as a title.[4]

In the case of Warner Bros. Entertainment Inc. and Anr v. Harinder Kohli and Ors.[5], the plaintiffs of the registered Trademark ‘HARRY POTTER’ alleged infringement of Trademark and sought a permanent injunction from the use of the title ‘Hari Puttar’, which was registered with Indian Motion Picture Producers’ Association and the Guild and was ready for commercial release. The Court dismissed the case due to the fact that the Harry Potter films meet the entertainment needs of an exclusive audience who can distinguish between films based on a Harry Potter book and a film which is a Punjabi comedy. Confusion of Hari Puttar with the plaintiff’s popular trademark Harry Potter was unlikely and also on grounds of delay.

It is thus clear from the above case decisions of the court that by mere registering a movie title either with any of the independent trade associations or as a trademark with the Registry may not be enough of the protection in title rights. Even though registering it is advisable but in order to establish one’s right over the title it is imperative that consumer recognition and secondary meaning is adduced to it. In order to do that, one has to actually use the trademark. Even if the work has not been released, a sufficient amount of pre-release publicity of the title may cause a title to acquire recognition sufficient for protection. Relevant evidence from which secondary meaning for a literary title may be inferred as a question of fact include: (1) the length and continuity of use; (2) the extent of advertising and promotion and the amount of money spent; (3) the sales figures on purchases or admissions and the number of people who bought or viewed plaintiff’s work; and (4) the closeness of the geographical and product markets of plaintiff and defendant.[6] Also, delayed approach to the court to enforce one’s right in the titles can also be of loss to the plaintiff.

Any cinematographic work is identified by its title for decades. People conceptualize the idea behind the work by associating it with the title and hence it is becoming a perquisite to register it in order to protect and preserve the commercial interest in the film. The registration not only provides exclusive right over the title but also restrains the unauthorized use or adoption by another.

[1] McCarthy on Trademarks and Unfair Competition, Third Edition (1995) Vol. I

[2] 138 (2007) DLT 312

[3] 131 (2006) DLT 458, 2006 (33) PTC 381 Del

[4] Supra

[5] 2008(38)PTC185(Del)

[6] Kanungo Media (P) Ltd. vs Rgv Film Factory And Ors. 138 (2007) DLT 312

India’s First IP Crime Unit Launched in Telangana State

Piracy is one of the major evil Indian IP industry is facing for decades and the same is growing day by day rooting into the system causing irreparable loss to the economic reputation of the country. As per the report by Ernst & Young, Indian films industry has sustained loss of around USD 959 (Rs. 4,411 Crores) million and 5, 71,896 jobs in the year 2008 due to piracy.[1] Further various incidents regarding piracy in the film industry seems to be increasing and recently the incident related to the online leak of movie “UDTA PUNJAB” before two days of its release had made headlines. However Indian Judiciary has taken timely steps to control the piracy by passing John Doe orders wherein identities of the Defendants are not known but the whole site suspected providing the pirated versions is blocked. UDTA PUNJAB is not the only movie which is victim of the piracy, there are numerous movies that falls prey of piracy, some of which are reported while others go unnoticed. Latest incidents of piracy in the Bollywood industry have been in headline every now and then, which palpably is a sheer discouragement to the IPR holder as well as economic system of the country. Even Telangana Film Chamber of Commerce recently claimed that there were 14,000 sites and 89,000 illegal downloads of the movies causing loss in millions of rupees.[2] The issue related to piracy and infringement of IPR in India ultimately impacts its economic reputation which is not at all desirable.

Reportedly, in order deal with the menace of piracy, Telangana Intellectual Property Crime Unit (TIPCU) is launched as India’s first unit to deal with the Intellectual Property Crime. It is set up under the cyber crime wing of the CID to deal with complaints pertaining to online piracy particularly illegal download and spread of movies. Pertinently, TIPCU being first of its kind of state level unit in India seems to be vigilant step by the state government in setting up a special unit dedicated to tackle with the serious and organized intellectual property crime such as piracy, with prime focus on offences committed using an online platform. Modeled upon UK’s Police Intellectual Property Crime Unit (PIPCU), TIPCU’s main task will be to monitor online piracy and recommend blocking of websites providing pirated contents, identify the perpetrators and pursue action. Reportedly, TIPCU’s will also prosecute the pirates and choke their revenue sources. The taskforce is expected to start work in the next few months. It will have representatives from cyber crime police, state IT ministry, internet service providers, the Telugu film industry, legal experts and financial experts.[3] Further TIPCU is also expected to deal with the measure to control illegal online activities, including child pornography. Thus it seems that the horizon of the unit is duly kept wide in order to confront all the wrongs being carried out through online platforms with special focus on piracy. It is a commendable step by the Telangana Government which inculcates deterrence among the wrong doers who indulge in such illegal activities of piracy. Thus units like TIPCU are essential to curb the menace of the Piracy and intellectual property infringement in India, which ultimately helps retain confidence among the authors/creators/ owner towards their Intellectual Property rights in India. Now the actual effective working of the unit is expected to speak louder than words and help clear the menace of piracy issue. Further, it is the need of the hour to have such units throughout India, as the piracy is the issue that is also being faced by the Bollywood as that of the Tollywood. Launch of TIPCU has already set a trend across other Indian states to have such units established which would actively help curbing the menace of piracy in India.

About the Author: Mr. Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates and IP Attorneys and can be reached at: Abhijeet@khuranaandkhurana.com

[1] http://www.financialexpress.com/archive/piracy-a-serious-threat-to-indian-film-industry/592752/

[2]http://www.thehindu.com/todays-paper/tp-national/tp-andhrapradesh/tipcu-to-tackle-online-piracy/article8771495.ece

[3] https://www.telanganastateofficial.com/tipcu-telangana-intellectual-property-crime-unit-formed/

Jurisdiction for Trademark and Copyright Suits after Bombay High Court’s Decision

It’s really not settling down when it comes to jurisdiction of infringement of trademarks and copyrights. In INDIAN PERFORMING RIGHTS SOCIETY LTD. Versus. SANJAY DALIA AND ORS: (2015) 10 SCC 161 decided on July 01, 2015, Hon’ble Supreme Court (SC) dealt with the extent to which section 62 of the Copyright Act,1957 and section 134 of the Trademark Act, 1999 provide the convenience to Plaintiff in terms of instituting suit for infringements. SC agreed that both section 62 and section 134 are inclusive in nature, and provide additional forum to the plaintiff to sue defendant at places where plaintiff is residing or carrying on business or personally works for gain in addition to places provided by the section 20 of CPC i.e. places where defendant is residing or carrying on business or personally works for gain or where cause of action has arisen. But SC made it clear that section 62 and section134 do not give plaintiff authority to institute a suit at subordinate place if no cause of action has arisen there and cause of action has arisen at the place of registered office. By observing so, SC made it clear that section 62 and section 134 are not interpreted to the detriment of Defendant.

After this decision by SC, in ULTRA HOMES CONSTRUCTION PVT. LTD Versus PURUSHOTTAM KUMAR CHAUBEY & ORS FAO (OS) 494/2015 & CM 17816/2015 decided on January 20, 2016, Hon’ble division bench of Delhi High court held that, plaintiff being a corporation (which includes a company), can sue at additional places as discussed below:

Jurisdiction for Trademark

According to this decision, plaintiff cannot choose to file suit at the place of Principal office in case it has subordinate office and cause of action has arisen at such place. An in-depth analysis of inclusive nature of the section 62 and section 134 and effect of the above mentioned two decisions on the jurisdictions available to plaintiff was done by IIPRD.

In decision given on June 15, 2016 in respect of SUIT NO. 516 of 2013 and SUIT NO. 632 of 2014, Hon’ble Bombay High Court decided that Dalia decision by SC does not take away the privilege of the plaintiff to file suit at the place of principal place of business or registered office even if it has subordinate place and cause of action has arisen at such place or defendant resides or carries on business there. To support his views, Justice Patel of Bombay HC relied on the discussion of SC on “carries on business”, where SC observed that registered office of a company is the principal place of business as generally it is place where controlling powers are exercised. Justice Patel said that Dalia decision intended to avoid only abuse that can result when cause of action has arisen at the place of registered office of plaintiff and he chooses to file a suit at such a place where he has subordinate place and neither cause of action has arisen nor defendant resides or carries on business there.

With the contrary decisions of DB of Delhi High Court and Bombay High Court on whether plaintiff has the privilege to file suit at the place of its registered office when it also has a subordinate place and cause of action has arisen at such a place, the position remains unsettled. It would be interesting to note stand of the Supreme Court on the same.

About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: swapnil@khuranaandkhurana.com.