Category Archives: Trademark

Cost of Registering a Trademark in Southeast Asia

Trademark is a recognizable emblem, symbol or a phrase that is used to refer to denote a certain product or service. This trademark helps differentiate similar products or services offered by other companies or organizations. It basically acts as a recognition mark that the product or service belongs to a specific company.

ASEAN stands for Association of Southeast Asian Nations, it is a group bound by the regional closeness promoting economic, political and security cooperation amongst its members.

The International Trademark Association (also referred to as INTA), couple of years back released a study carried out by their ISC (Impact Studies Committee) on the economic contribution of Trademark Intensive Industries in Indonesia, Malaysia, the Philippines, Singapore and Thailand. According to the study, trademark intensive industries drive 27% – 60% of exports of the ASEAN region. The direct contribution of these industries to the regions’ GDP varied from 17% to 50%. Thailand for instance owes 60% of its export to the trademark intensive industries whereas Indonesia depended on the trademark intensive industries at 27% for exports. Apart from the direct contributions towards exports and the GDP, the study also shed some light on the fact these industries employ huge number of people and hence there is also an indirect contribution by trademark intensive industries to the employment rates. The importance of trademarks can hence be easily ascertained and established.

Cost of registration of trademarks varies from country to country in the ASEAN region like other regions. Thailand for example allows for an application that covers not more than 5 items of goods or services in a class based on the number of items, if the designated good and services in any class are more than 5 items, the official fees are payable at flat rates instead of the per item basis.

In Singapore, manual filing of trademarks costs S$ 374 per class and online filing costs S$240 per class (when items are fully adopted from pre-approved database) and S$341 per class for class/classes whose specification are not fully from pre-approved databases. In cases where the original application is being divided, charges are S$ 280 for each additional application that the original application is divided into. Renewal of trademarks if done prior to the expiration date is S$ 380 (online) and S$ 380 plus additional Service Bureau charges. Late renewal which implies renewal done post expiration is S$ 560 (online) and S$ 560 plus Service Bureau charges (manual) per class.

In Malaysia, the charges for registering a trademark is 330RM (Malaysian Ringgit) while applying online and 370RM while applying manually. Request for approval of expedited examination of a trademark application incurs a charge of 200RM(E-filing/Online) and 250RM for manual filing. Request for expedited examination of the report of a trademark application incurs a charge of 1,060RM for online filing and 1,200RM for manual filing.

In the Philippines, the cost for registering a trademark for Big entities and small entities is different. The filing fees per class for Big entities is 2,160 PHP(Philippines peso) and 1,080 PHP for Smaller entities.Request for a priority examination incurs a charge of about 5,200 PHP and 2,600 PHP for Big and small entities respectively. Issuance of Original/New/Replacement/Renewal of Certificate of Registration costs one about 1,000 PHP and 500 PHP for Big and Small entities respectively. Renewal of Registration costs about 5,500 and 2,750 per class.

In Indonesia, the fees for applying for a trademark is dependent upon the category of the applicant, if the applicant is a Micro or Small Business then the charges per class are 500,000 IDR (Indonesian Rupiah) for online and 600,000 IDR for manual application. For Public entities the cost of applying for a trademark is 1,800,000 IDR for online and 2,000,000 IDR for manual application. Renewal of a trademark incurs a cost of 1,000,000 IDR (online process) and 1,200,000 IDR (manual process) per class provided the renewal has been applied for within 6 months till the expiration of the trademark for Micro and Small business. If the renewal is being applied for within 6 months post the expiration of Trademark, for Micro and Small business, charges will be incurred as 1,500,000 IDR (online) and 1,800,000 IDR (manual). For Public business, charges for renewal of trademark are 3,000,000 (online) and 4,000,000 (manual) provided the renewal is being applied for within 6 months of the expiration of the registered trademark, in case the renewal is applied within 6 months till the date of expiration of the trademark, charges shall be incurred as 2,250,000 IDR (online) and 2,500,000 IDR (manual).

Myanmar allows for registration of a trademark for a period of 10 years, an affidavit of use is required during the fifth year if one wants to avail the complete protection for a period of ten years. As of now Myanmar does not have an active trademark law, currently the registration for trademark is done through Myanmar registration office by means of Declaration of Ownership at the registration office. The related laws for trademark in Myanmar are Penal Code, Merchandise Marks Act, Specific Relief Act, Sea Customs Act, Registration Act, till the time effective trademark laws and office have been established.

Conclusion:

Trademark and trademark intensive industries have been thriving in the south east Asian countries and there is an immense potential for countries like Myanmarwhere the laws have not been established yet, in terms of economic growth and opportunities other than just definitive protection of intellectual property. It also integrates countries with trademark laws and encourages cooperation between nations such as The Intellectual Property Office of the Philippines helping and supporting Myanmar in the establishment of its Intellectual Property office.

Author:  Dhruv Verma, Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at dhruv@iiprd.com.

References:

[1] https://www.inta.org/Communications/Pages/Impact-Studies.aspx

[2] https://www.lexology.com/library/detail.aspx?g=b27be3d7-987f-4447-84da-8953c7135403

[3] https://www.ipos.gov.sg/resources/trade-mark

[4] https://www.country-index.com/country_surveys.aspx?ID=106

[5]http://www.myipo.gov.my/en/trade-mark-regulations-1997-amendment-2011/?lang=en

[6] https://www.ipophil.gov.ph/images/WhatsNew2015/PDFFilesForMenus/TrademarkFees.pdf



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A Holistic Compendium: Indian Trademark Cases 2018

Awareness about intellectual property in India is on the rise, so is the number of trademark registration and therefore the infringement of registered marks are increasing. Indian Trade Mark Jurisprudence has crossed quite a lot of mile stones in year 2018 due to the increase in the number of litigations and by contributing to the trademark ecosystem by way of notable volume and diversity of trademark cases.

Year 2018 had seen a substantial development in the IP ecosystem crystallizing the Trademark Jurisprudence which has a direct influence on the confidence of stakeholders in the wake of globalization and “Make in India” regime. To mention a few:

  • Court is imposing costs against frivolous litigations deterring litigants from initiating sham litigations.
  • IPR offices are welcoming new technologies.
  • Reaffirming the procedure of removal of Trademark from the register of Trademarks.
  • Providing Clarity on Comparative Advertisement.

This practice of making and publishing the Holistic Compendiums of the important cases on Trade Marks is been carried by Khurana and Khurana from the years due to its involvement in trademark litigations. This compendium intends to provide certain key judgment summaries that reflect a diverse range of issues discussed and adjudicated upon by the Indian Judiciary in the year 2018 pertaining to the interpretation/ implementation of various provisions of The Trade Marks Act, 1999.

Khurana & Khurana Publication – Compendium of Trademark Case Summaries – 2018

Author: Ms. Geet Valecha, Intern at Khurana & Khurana, Advocates and IP Attorneys.



Non-Conventional Trademarks: A Legal Analysis

NATURE AND SCOPE OF NON-CONVENTIONAL TRADEMARKS: A LEGAL ANALYSIS

The Non-Conventional marks are those marks which do not fall under the category of conventional marks such as marks including letters, numbers, logos, pictorial description, symbols, or those elements which consists of the combinations of such elements. The definition of Non-Conventional mark is illustrative and states that it includes ‘shape of goods’, ‘packaging’ and ‘combination of colours’ within its ambit. They are basically those marks which are based on appearance, shape, sound, smell, taste, textures etc. Such marks are said to be beyond the purview of traditional trademarks. In the act it is not specifically mentioned but the definition of Trademark incorporates the non-conventional marks as well.

PROBLEM WITH RESPECT TO NON-CONVENTIONAL TRADEMARKS

Consumers uniformly identifies certain non-conventional trademarks with respect to their shapes and colours but in case of smell and taste marks, the perception with respect to marks may vary thus giving rise to confusion among the consumers. In order to obtain registration as a mark, it can acquire distinctiveness even though it is not inherently distinct through its use and thus qualify to be a trademark.

Another problem is that the basic premise of the paper is barrier in registration of non-conventional marks is the graphical representation of the mark to be registered especially with respect to the case of odour and sound marks.

GRAPHICAL REPRESENTATION OF NON CONVENTIONAL MARKS : A GENERAL OVERVIEW

Graphical representation of a mark is considered to be a sine qua non in order to register a trademark in India. A trademark application is needed to be graphically represented and the mark must be capable of being put in the physical form within the register. It is also needed to be published in a journal. Graphical representation of non-conventional marks is a practical problem. It is considered to be a serious barrier in registering the non-conventional trademarks.

  1. ODOUR MARK:

It is a controversial trademark which has gained popularity in the recent time.  In the case of Ralf Seickman v. German Patent Office. the registration of the smell mark was not taken into consideration and was rejected because graphical representation criteria were not fulfilled. The main issue which was pointed in this case was whether an olfactory mark which is described as balsamically fruity scent with hint provided of cinnamon could be registered as a trademark with respect to certain services. ECJ in this case stated that graphical representation is not sufficient and it needs to be clear and precise to clear the right of exclusivity and also it must be considered intelligible to those persons who have interest in inspecting registers.

  1. SOUND MARK:

The graphical representation of sound mark can be done by musical notations and written descriptions. In Shielf Mark BV v. Joost kist h.o.d.n Memex. the ECJ held that requirement of graphical representation was not satisfied when the sound is represented graphically by means of description using written language. When sound is shown as a stave divided into measures, musical notes etc then graphical representations are said to be accepted. It has also been stated that along with it a written description of the mark in the form of musical notes must also be needed to be filed with the registry.

  1. COLOUR MARK:

Single colour and combination of colours are the two forms of Colour trademarks. Combination of colours can be included in several national legislations. In Libertel Groep BV v. Benelux Trademark Office. the issue was raised that whether a single colour mark consisting of orange colour can be registered as a trademark. The ECJ reiterated the criteria of graphical representation as stated in Ralf Sieckmann’s it was held that such representation must be clear, precise and self contained. It must be easily accessible, durable and objective.  In order to solve the issue with respect to graphical representation, India may consider internationally recognized code such as Pantone in order to prevent colour depletion and anti-competition.

  1. SCENT TRADEMARK:

In the cases related to Scent Trademark the registry takes place is with respect to Shield Mark Doctrine. Scent needs to be distinctive of the product and it must not be utilitarian or functional. Thus the fragrance of the scent/perfume cannot be registered, however the description of the scent is required.

PROTECTION OF NON CONVENTIONAL TRADEMARKS IN INDIA

In India, very few non-conventional trademarks have been registered. India has imported the Shield Mark Doctrine with respect to graphical representation of sound marks. Manual suggests the sounds specifically which are not distinctive and thus not meant to be registered. In India, Yahoo!’s yodel is the first ever non-conventional mark to be registered. It was represented through musical notes.  The Zippo lighter was also considered to be distinctive and was granted registration by Delhi High Court. Other non-conventional trademark to be recently registered in India is sound mark by Allianz Aktiengesellschaft. Indian Trademark Industry has also registered sound mark of ICICI Bank in the notes which forms the jingle. For people who are visually impaired or illiterate distinguishing character of the shape or sign plays an important role.

CONCLUSION

The few obstacles with respect to Non-conventional trademark must not be considered as a discouragement to their use, but on the contrary new methods must be incorporated. Non-conventional trademark creates a psychological impact on consumers and it has gained some significance in the recent times. India has accepted the sound trademark of intel. The concept and law with respect to Non-conventional trademarks are evolving in India.  This paradigm shift from the traditional concept has gained commercial significance and there is need for uniformity for the same across the globe.

Author:  Manuraj Singh Parmar , Law Student, B.Com LLB (Hons),  Institute of Law, Nirma University, Ahmedabad , Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any  queries please contact/write back to us at shubham@khuranaandkhurana.com

References:

[1] http://www.wipo.int/sme/en/documents/wipo_magazine/7_2

[2] Reports of Patent, Design and Trade Mark Cases, Volume 121, Issue 9, 2004, Pages 315–326, https://doi.org/10.1093/rpc/2004rpc17

[3] Case No C-104/01 before the ECJ, http://www.copat.de/ markenformen/c-104_01en.pdf (10 November 2005).

[4]  ShamnadBasheer, India’s first “Sound Mark” Registered, SPICYIP, 19 August, 2008, available at http://

spicyipindia.blogspot.com/2008/08/breaking-news-indias-first-sound-mark.html

[5] Zippo v. Anil Manchandani (unreported, CS (OS). 1355/2006).

[6] Santosh Singh, Yet Another Sound Mark Granted, SPICYIP, 30 July 2009, available at http://

spicyipindia.blogspot.com/2009/07/yet-another-sound-mark-granted.html

[7] http://www.mondaq.com/india/x/472602/Trademark/NonConventional+Trademarks+in+India

[8] spicyipindia.blogspot.com/2008/08/breaking-news-indias-first-sound-mark.html

 

Deceptive Similarity and Judicial View

Trademarks play a vital role in creating a brand name and goodwill of any business. Not only does it helps in creating a brand value but also, aids in revenue generation. Being of such vital importance, trademark is vulnerable to getting infringed and/or misused. One such way of trademark is making “deceptively similar” trademarks.

“Deceptively similar” trademarks can be understood as a trademark created, almost similar or a look-alike of an already existing trademark in order to deceive and confuse the consumers. This concept of deceptive similarity has been discussed in The Trade Marks Act, 1999 under Section 2(h) as:

“A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.”

The concept of deceptive similarity has been widely recognised as a ground for trademark infringement under various trademark regimes. Under the Indian legal system as well, deceptive similarity is consider as a ground for not granting the registration of the trademark to an applicant by the Registrar of Trademarks.

However, the Act does not ascertain any criteria that can decide the ambit and scope of the phrase “deceptive similarity,” hence, there is a vacuum. In order to remove the vacuum, it is essential to note the judicial stand on various cases regarding the said matter. Indian Courts have dealt with several cases providing with landmark principles and guidelines in matters of deceptive similarity. In order to adjudicate cases of intellectual properties and deceptive similarity, principles of phonetic and visual similarity, goodwill, reputation, test of likelihood, etc. have been recognised as some criteria to test deceptive similarity, by the Courts.

Some important cases concerning the judicial view of the Courts in the matter of Deceptive Similarity

  • M/S Lakme Ltd. v. M/S Subhash Trading1

    In this case, the plaintiff was selling cosmetic products under the trademark name “Lakme” and the defendant was also selling similar products under the name “LikeMe”. A case of trademark infringement was thus filed by the plaintiff. The High Court held that the names were not deceptively similar and are two separate marks with difference in their spelling and appearance.

  • SM Dyechem Ltd. v. Cadbury (India) Ltd.2

    In this case, plaintiff started a business of chips and wafers under the trademark “PIKNIK”. Later, defendant started business of chocolates under the name “PICNIC”. A suit alleging trademark infringement was filed thereafter. The Court held the marks not to be deceptively similar as they are different in appearance and composition of words.

  • Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd.3

    In this case Supreme Court laid down certain guidelines for adjudication of matters concerning deceptive similarity of trademarks. In this particular case, the parties to the case were the successors of the Cadila group. The dispute arose on the issue of selling of a medicine by the defendant under the name “Falcitab” which was similar to the name of a medicine which was being manufactured by the plaintiff under the name “Falcigo”. Both the drugs were used to cure the same disease and hence, the contention was that the defendant’s brand name is creating confusion between the consumers. Injunction was demanded by the plaintiff. As a defence, the defendant claimed that the prefix “Falci” has been derived from the name of the disease, i.e., Falcipharam malaria.

    The court observed that because of the diversified population of the country and varying infrastructure of the medical profession due to language, urban-rural divides, etc. and with the probabilities of medical negligence, it is important that confusion of marks should be strictly prevented in pharmaceuticals and drugs. The Court, thereby, held that being medical products more precaution and care must be taken and the names of the brand, therefore, being phonetically similar shall amount to being deceptively similar.

  • M/S Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav & Anr.4

    In this case, plaintiff claimed that the defendant’s trademark “Fauji” is defectively similar with that of the plaintiff’s, that is, “Officer’s Choice”. The claim was made on the ground of similarity of idea in making of the trademarks as the word “Fauji” is a hindi translation of a military officer. Adding to it, both the parties are in the business of alcoholic beverages. Further, packaging of both the bottles are also alike.

    Though, trade dress plays a significant role in deciding the cases of trademark infringement, in this case, the court held that there is no deceptive similarity between the trademarks “Officer’s Choice” and “Fauji” and hence, dismissed the trademark infringement suit.

Conclusion

The doctrine of deceptive similarity is widely used in the Courts in matters of trademark infringement. Trademark being of vital importance in business and its goodwill it is of high need to protect it from misuse and infringement. Judiciary has taken a keen interest in matters of Intellectual Properties and several principles and guidelines have been provided through various judicial decisions in order to make adjudication of cases of trademark infringement much smooth. The court has also looked after the problems which may arise if a strict criteria is made for determination of deceptive similarities. It is evident from the cases above that the courts are going beyond the literal meanings of the legislations to provide justice and safeguarding the rights of the traders and protecting the interests of the consumers.

References:

[1]1996 (64) DLT 251

[2](2000) 5 SCC 573

[3](2001) 5 SCC 73

[4]CS (COMM) 819/2018; Borkar, S. & Jain, A. Case Comment, K&K ADVOCATES AND IP ATTORNEYS, (Feb. 20, 2019, 04:24 PM), https://www.khuranaandkhurana.com/2019/02/09/case-comment-on-delhi-high-court-holding-no-deceptive-similarity-in-the-marks-officerss-choice-fauji/.

Author: Ms. Sonal Sodhani, Student, New Law College, BVDU, Pune, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com.

Position Of Unconventional Trademarks In India

INTRODUCTION

As of late, the field of intellectual property has seen immense improvement, particularly with respect to trademarks. The Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) perceives different sorts of trademarks. India has additionally rolled out vital improvements in its laws to follow the arrangements of the TRIPS agreement.

A trademark according to S.2(1)(zb) of the Trademarks Act 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 colors.” From a cursory reading of the same, it can be seen that the definition is quite open ended. Any mark, be it a word, device, brand, heading, letter, numeral etc if capable of distinguishing goods and services of one person from that of another, can be registered as a trademark. Although the entire aforementioned find place in the definition of a mark, there are certain marks such as smell and single colors that do not find a mention in the Act. They can still however be protected and given trademark status.An unconventional trademark is mainly in the form of sound marks, smell marks, shape marks or color marks.[1]

ANALYSIS

The Indian Trademark Regime has, so far, imitated the stand of European Union as far as the prerequisite of graphical representation for a trademark is concerned. Thus, it makes registration of non-conventional trademarks much more rigorous in India than in the United States. The non-conventional trademarks possess ability of source identifier despite not being easily graphically representable. The working of US Trademark Regime demonstrates this fact.[2]

According to the author, assuming that a particular non-conventional mark is distinctive and is not functional, a non-conventional mark like sound, smell or shape should be given trade mark protection. Non-conventional trademarks cater to a segment of society which has, in the opinion of the researcher, been ignored in the earlier trade mark regime. This is with reference to those for whom visual perception often becomes difficult or even impossible: the visually impaired[3] and the illiterate. Non-conventional marks encourage undertakings to develop new and innovative ways of branding. Companies reach out to newer markets, increasing benefits for themselves and a new segment of purchasers.

Some may argue that if smell receives protection now, a vista of intellectual property becomes exposed to potential registration;however, this is not a valid contention for arguing in favour of non-registration. It is opined that the provided the mark is not functional and is distinctive, there is no reason to prevent anything from receiving protection. Visual perceptibility should not be and is not a sine qua non for building brand association in the minds of the consumers. As observed above, non-conventional trademarks do fulfill the traditional purpose attached to trade mark protection. They also provide additional benefits. Thus, they should receive trade mark protection.

RECOMMENDATIONS

In the light of TRIPS Agreement and other related international legal instruments on trademark, there is a need for harmonization of trade mark systems worldwide.Hence, it is desirable to protect non-traditional trademarks in the interest of global trade.

There are two significant issues:

  • The harmonization of criteria for the registration of these marks, and whether an office/trademark registry that accepts for registration could apply to them by analogy the same criteria it applied to traditional marks.
  • The harmonization of modalities for registration, especially what would be considered an appropriate representation of the sign. It should be clarified whether the trademark registry should apply the same criteria of distinctiveness than for more traditional marks and what the criteria would be for graphical representation, particularly of non-visible signs.

At least the WIPO should come out with uniform guidelines concerning graphical representation of non-traditional trademarks. The WIPO Standing Committee on Information Technologies (SCIT) can provide proper guidelines with regard to the representation,description and the application of trademark principles to non-traditional trademarks. There are still grey areas in this regard:

  • The potential economic relevance of these marks for less developed markets.
  • The possibility of overlapping protection,for example with copyright, in the case of motion marks, with patent and design in case of shape trademarks.

For those signs where distinctive character can be proved, the requirement of graphical representation should not bar registration. In the modern global market, where traders market their products internationally, it is desirable to have a uniform policy among the TRIPS member states to provide for the registration of non-traditional trademarks.Where more and more jurisdictions come forward with relaxed and liberal interpretation of trademark, the inconsistencies existing in some countries surrounding the interpretation of graphical representation seem to hinder proprietors selling goods in international markets under non-traditional trademarks. This reminds the international community the urgent need to develop a uniform policy for the registration and protection of non-traditional trademarks.[4]

CONCLUSION

The new trademark rules have extensively laid down the procedure for application of unconventional marks. However, there is still a need for the law to catch up with modern marketing techniques that use colors, shapes, scents and sounds to make their product distinctive.Unconventional trademarks will definitely attract a new variety of customers who are more closely connected to the feel of the trademark rather than its visual appeal.

Author: Saloni Gupta, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

References:

[1]Shristi Bansal, ‘Non-Conventional Trademarks in India’ (MONDAQ, 9 March 2016)   accessed 15 September 2018

[2]Tanisha Agarwal, Vanshraj Mehta,Hear Me, Touch Me, Taste Me, Smell Me: Conventionalizing Non-Conventional Trade Marks in India’ (2017) Journal on Contemporary Issues of LawVol. 3 Issue 5

[3]David Vaver, ‘Unconventional and Well-Known Trademarks’ (2005) 1 Singapore Journal of Legal Studies 8

[4]Lisa Lukose, ‘Non-Traditional Trademarks: A Critique’ (2015) Journal of the Indian Law Institute, Vol. 57 Issue 2

Principles of Passing off In Trademarks: Wockhardt Limited Vs. Torrent Pharmaceuticals Ltd.

Background

Torrent Pharmaceuticals Ltd. (Plaintiff/ Respondent) owned a trademark a trade mark called “CHYMORAL” and “CHYMORAL FORTE”, which is a drug administered post-surgically for swellings that may arise and/or wounds that may arise. They filed a suit for infringement and an interlocutory application for passing-off against the rival, Wockhardt Limited (Defendant/ Appellants) for violating its trademark rights by use of the mark “CHYMTRAL FORTE”. Single Judge Bench of Bombay High Court refused to grant the interim injunction for passing-off in favor of Torrent and against Wockhardt. The said order was challenged before the Division Bench, the same was set aside and Torrent was granted interim injunction for passing-off. The said Order of Bombay High Court was appealed, by Wockhardt, in Supreme Court.

Classical Trinity of Passing Off

  • There 3-elements which are to be satisfied to prove a case of passing off are: a) Goodwill and Reputation; b) Misrepresentation by the Defendant; and c) likelihood of damages.
  • The Court held “that though passing off is, in essence, an action based on deceit, fraud is not a necessary element of a right of action, and that the defendant’s state of mind is wholly irrelevant to the existence of a cause of action for passing off, if otherwise the defendant has imitated or adopted the Plaintiff’s mark”. Likelihood of damages is sufficient. The bench quoted the judgment in Laxmikant V. Patel vs. Chetanbhai Shah.

Acquiescence and Delay: Not the same

  • The Court refused the Single Judge’s injunction refusal ground of acquiescence and stated that “We do not think that because the appellants stepped in the year 2014 with notice of the first respondent’s registration and use of the mark that means the appellant-plaintiff has acquiesced in the same. That is not a positive act and which is required to deny the relief on the ground of acquiescence.” Reference was made to the SC judgment in M/s Power Control Appliances and Ors. vs. Sumeet Machines Pvt. Ltd.
  • “Acquiescence is a species of estoppel and therefore both a rule of evidence and a rule in equity. It is an estoppel in pais: a party is prevented by his own conduct from enforcing a right to the detriment of another who justifiably acted on such conduct.”
  • With respect to the point of acquiescence, the Division Bench held that ‘Delay is not to be confused with acquiescence. The latter implies knowledge, and where “knowledge of the defendant’s mark and product is shown and coupled with a long period of inaction against the alleged invasion of an exclusivity claim”, it is not enough to say that “there is no positive act”, as acquiescence explicit consent rather than silent.

Verdict

The Supreme Court bench upheld the law laid down in Laxmikant V. Patel vs. Chetanbhai Shah regarding passing off, dismissed the appeal in favor of Torrent Pharmaceuticals Ltd. and upheld the order of Divison Bench of Bombay High Court.

Author: Ms. Vatsala Singh, Litigation Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at vatsala@khuranaandkhurana.com.

Too General To Be Trademark-Able: A “Cocky” Debate

There have been plethora of cases in India and abroad that discuss the menace caused due to monopolization of general English terms in course of business. The argument given by the proprietors is that to get a trademark over a name, it is important that the name is arbitrary and it does not describe the product that is being sold under it. While the importance of getting protection over one’s intellectual property is stressed upon, the bigger problem here lies with the concept of owning a name that everyone knows and uses in their day-to-day life. “Trademark Overreach or Trademark Abuse” refers to this practice of using and monopolizing general words as brand names. This article analyses the predicament of dominating general words for business purposes while highlighting upon the recent ‘COCKY’ controversy.

The COCKYGATE:

After Penelope Ward and Vi Keeland’s book ‘The Cocky Bastard’ became a major hit in 2015, number of romance novelists titling their books ‘Cocky’ was on the increase. The word is adored by these novelists for its implication to alpha-male heroes and for its under-playing potential. On 17th April 2018, the United State Patents and Trademark Office (USPTO) invited litigation when it granted a troublesome trademark on the general English word “COCKY”. Crux of the matter is that, self-published author Faleena Hopkins had filed for registration of trademark on the word “Cocky” in relation to a series of downloadable e-books in the field on romance, ‘Cocker Brothers of Atlanta’. The 19 book series is about Cocker brothers where each book features the word ‘Cocky’ in the title (books in the series can be viewed here Cocker Brothers Series). Adding fuel to the fire, Ms. Hopkins also wrote out to other authors to cease and desist from using the word in their book titles. Many authors like Jamila Jasper, Bianca Somberland have received notices from Ms. Hopkins stating that they should change the name of their books or else face legal actions. She also filed a complaint against these authors with Amazon as a consequence of which Amazon took down their books from sale. The matter came to light last week when many authors resorted to social media to write about the letters received from Ms. Hopkins with #COCKYGATE. The actions of Ms. Hopkins had led to an outcry in the romance writers’ community.

A petition to cancel the registration of ‘Cocky’ has been filed in the USPTO which has been signed by 17,000 people so far. The writers have claimed that romance novels usually involve alpha-male protagonists who are frequently described in the titles with this word. They also claimed that such generic terms cannot be trademarked. In her defense, Ms. Hopkins claims that ‘COCKY’ is an essential part of the titles of her books, hence, require protection. She said that she is received letters from the readers who lost their money thinking they bought her series. She stated that she is trying to protect the interests of such innocent buyers.

Analysis:

As stated earlier, general terms are not trademark-able. General terms refer to the terms or words that we use regularly in our day-to-day affairs or which are words of common tongue. General term is a term which ideally should not become the exclusive property of a single firm but at the same time it maybe a term which describes the source of a product or service provided under it; therefore, must not be appropriated by the rivals to use freely. Such terms cannot be trademarked unless they have attained a secondary meaning. A trademark claim may be overreaching if a mark similar to the registered mark comprised of a general term is separately registered and used in relation to a different class of goods. The court must not deny the defendants from using the general trademarked term unless it has acquired secondary distinctiveness.

Secondary Distinctiveness: An American Overview:

Federal Trademark Act, 1946 popularly known as the ‘Lanham Act’ governs the trademark law in the United States.  The act allows the owners of trademarks and service marks to register them on Principal Register. The refusal of registration is constrained to certain grounds enumerated in Section 2(a), (b), (c), (d) and (e) which includes grounds like mark being deceptively similar to another mark already registered, consists of immoral, deceptive or scandalous matter etc. This section is the American counterpart of Section 9 of the Indian Trademark Act, 1999, however, Section 2(f) of the Lanham Act provides an exception to refusal of registration on grounds of section 2(a), (b), (c), (d) and (e) (3), (e) (5). It states that “nothing herein shall prevent the registration of a mark used by the applicant that has become distinctive of the applicant’s goods in commerce”, thus, in US too, a general term can acquire protection only if the term has acquired a secondary meaning.

The Judicial outlook on this matter in United States is also in consonance with what the Act most states. Commonly descriptive terms or general terms used by the public or other businesses to describe a particular good cannot be trademarked unless it has acquired a distinctive meaning, in the sense that the public associates the term to a particular product of a particular company. Yet, there have been cases like the CITI Bank’s matter against AT&T over the term “THANK YOU”. The court sided with the defendants and stated that the term had achieved no secondary meaning, hence, CITI Bank cannot monopolize it.

Secondary Distinctiveness: Indian Perspective:

Section 9 of the Trademark Act, 1999 lays down the grounds for absolute refusal of registration of trademark and includes that a mark that is descriptive of the goods and services purported to be sold under it cannot be registered. It also bars registration of marks which have become customary in the current language or in bona fide and established practices of trade, however, the section gives an important exemption to the marks that have acquired distinctive character as a result of their use maybe registered. The exemption gives birth to the idea of ‘secondary distinctiveness’ which relates to the situation where certain terms acquiring a secondary meaning because of its use in the common parlance; such terms may be trademarked.

Examples of trademark overreach in India are many ranging from Ultratech’s claim over the term ‘Ultra’, or Reebok’s claim over the phrase ‘I am what I am’. In all these cases, the court ratio emphasized on the fact that a general term can be granted protection if and only if it is proven that the term has acquired distinctiveness and that public relate to the term by this secondary meaning rather than a definite meaning.

Conclusion:

In the present case also, the USPTO must take into consideration the genericness of the term ‘Cocky’ and the manner in which it is used by romance novelists in their titles. Generic terms should not be allowed to be trademarked unless there is proof of its acquired distinctiveness. The evidence of secondary distinctiveness must be made mandatory for those seeking to register generic terms as trademarks. Further while entertaining infringement suits involving such generic terms the Courts should be cautious to identify if the claim is bona fide; meaning, the generic term trademarked by the Plaintiff has attained a distinctive character and the public at large associates such term with the products of the Plaintiff.

Author: Aishwarya M. Pande, 5th Year, BA LLB (IPR Hons.), Institute of Law, Nirma University, Ahmedabad, Legal Intern at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com.

References:

[1] Trademark Registration no. 5447836 granted by USPTO

[2] http://tsdr.uspto.gov/#caseNumber=5447836&caseSearchType=US_APPLICATI

ON&caseType=DEFAULT&searchType=statusSearch

[3] Section 2, Federal Trademarks Act, 1946

[4] Section 9, Indian Trademarks Act, 1999

[5] https://timesofindia.indiatimes.com/life-style/books/features/romance-novelist-trademarks-word-cocky-stirs-up-controversy/articleshow/64108602.cms

[6] https://www.vox.com/culture/2018/5/15/17339578/cockygate-explained-romance-publishing-faleena-hopkins

[7] http://www.victoriastrauss.com/2018/05/09/trademark-shenanigans-weighing-in-on-cockygate/

[8]http://www.cbc.ca/radio/asithappens/as-it-happens-wednesday-edition-1.4665345/romance-writer-renames-book-after-author-trademarks-cocky-1.4665355

[9] James M. Treece and David Stephenson, ‘Another look at descriptive and generic terms in American Trademark Law.’,  66 Trademark Rep. pp 452,453

[10] Ultratech Cement Ltd. v. Dalmia Cement Bharat Ltd., (2015) 2 Mah LJ 354 (Bom)

[11] Reebok India Co. v. Gomzi Active, MANU/KA/0781/2006

Fashion And Trademarks: The Clothing Controversy

Much like the trends on a ramp evolve every season, in the same way legal strategies of the industry’s leading fashion brands, fashion-houses and designers are in flux. Fashion is something to which each one of us relates. It is a part of everyone’s daily life; be it in the form of apparels or shoes we wear or a new hairstyle we adorn or the exotic jewelry we flash.  Fashion industry is one of the most popular and profit-making industry in any country and yet is also one of the most vulnerable. The vulnerability of fashion emerges from the lack of protection to original ideas and works in terms of Intellectual Property. As a result, many fashion houses are often seen suing for the infringement of their designs. This article depicts the tendencies witnessed in affording IP protection to fashion while focusing upon the recent case of Burberry v. Target.

The War of Brands

On 2nd May 2018, one of America’s largest big-box retailers Target was slapped with an 8 million dollar trademark infringement and counterfeiting lawsuit that a British luxury brand Burberry filed in a New York Federal Court. The allegations against Target are that, it has been selling products having ‘blatant reproductions’ and bearing unauthorized copies of Burberry’s world famous ‘checks’ trademark. The infringement is alleged to be of continuing nature as Target has been involved in the act for over a year and continues to do so despite of numerous cease and desist letters being sent. Target was selling products including eye wear, water bottles and luggage, since early last year, bearing the trademarked pattern of the plaintiff. Burberry sent the retail giant a cease and desist letter alerting them about Burberry’s exclusive rights in said check pattern. A few months after receiving this letter, Target, being explicitly aware of Burberry’s special rights chose to ignore them and began offering a number of scarves on sale, all of which bore Burberry’s legally protected trademark. Burberry claims that Target purposely intended to continue selling infringing merchandise even after receiving the cease and desist letter which demonstrates the ill-intention on part of Target and its utter disregard to the intellectual property rights of Burberry. The motive behind Target’s actions in selling infringed merchandise was to misappropriate the colossal goodwill of Burberry and therefore be unjustly enriched from the enormous profits earned. The design in question is produced below for convenience:                     Burberry_scarves

Although the scarves produced by Target are of inferior quality yet they are on the surface indistinguishable from the genuine Burberry scarves. The items sold by Target were not approved by Burberry and such a reproduction of the check print of Target’s items could cause confusion in the minds of the consumers and would lead them to believe that those items are sponsored by Burberry. Burberry claims that Target’s history of collaborating with popular brands and fashion designers to promote and sell Target’s exclusive products further enlarges the scope of consumer confusion. It is stated that the classic cashmere scarf of Burberry sells for $430 which Target is selling for $12.99 (Check it out here Target and here Burberry).

Burberry is seeking $2 million for every instance of infringement along with damages to the full extent possible.

Analysis

The first and the most quintessential question which arises here relates to the scope of IP protection in the fashion industry. Fashion brands are not immune to counterfeiting. It is easier for the counterfeiters to copy fashion products and clothing because they are relatively simpler to manufacture as compared to the hi-tech devices. Also, they can be sold with a high mark-up owing to the reputation or goodwill associated with a well-known brand. With the increasing awareness of intellectual property in the fashion world more and more stake-holders are seeking trademarks and other IP protections for their creations. According to the Trademark Industry Report 2017 prepared by Trademark Now, Clothing, Apparel and Luxury Goods industries were under Trademark Spotlight in 2016 with more than 6400 applications being filed around the globe.    In order to avoid the menace of counterfeiting, where the counterfeit product incorporates a well-known brand name, trademark enforcement is the best and most effective tool. Fashion brands register their house brand name and key sub-brands.  Some of the leading luxury brands have been vigilant to safeguard their shape, color, patterns, cuts, style etc. For example, Christian Louboutin has trademarked red soles of their shoes. He has also sued Zara for infringement.

Indian Perspective

Fashion industry is one of the fastest growing industries in India especially after some Indian designers have earned respect and recognition of other nations.  However, the growing fame comes with certain vulnerability erupting from the scope of infringement by other domestic or even international designers. Fashion fraternity of India is slowly getting the hang of intellectual property protection for their creation.  In comparison to other countries especially USA, France, Spain and London, India is lagging behind in granting protection to fashion designers. Many designers are still unaware of their IP rights to guard their brands and creations from reproductions, printing, publishing, distribution of prints that are colorable imitations etc.

Conclusion

With the growing awareness of importance of IP in the fashion world, there is a serious need to re-evaluate the spectrum of protection that is granted to the fashion industry. Fashion designers should go forward and enhance their knowledge of Intellectual Property Rights and should try to find out most suitable safeguard for their products. The Burberry case is the classic example of how far the fashion industry has come with respect to recognizing their rights and enforcing them at all costs and at all levels. It would be interesting to find out the outcome of this case as it could be a game-changer in the fashion-industry.

Author: Aishwarya Pande , Intern at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

[1] Burberry Limited (UK) et al v. Target Corporation et al, 1:2018-cv-03946 (SDNY)

[2]http://www.thefashionlaw.com/home/burberry-slaps-target-with-multi-million-dollar-counterfeiting-lawsuit

[3]http://www.worldtrademarkreview.com/blog/detail.aspx?g=7fe051f2-eba0-423c-b1b0-ef80109587f3

[4]http://www.fortune.com/2018/05/11/burberry-suing-target-trademark-infringement-check-print/

[5]https://www.iipta.com/ip-assets-fashion-industry/

[6]http://www.thefashionlaw.com/home/the-state-of-trademark-protection-in-fashion-and-luxury

[7]https://www.trademarknow.com/trademark-industry-report

[8]http://www.worldtrademarkreview.com/Intelligence/Anti-counterfeiting/2015/Industry-insight/IP-enforcement-in-the-fashion-industry

Trademark Squatting: A Threat To MNCs

With the evolution of Globalization and the increasing presence of multi-national corporations like Amazon and Apple Inc. amongst others, enforcing Global Intellectual Property (“IP”) Rights becomes indispensible. As a result of this, business owners need to be conscious of ways to ensure that their IP, especially trademarks is protected globally. In 2012, Apple faced an issue with its Trademark registrations due to Trademark Squatting and had to pay a hefty amount of  $60 million to the owner of the ‘iPad’ Trademark in China. A possible dispute of the same nature could arise in India with respect to Amazon. Amazon[1] has introduced Prime, Echo and Prime Music in India is not able to proceed further with the registration at the Indian trademark office. It has applied for these trademarks under class 9, which is primarily related to computers, software and electronics.

To provide a better understanding of the menace that Trademark Squatting is, The World Intellectual Property Organisation (“WIPO”) defines Trademark Piracy (Squatting) as “the registration or use of a generally well-known foreign trademark that is not registered in the country or is invalid as a result of non-use.[2]. It occurs when a person in a foreign country registers a trademark that has already been registered by its true owner in its original country. There have been various instances of the same due to which the original companies are not able to register their trademarks and has to pay a very heavy price to such companies to stop the use of the trademarks.

Interestingly, trademark squatting is a niche area in trademark disputes. It has been seen that generally registration is a major roadblock for foreign companies as once they gain worldwide goodwill, a number of local infringers try to register their trademarks in order to sell their products and make huge profits. With respect to the general rule, the exclusive rights of a trademark owner is territorial in nature and therefore laws relating Trademark varies from one territory to another. Trademark squatters take advantage of such different law enforcement, which becomes a hurdle when companies become multi-nationals.

Trademark Squatting is largely seen in China.[3] It follows a ‘first to file’ system as opposed to the ‘first to use’ system. In a ‘first to use’ system the first user of the Trademark obtains the exclusive right, whereas, in a ‘first to file’ system, the first person registering it gets the right to the Trademark. Thus, the country doesn’t require any proof of actual use or intent to use the trademark in any application. Hence, firms anticipating expansion into other countries, particularly China, should apply for registration at the earliest. In addition to thisbrands should register their trademarks in the respective transliterations as well.

In 2016, Michael Jordan, the basket ball star, received a favorable verdict from the Supreme Court of China, that arose out of the legal battle against Qiaodan Sports, a Chinese sportswear company using the Chinese transliteration of Jordan’s name as its trademark. A similar case occurred with Viagra, wherein the transliteration of Viagra in China was “Weige” and was registered in China. Thus, despite several lawsuits, Pfizer has failed to gain ownership of the Chinese trademark, Weige, and has been unable to force Vietnam and others to stop using the trademark.

In spite of the existence of various Conventions aiming towards the protection of trademarks that are “well-known” such as the Paris Convention[4], The TRIPS Agreement[5], The Madrid Protocol as well as the WIPO Joint Recommendation Concerning Well Known Marks[6], these are not enough to counter this problem. India, in its Trademarks Act has provided for protection of foreign trademarks with respect to the “Trans-border Reputation” principle.

It was a principle followed in India that the reputation of a good should benefit its owner even in a foreign land where the goods are not being sold.[7] However, the landmark judgment of Toyota case[8] modified this principle and held that trans-border reputation can only be considered if there are customers of the claimant’s product in the claimed jurisdiction and that such customers exists before the infringer’s activity was established.

The problem of squatting needs to be tackled at an institutional level, both domestically as well as Internationally. Further, with regard to dispute resolution[9], although WIPO has a mechanism but it rests on consent from both parties that is more than often not accepted by the squatters as they prefer their home countries. Another problem which may arise is when firms register their trademarks in China but face problem while expanding their services due registering in only particular classes of trademarks.

Business leaders need to identify the right strategies to protect their Trademark before entering the markets internationally. International registration of Trademarks is still not a prevalent practice. Further, China should introduce multiple class registrations and to first to use policies. These policies are also practiced in the United States as well as in India. The best way to challenge trademark squatting is to assert the filing that is done with bad-faith. Bad faith filing generally refers to “an intentional dishonest act by not fulfilling legal or contractual obligations, misleading another, entering into an agreement without the intention or means to fulfill it, or violating basic standards of honesty in dealing with others.”[10] However, this can be costly to prove due to the extensive procedure and expansive needs of evidence to support claims. Bilateral and multilateral treaties between states may also help to ensure that Trademarks registered in one jurisdiction are protected in others. Undoubtedly, it is a multifaceted issue that must be solved at every level

Author: Ruchika Srivastava, Intern at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

References:

[1] https://timesofindia.indiatimes.com/companies/amazons-prime-echo-hit-trademark-hurdles/articleshow/63650805.cms

[2]  World Intellectual Property Organization, WIPO Intellectual Property Handbook, 90 (2008).

[3] http://articles.latimes.com/2012/mar/28/business/la-fi-china-trademark-squatting-20120328

[4]The Paris Convention for the Protection of Industrial Property, 1883.

[5] Agreement on Trade Related Aspects of Intellectual Property Rights, 1995.

[6] World Intellectual. Property. Organisation, Joint Recommendation Concerning Provisions On the Protection of Well-Known Marks, Sept. 20-29, 1999

[7]MilmetOftho Industries &Ors. v. Allergen Inc. (2004) 12 SCC 624

[8] Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd. & Ors,  AIR 2018  SC 167

[9]World Intellectual Property Organisation, Alternate Dispute Resolution

[10]  http://dictionary.law.com/Default.aspx?selected=21

IPL (Indian Premier League) And IPR (Intellectual Property Rights)

People of India see cricket not only as the most popular sport in India but also they follow it as a religion which accounts for such great success of IPL tournaments in India. There is a lot of money invested and involved in organizing IPL and the role played by IPR in making it a success across the world can’t be ignored but certainly Indians don’t give much heed to the Intellectual Property Rights[1] whose omnipresence can be noticed all over the field whether it is brand name, team name, team logo, slogans, tag-lines used/advertised by various IPL teams important role in increasing the popularity of a team. These trademarks are registered and protected under Trademarks act, 1999. Today it is universally accepted fact that the trademarks play more important role as compared to the dogmatic view that trademarks are just symbols to distinguish goods belonging to a person from another person, TM has now evolved as an agent of creating good will of the particular brand and contribute greatly in a brand’s business by helping them in establishing their brand value[2]. Trademarks are well thought of artistic symbols which are developed after rigorous analysis of the psychological effect it would have on people’s minds.

Many such trademarks can be seen in merchandise of various teams such as t-shirts, caps, shoes, etc. But as these merchandise are produced to promote a particular team, the sponsors supporting them and to make a good business out of it for which these are sold at high prices which can be afforded by only very few people. Taking advantage of this gap between a major portion of population, their desire to wear the merchandise of their favorite team or players and weak enforcement of TM laws in the country, many people get into business of producing and selling such fake copies (nearly perfect visual imitation) of these merchandises. The TM owners also don’t make much effort to stop such practices, the reason could be that they are confident of the fact that their target population would only purchase the official merchandise and even if some people wear fake t-shirts it will also in a way increase the popularity of the particular team amongst people.

Street vendors selling (fake) T-shirts of these teams can be commonly seen on the streets of India. While a purchaser won’t get confused about the originality of the t-shirts and most of the times he will be sure about the absence of any kind of relationship between the T-shirts being sold to them and the official teams (Although the reason for purchasing them would be their visual similarity to the official merchandise) but there is a great ‘likelihood of confusion’ regarding its association with the TM owner, to a third person that can certainly have an adverse effect on a person’s choice to buy the original stuff.

One such example is; when the company did not even have a single store opened in the city, t-shirts with a perfect imitation of ‘ed-hardy logo’ were easily found hanging on the street vendors’ shops[3], the people were actually turned off due to this fact and many decided not to purchase the original apparel from the store when later the official stores were opened in the city, the same also has been depicted in a movie scene in ‘chance pe dance’ where school kids are shown raising doubts regarding the originality of ed-hardy t-shirt worn by Shahid.

These practices fall under the concept of ‘passing off’[4] which is free riding on someone else’s goodwill by misrepresenting one’s goods as that of others. This also leads to dilution of the original mark as it reduces its distinctiveness.

In the arsenal vs Mathew heed[5], selling unofficial memorabilia and souvenirs carrying the TM of Arsenal football club for over 30 years was held by the ‘England and Wales Court of Appeal’ to infringe the trademark rights of the TM owner. The question before the court was ‘whether trade mark use was necessary for infringement of a trade mark?’ Which the court answered in negative and held that The use of the Arsenal Marks on the goods in question would jeopardize the ability of the trade marks to guarantee origin.”

The above mentioned judgment if followed in India would result into a harsh blow upon every such person who in some manner is involved in producing, distributing or selling such unofficial merchandise but as a matter of fact India has not seen a single case on such subject matter. Since, section 29(2)(c) clearly lays down that, “a registered TM is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of its identity with the registered TM and the identity of the goods or services covered by such registered TM is likely to cause confusion on the part of public, or which is likely to have an association with the registered trade mark.”

“Sub-section (3) of the same section also says that in any case falling under cause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.” Therefore it can be anticipated that if such case arises in future, the Indian courts are likely to follow the judgment of their foreign counterpart. But since the Indian courts can’t take suo moto action against such practices, nothing much is likely to happen in this regard anytime soon.

Author: Koonal Tanwar,  LL.M., NALSAR University of Law, Hyderabad  intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

References:

[1] http://www.rediff.com/business/report/counterfeit-tales-dont-buy-a-fake-online/20180127.htm

[2] Frank I. Schechter, ‘The Rational Basis of Trademark Protection’, Harvard Law Review, Vol. 40, No. 6 (Apr., 1927), pp. 813-833

[3] http://www.dnaindia.com/business/special-is-india-ready-for-luxury-1239076

[4]http://www.rslr.in/uploads/3/2/0/5/32050109/trademark_infringement_and_passing_off.pdf

[5] ARSENAL FOOTBALL CLUB PLC Vs.MATTHEW REED [2003] EWC A C iv 696