Category Archives: Trademark Litigation

Blogs in this Category would include all Trademark Litigation in India

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.
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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

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.

Denial of Injunction on the grounds of Acquiescence and Delay by Plaintiffs: SRF Foundation v. Ram Education Society

Devina Choubal, an intern at Khurana & Khurana looks into grounds of denial of injunction by analyzing the recent case of SRF Foundation v. Ram Education Society.

FACTS:

‘SRF Foundation’ plaintiff no.1 is a registered non-profit society engaged in several social and community work including running schools such as “The Shri Ram School”. The name/mark “Shri Ram” is used by the Plaintiff No.1 since 1988 having a good reputation. While plaintiffs No.2 is engaged in setting up schools in India and abroad. With this goodwill, the plaintiffs fulfilled its objective to meet the shortage of good schools by entering into an agreement with “Educomp Infrastructure and School Management” to set up five schools under the name of “The “Shriram Millennium School”. “Ram Education Society” defendant opened “Shri Ram Global Pre School” next to the plaintiff no. 1’s school in Gurgaon. The plaintiffs filed for the registration of trademark, thereafter subsequently withdrawn and the defendant instead registered their mark. The plaintiffs being the real brother of the defendant’s trustee wrote emails to his brother to alert the defendant of the reputation and goodwill of the name/mark and to stop using it. However, the defendant continued to use the name/mark “Shri Ram. The plaintiffs advertised stating that the name/mark of the school does not belong to them. Thereupon, the defendant’s lawyer sent a legal notice to the plaintiffs to withdraw the advertisement and to render public apology. The plaintiffs filed a suit for permanent injunction, passing off and account of profits in the Delhi High Court and also filed an application seeking interim injunction. The Hon’ble High Court passed an order with respect to interim injunction which is discussed in detail as below. The complete order can be accessed here

ARGUMENTS BY THE PLAINTIFFS:

  • It was contended by the plaintiffs that the inherent right to use the name “Shri Ram” rests with each member of the Shri Ram family but such a right is subject to restricting oneself to its domain of business and not encroaching upon others rights. They have no objection if the said mark is used by the defendant in other activities or services but not this activity, as they have being using the name/ mark “Shri Ram” for almost 25 years, the reason being they have goodwill in these services, leading to monopoly over the name/mark. Though the plaintiff and the defendant belong to the same family, still the use by the defendant hampers the plaintiff’s reputation. Because of passing off the services of the plaintiffs by the defendant, the public are confused about which school belongs to whom. Thus, there is no bonafide use of the name/mark. The use of “Shri Ram” in the name/ mark causes confusion and is deceptively similar.
  • The plaintiffs further contented that there is a prior use of the name/mark by them, as the name/mark has been used by them extensively for many years before the defendant.

ARGUMENTS BY THE DEFENDANT:

  • There exist parallel rights to use the name/ mark, thus, the defendant is protected under the legacy of the Late Shri Ram Family. The defendant and the plaintiff share a common family name. Therefore, there cannot be a claim of any proprietary right or monopoly by the plaintiffs. The defendant’s schools are “Shri Ram Global School”, “Shri Ram Centennial School”, “Shri Ram Global Pre School” which is distinctive from Plaintiffs, which are “The Shri Ram School” and “Shri Ram Millennium School” in terms of different suffix and logos. Therefore there is a bonafide use of the mark by the defendant and the plaintiffs cannot have monopoly rights over the mark “Shri Ram”. Also it was further contended by the defendant that the name/mark is not deceptively similar or confusing as it can be distinguished because of different logos & suffix, as stated above. It was further submitted that the email dated 28th September, 2011 stated that there is no objection/ admission on the part of the plaintiffs to running of the schools by the defendant. The said email is as follows: – “I want to mention that if you ever wanted to divest or reduce your shareholding, you would then be reduced to minority shareholding in your company. You must remember that the ‘Shri Ram’ brand might then go to wrong outsiders. One would have no control over how they would use this brand.”
  • The defendant did not deny the prior use by the plaintiffs but they rather denied an exclusive proprietorship, being aware about the plaintiffs having established the schools before them. However, the defendant represented by Mr. Anand, after becoming aware of the fact that the name/mark existed before the use by the plaintiffs as the Shri Ram School in Mawana, UP established by the family’s relatives, they argued on the contention of no prior use by the plaintiffs.

Picture2

COURT OBSERVATIONS & JUDGEMENT:

The elements of passing off:-

In order to succeed in an action of passing off, 4 main requirements have to be satisfied by a party who intends to seek the relief of injunction.

  • Prior use;
  • Party who is claiming right must be the proprietor of the mark;
  • Confusion & deception;
  • Delay, if any.

In respect of the first and the second requirement the defendant already approved of the prior use by the plaintiffs though denying the exclusive right over the mark/name. The Hon’ble Judge was brought to notice by the defendant about no such written document existing which tells that the plaintiffs have an exclusive right. However, the plaintiffs have a reputation and no other family member though involved in contribution to education have acquired such goodwill, for the simple fact that the operation of Mawana School started by the Shri Ram family relatives prior to the use by the plaintiffs is limited to the place as pointed out by the plaintiffs and thus considered by the Hon’ble Court.

While in respect of third requirement, it was held that the defendant adopted the trademark even though the plaintiffs has been using it since 23 years, thus, creating confusion by starting school with the name/mark “ Shri Ram” in the same vicinity as that of the plaintiffs. Therefore, the name/ surname being distinctive is protected as per law.

The delay of about 3 years in approaching the court was because the plaintiffs though being aware about the use of “Shri Ram” by the defendant, they did not take any action against them. Thus, there was a delay for a considerable amount of time leading to the applicability of principle of acquiescence. The reason given by the plaintiffs was of proximity of relation between the founding members of the plaintiff and defendant because they are real brothers and the plaintiffs tried to warn and end the matter amicably.

The similarity of marks:-

The Judge observed that the parties have Shri Ram in common and the same was an essential part of their services. It was held in Himalaya Drug Company v/s M/s SBL Ltd. that the essential features of the mark if they are same then the logos are deceptively similar. The mark “Shri Ram” is also used by the defendant like the plaintiffs. Therefore it is deceptively similar.

The admission by the plaintiffs:-

It was further held that the admission made by the plaintiffs cannot operate as an estoppel against the person making it.  As held in Gulabchand vs. Bhaiyalal, AIR 1929 Nag 343. There cannot be an estoppel against the law or statutory provisions. When one is concerned with the statutory right or constitutional guarantee, there cannot be any estoppel against the same.

Bonafide Use:-

It was observed that the “bonafide use” as per the Section 35 of the Trademark Act, 1999 is not to be considered in the present case because the defendant’s school is started in the vicinity of the plaintiffs and they issued licenses and appointed franchises despite warnings from the plaintiffs.

CONCLUSION:-

The Hon’ble Court hel that the defendant to display the disclaimer while continuing the functioning of the schools within 6 months about no connection with the plaintiff’s school. The reason being, the interim injunction of the use of the name/mark would cause hardship to the students and the parents who have already paid fees and taken admission in the defendant’s school. The defendant would be entitled to give bonafide description in the nature that the school is run by Vivan Bharat Ram under the legacy of his grandfather Shri Ram for future schools.

Criticism Sites using Confusingly Similar or Identical Domain Names

Medhavi Singh, an intern at Khurana and Khurana, Advocates and IP Attorneys, looks into a trademark litigation relating to criticism sites using confusingly similar or identical domain names.

Cybersquatting is the buzz word in the arena of domain name disputes and various.IN Domain Name Dispute Resolution Policy (INDRP) and Uniform Domain Name Dispute Resolution Policy (UDRP) decisions regarding cybersquatting have taken front seat when it comes to recent Intellectual Property Law developments. The World Intellectual Property Organization (WIPO) has defined cyber squatting[1] as pre-emptive registration of trademarks as domain names by third parties, wherein the ‘first-come first-serve’ nature of domain name registration system is exploited by the virtual hoodlums of the cyber world called Cybersquatters to register names of trademarks, famous people or business. These Cybersquatters then auction the domain names or offer them for sale directly to the company or person involved at exorbitant prices far beyond the cost of registration; at times they also keep the registration and use the well-known marks or famous names to attract business or unwary customers to their own sites.

Increasing domain name disputes have raised numerous questions when it comes to adjudicating  cybersquatting matters and one such interesting question pertains to status of genuine, non-commercial criticism sites having deceptively similar domain names. WIPO panel for UDRP disputes has explicitly discussed this question and there seems to be a dichotomy of views[2].  A set of panel decisions, especially in case of US disputes, held that the respondent will have a legitimate interest in using trademark as part of the domain name if the registration of the criticism site is for fair and non-commercial use. Whereas other panel decisions affirmed that the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark.

Before we elaborate on the above mentioned views of the UDRP panel it is pertinent to discuss the relevant provisions in the UDRP (identical to INDRP) when it comes to adjudicating domain name disputes. Para 4(a) of the UDRP (identical to Para 4 of INDRP[i]) lists following three essentials[3] that need to be established in order to prove that a domain name conflicts with the legitimate rights of the complainant:

  • Disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
  • Registrant of the disputed domain name has no rights or legitimate interests in respect of the domain name; and
  • Disputed domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.

Para 4(b)& Para 4(c) of the policy provides for ‘Evidence of registration and use in bad faith’ and ‘How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name’ respectively.

Keeping in mind these provisions we can now discuss a few panel decisions elucidating the two prevalent views when it comes to non-commercial criticism sites having controversial domain names.

Cases where domain names were transferred

Walmart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D20000477

In the instant case disputed domain names were “walmartcanadasucks.com”,”walmartcanadasucks.com”, “walmartuksucks.com”, “walmartpuertoricosucks.com” and “walmartpuertorico.com”. No evidence was furnished by the respondent (the registrant of the disputed domain name) to demonstrate that “Walmarket Puerto Rico” or “Walsucks” was an established legal entity.  The panel in this case cited WalMart Stores, Inc. v. Walmarket wherein it was held that “Wal-Mart” trademark is well-recognized in many countries including the United States & Canada. It was stated by the panel that Walmartpuertorico.com is identical to the complainant’s trademark except for the presence of the generic top-level domain name “.com”, lowercase letters excluding the hyphen from the complainant’s trademark and the addition of ‘puertorico’. The generic top-level domain name and lowercase letters are devoid of any legal significance when it comes to establishing similarity or identity between marks. Also, the panel observed that elimination of hyphen may create visual difference but there won’t be any phonetic difference between the domain names. Addition of a place name, a common method for indicating the location, doesn’t alter the underlying mark to which it was added as a user is likely to assume that the complainant is associated with the domain name. When it comes to “sucks.com” sites registered by the respondent the panel held that the addition of pejorative term “sucks” is tantamount to creating a phrase “Wal-Mart Canada Sucks” thereby clarifying that the addition of a common or generic term following a trademark does not create a new or different mark in which respondent has rights. In this manner the panel addressed the first element of para 4(a) of the UDRP Policy.

The respondent in this case claimed that he had created the website for his forthcoming book “Wal-MartCanadaSucks.com” and was inviting stories of dissatisfied customers for his book. In addition to this, the respondent characterized himself as a “domain name consultant’ in a mail wherein he declared that the disputed domain names were for auction; this proves that the domain names were not mere non-commercial criticism websites but were created for commercial gains. It was therefore, concluded by the panel that the respondent’s claim to a ‘freedom of speech’ interest in establishing the disputed websites was contradicted by his own words and the respondent engaged in abusive registration of the above mentioned domain names within the meaning of Para 4(a) of the UDRP. Consequently, the respondent was ordered by the panel to transfer the domain names to the complainant.

Anastasia International Inc. v. Domains by Proxy Inc./rumen kadievCase No. D20091416

The disputed domain name in this case “Anastasia-international.Info” was created to be used as a website to warn prospective customers of the complainant’s business malpractices and the intent was to share the truth about the complainant, according to the respondent. The panel in this case held that since the respondent selected a domain name identical to the complainant’s trading name and did so deliberately keeping in mind complainant’s rights it cannot demonstrate rights and legitimate interests merely because the intent was to publish content that may be critical of the complainant; the panel did acknowledge that a person is entitled to express his views subject to legal restrictions and a person may use a domain name to do so provided the domain name in question doesn’t cause confusion or mislead the public as noted in The Royal Bank of Scotland Group plc case[4]. Hence, even if the respondent created the website in good faith for non-commercial purpose, the use of confusingly similar domain name was tainted. The subject domain name was thus ordered to be transferred to the complainant.

Cases where the complaint was denied

Howard Jarvis Taxpayers Association v. Paul McCauley Case No. D20040014

The domain name at issue is “hjta.com”, and it is evident that ‘hjta’ is an abbreviation for Howard Jarvis Taxpayers Association. The respondent asserted he’s a critic not a competitor and the domain name did not aim at disrupting the business of the complainant. The respondent also contended that confusing his website with the complainant’s website was improbable for the users as the appearance of the website and representation of criticism on the website was in such a way that it was highly unlikely to deceive a user into associating the website with that of complainant’s. Ergo, the respondent asserted that by creating the disputed website he was exercising his divine and lawful right to speak freely and to speak the truth. The panel in this case suggested that in case of U.S based criticism sites a legitimate interest can be construed specially if there are no other indications of bad faith; it was then concluded that the respondent was entitled to the protection of para 4(c)(iii) of the UDRP as he was making a legitimate non-commercial or fair use of the domain name without the intention to mislead consumers or to gain commercially. There was no evidence of cybersquatting and the website of the respondent appeared to be a classic criticism site. The complainant in this case in spite of prima facie deceptive similarity of domain name with the trading name of the complainant failed to prove lack of legitimate interest as well as existence of bad-faith and the panel therefore, declined the transfer of domain name to the complainant.

Sermo, Inc. v. CatalystMD, LLC Case No. D20080647

“sermosucks.com” is the disputed domain name in this case and as the name suggests the respondent is highly critical of the complainant’s management practices and hence registered the domain name. The panel reiterated “Wal-Mart case” decision as far as the deceptive similarity of the domain name is concerned and held that a domain name containing the trading name of the complainant along with a pejorative term giving rise to a phrase is a confusingly similar to complainant’s mark. However, when it came to the question of respondent’s legitimate rights in the domain name, the panel held that both parties in the matter were residents of the US and if the panel ordered transfer, the same would be prevented by the US courts. The panel for that reason believed in applying US legal principles and on this basis it was stated that the complainant had failed to establish lack of legitimate interest of the respondent in the domain name as the website was a criticism website. The panel pointed out that tarnishment prohibited by UDRP as held by the panel in previous decisions includes “unseemly conduct such as linking unrelated pornographic, violent or drug related images or information to an otherwise wholesome mark and fair use even if libellous will not constitute tarnishment”. The respondent’s website clearly mimics the complainant’s website but is highly critical of the complainant and it was obvious that no right minded organization will create a website like that for criticising its management practices and therefore there was no likelihood of confusion on the part of consumers. There was also no evidence of commercial activity on the website and hence, there was no cogent proof to establish lack of respondent’s legitimate interest or rights in the domain name or existence of bad faith. Transfer of the domain name was therefore denied in this case.

Recently the WIPO panel for UDRP disputes decided the following case wherein the domain name was transferred to the complainant.

Pinsent Masons LLP v. Peter Smith Case No. D20150796

The disputed domain name in this case is “pinsentmasons.lawyer” registered with GoDaddy.com LLC. The respondent contented that the intent behind registering the domain name was to provide a platform to the clients of the complainant (a law firm) and others to post their feedback and comment about the organization. The respondent was using a domain name identical to the trading name of the complainant and the respondent had no Legitimate Right or Interest in the domain name, this disputed domain name was also offered for sale before notice to the respondent of the instant dispute and there was evidence that the respondent had given a false registration address thereby creating reasonable doubt establishing bad faith. WIPO panel in accordance with the above discussion ordered the respondent to transfer the domain name to the complainant.

Indian case

RPS Infrastructure Limited v Jayanta Barua decided on 08/05/2010

The disputed domain name was “rps-savana.co.in” and the respondent registered the domain name as a common discussion platform for customers of the SAVANA construction project in which the respondent had personally invested and was concerned about the health and status of the project. According to the respondent, the website clearly specified that it was a personal, non-commercial website and was not affiliated to the complainant; it was further stated by the respondent that anyone visiting the website would easily find out that the website belonged to the respondent and not to the complainant. In respondent’s defence the complainant was aware of the presence of the website and even welcomed the creation of the website through an e-mail to the respondent; appearance of the website was nothing like that of complainant’s and the respondent was ready to address the copyright issues of the complainant. The arbitrator in this case held that the disputed domain name was definitely confusingly similar to that of complainant’s trading name, the respondent also lacked legitimate interest in the domain name as the domain name consisted of complainant’s trading name and nowhere was it specified that the website was a discussion forum and was likely to result in confusion. Therefore the complainant’s use of the disputed domain name was not considered fair use under para 7 (iii)[ii] of INDRP policy and it was held by the arbitrator that use of such a domain name under para 6 (ii)[iii] of the INDRP policy prevents the owner of the trademark from reflecting its mark in corresponding domain and establishes bad faith. The respondent had registered other domain names using complainant’s trading nameand it was beyond reasonable doubt that the same was done in bad faith. The domain name was thus ordered to be transferred to the complainant by the arbitrator in this case.

Conclusion

There is an abundance of domain name dispute decisions addressing the status of criticism websites and it is evident that confusingly similar domain names are discouraged from being used as criticism website unless the legal principles of the concerned country encourages otherwise. However, it is pertinent to protect trademarks from being used by cybersquatters for directing users to their websites in the garb of criticism websites and the divine right of freedom of expression.

[1]http://www.wipo.int/amc/en/center/faq/domains.html

[2]http://www.wipo.int/amc/en/domains/search/overview2.0/#24question 2.4

[3]https://archive.icann.org/en/udrp/udrp-policy-24oct99.htm

[4] The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D20030166

[i]Any Person who considers that a registered domain name conflicts with his legitimate rights or interests may file a Complaint to the .IN Registry on the following premises:

  • the Registrant’s domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights;
  • the Registrant has no rights or legitimate interests in respect of the domain name; and
  • the Registrant’s domain name has been registered or is being used in bad faith

[ii] Registrant’s Rights to and Legitimate Interests in the Domain Name

Any of the following circumstances, in particular but without limitation, if found by the Arbitrator to be proved based on its evaluation of all evidence presented, shall demonstrate the Registrant’s rights to or legitimate interests in the domain name for the purposes of Paragraph 4 (ii) :

  • the Registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

[iii] Evidence of Registration and use of Domain Name in Bad Faith

For the purposes of Paragraph 4(iii), the following circumstances, in particular but without limitation, if found by the Arbitrator to be present, shall be evidence of the registration and use of a domain name in bad faith:

(iii) by using the domain name, the Registrant has intentionally attempted to attract Internet users to the Registrant’s website or other

on-line location, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the Registrant’s website or location or of a product or service on the Registrant’s website or location.

Win.rar wins over the Disputed Domain Name winrar.com under UDRP Proceedings: win.rar GmbH v. Win Road Assistance Repairs Pvt. Ltd

Recently, granting a major victory to our client, the World Renowned Data Compression Software System provider win.rar GmbH, Administrative Panel, WIPO under UDRP, in its recent decision vide Case no. D2015-0398, issued transfer of disputed domain name www.winrar.com  to win.rar GmbH. This article is to highlight the recent UDRP dispute wherein the Complaint was re-filed by win.rar GmbH over the long disputed domain name winrar.com adopted by one Win Road Assistance Repairs Private Limited. The Copy of the Decision can be accessed here.  

Brief Facts Of The Case

  1. Complainant in the present case is win.rar GmbH who is holder of exclusive worldwide distribution rights for well known WinRAR software by Mr. Eugene Roshal and Mr. Alexander Roshal. Complainant holds trademark for the trademarks WinRAR in various countries including India. While Respondent Win Road Assistance Private Limited has registered the domain name winrar.com since 2006.
  1. Being aggrieved by the adoption of the domain name winrar.com which comprises of the complainant’s well known trademark WinRAR causing confusion and deception to the potential users of the Complainant due to alleged misuse of the domain name, Complainant had filed its first complainant under UDRP in the year 2007 for transfer of domain name winrar.com to the complainant which was denied by the panel as complainant was not able to prove bad faith involved in the adoption of the domain name winrar.com by the Respondent.
  1. However Complainant re-filed the Complaint under UDRP in March 2015 on the ground of certain new relevant actions by the Respondent in respect of the domain name winrar.com and otherwise since earlier decision by the panel in 2008 vide case no. D2007-1768. The re filed Complaint was duly accepted by the Panel for adjudication.

Arguments On Behalf Of Complainant:

Following contentions were raised by the complainant in order to prove the essential elements under UDRP:

  1. It was contended that the Respondent was making illegitimate use of the domain name winrar.com by projecting counterfeit links for download of the renowned WinRAR software of the applicant which was causing irreparable loss to the complainant and its hard earned reputation. Thus the respondent has tarnished the image of the Complainant by diverting customers away.
  2. It was further contended that one of the Director of the Respondent had registered trademark with the word Winrar under class 42 for software in due course of time which is contradictory to what has been claimed by the Respondent in the earlier case on the basis of which earlier decision was rendered. The Respondent has contended in the earlier proceeding that the domain name was adopted for their automobile services and has nothing to do with the Complainant’s business of Software while soon after the decision registered the trademark with the word Winrar with the sole intention to circumvent the policy. Hence the malafide intention and bad faith of the Respondent was prima facie.
  1. It was further argued that one of the Director of the Respondent incorporated another Company in India with the name Winrar Software Private Limited dated 28th September 2008 soon after the earlier decision in their favor; contrary to what had been claimed in earlier proceeding. This incorporation of the Software Company with the Complainant’s trade mark was with sole intention to circumvent the policy and legitimize the illegal deeds of the Respondent.
  1. It was further put on record that the Respondent’s associate corporate named Compsys Domain Solutions Private Limited and Compdot Internet Services Private Limited had registered various third party domain names in bad faith and had been a party to various UDRP proceedings as Respondents. Pertinently in these disputes all the domain name were transferred to the respective complainant. This reveals that the respondent is engaged in a pattern of cyber squatting conduct giving rise to bad faith registrations and use of the domain names.

Arguments On Behalf Of Respondent:

Respondent’s contentions were as follows:

  1. The Respondent contented that the registered the disputed domain name was shortened version of long business name: “WIN” for Win, “R” for “Road”, “A” for Assistance and “R” for repairs.
  1. The Respondent claimed that they have no knowledge of the Complainant’s alleged trading activities. It was further contended that the Respondent’s rights were clearly established in earlier case D2007 1768. A director of the Respondent filed for trademarks nos. 1850490 and 1850491 “knowing the devious ways of the Complainant”.
  1. The Respondent contended that they had been commonly known the name “WINRAR”. The board of the Respondent’s shop is headed “WINRAR TYRE PLUS”. The name “Winrar” also appears on advertising leaflets, business cards, invoices, letterhead, cheques, bank account, bank statement. Accordingly the Respondent is conducting an active business and its name was not designed to circumvent the UDRP without any intention to carry out a legitimate business. The Respondent operated a genuine website at the disputed domain name for Winrar Garage since 2008.
  1. The Respondent further argued that their business is “very local in nature” and so the Respondent allows other advertisers onto its website as is normal practice on the Internet. As traffic from outside India was of no benefit to the Respondent, it decided to allow partial use of its site by advertisers offering the Complainant’s actual software, not counterfeit versions. The Complainant does not provide commission to resellers when users upgrade to its paid software; instead the Complainant allows resellers to bundle its free software with a toolbar or other software. There are hundreds of such sites. The Complainant, not the Respondent, has derived all revenue from the sale of the software. A few months ago the Respondent stopped advertising the Complainant’s software and the loss of revenue must have prompted the Complainant to file this case. The Respondent has never contacted the Complainant offering to sell the disputed domain name. It was the Complainant’s representative who has contacted the Respondent.
  1. The Respondent further contended that they have not disrupted the Complainant’s business or sought to do so. The parties are in no way competitors. The Respondent reiterated that it registered the disputed domain name to expand its own business, not to block the Complainant or create a likelihood of confusion with the Complainant’s marks. On the contrary it was contended that the Complainant was guilty of reverse domain name hijacking (“RDNH”). The Complainant has contacted the Respondent with different offers for the disputed domain name, which have failed, and now it is again resorting to the UDRP when there are no fresh grounds.

Decision

The Panel concluded that the incorporation of Winrar Softwares Private Limited in 2008 and the registration of the 2009 Trade Marks for “Winrar Software” and “Winrar Toolbar” by the Respondent’s director following the Roshal Case did not assist the Respondent. In the Panel’s view, those steps were likely to have been intended to circumvent the UDRP by projecting a veneer of respectability over the Respondent’s proposed offering of the Complainant’s software under the disputed domain name, which comprised the Complainant’s unadorned name and trade mark.

The Panel further concluded that the Respondent has no rights or legitimate interests in the disputed domain name and the same had been adopted in bad faith and that the Complainant has therefore established the all the three element of paragraph 4(a) of the Policy. Hence the Domain name winrar.com was ordered to be transferred to the Complainant.

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

Delhi High Court Stays Order Restraining Lupin From Using Disputed Trademark ‘LUCYNTA’

Reportedly, Hon’ble Delhi High Court stayed an earlier order, dated 26 February, restraining Lupin from using the trademark “LUCYNTA” for its medicines, said to be deceptively similar to the trademark “NUCYNTA” of Johnson and Johnson.

It was argued on behalf of Lupin that Johnson and Johnson are neither selling any goods under the mark nor have any intention to do so in India. It was further argued that the ultimate test is to analyze who is first in the market being India. Further emphasis was laid on the argument that if an Indian company has honestly adopted the trade mark then a multinational must not try to throttle the Indian Company.

On behalf of Johnson and Johnson, it was argued that it was a well renowned name with reputation across the world. There was an awareness of the mark NUCYNTA even in those parts of the world where it was not used owing to its reach through advertisements, social media interalia.

In the same case, filed by Lupin, an order was passed on 26th February 2015 restraining Lupin from using the Trade Mark LUCYNTA. The order stands stayed and re-notified on Monday.

Pertinently over the last 15 years, multinational companies have increasingly cited the principle of trans-border reputation to protect the infringement of their trademarks in regions where they do not operate. And this was also the point of debate before Hon’ble Justice Badar Durrez Ahmed. It was also noted that Johnson and Johnson had not obtained any approvals from the concerned statutory authority for manufacturing and selling drugs under the trademark NUCYNTA in India even after period of three years had elapsed.

The next hearing is scheduled for 16 September. And Lupin was directed to give an account of its sales and profits under the trademark LUCYNTA at the next hearing.

It would be interesting to note the final verdict in the case having regard to the various aspects as claimed by the parties which includes honest adoption, prior use, trans border reputation inter alia.

Source: Livemint

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

Recent decision of IPAB in the case of E.I.DU Pont De Nemours & Company V. Galpha Laboratories and Ors

This article is relates to a recent judgment of Intellectual Property Appellate Board (hereinafter IPAB) dated 4th December 2014 in the case “E.I.DU Pont De Nemours & Company V. Galpha Laboratories and Ors.

Brief Facts:

On 11th March, 2009 the trademark registry refused the opposition of the E.I.DU Pont De Nemours & Company (appellant herein) and allowed the application of trademark “NOMEX” under application No.499603 in Class 5 of the Galpha Laboratories (respondent herein) under the provisions of the Trade and Merchandise Marks Act,1958. Thus being aggrieved by the rejection by Indian trademark registry, an appeal was filed by the DuPont to IPAB. The copy of the decision made by IPAB can be accessed here.

Background:

The appellant’s Company is a limited company incorporated under Company’s Act 1956 having registered office in Mumbai. The appellant has production facilities for DuPont Crop Protection Products, Dupont Liquid Packaging Systems. The appellant has claimed that they have spent huge amount of time, money and efforts in promotion of trademarks registered under various classes in world over including India. The appellant has further claimed that they are registered proprietor of many trademarks covering more than 50 countries. The appellant has obtained registration and is registered owner of trademark “NOMEX” in many countries including India. The appellant has further stated that all the above registrations of the trademark has been renewed from time to time and are valid and subsisting. The appellant stated that they have obtained trade mark NOMEX under class 22, 16, 17, 23 and 24.

The appellant came to know through an advertisement dated 16th April, 1999 that vide journal No.1197, the respondent had filed an application under the name “NOMEX” vide application No.499603 dated 19th October,1988 under the Trade and Merchandise Marks Act, 1958 in respect of pharmaceuticals, medical preparations and substances in Class 5 claiming user as proposed to be used. The appellant has filed a Notice for Opposition dated 13th of August,1999 vide Opposition No.BOM-54010 against the registration of the trademark “NOMEX” in class 5 under the provisions of Trade and Merchandise Marks Act of 1958.

Decision by Assistant Registrar:

After hearing the pleadings by both the parties, the Assistant Registrar has passed an order on 11th of March, 2009 rejecting the Opposition of the appellant on the below grounds.

(i) The Assistant Registrar accepted the contention of the respondent herein that they took search on the trademark registry for the trademark “NOMEX” in Class 5 and also made a market survey in the market for medicinal products and there was no conflicting trademark in Class 5.

(ii) The Assistant Registrar held that there is no similarity and identical with the mark that of the opponent as per section 11(A) revised under section 11(1) of the Act. Hence, there is no possibility of confusion and deception under section 11 (C) revised under section 11 (3) of the

Trademarks Act, 1999. The goods of the applicants are entirely different from the opponent. Further the Assistant Registrar rejected the contention of the opponent that they have not proved prior user period from 1984 to 1988 and used his discretionary power under section 18(4) of the Act by granting registration of the trademark “NOMEX” in class 5 to the respondent.

Thus being aggrieved by rejection, the applicant preferred an appeal in IPAB for challenging the rejection of said Trademark opposition.

 Arguments advanced by the Appellant:

It was argued by the appellant that the Assistant Registrar has failed to appreciate the appellant’s use of the trademark “NOMEX” in the international market since 1963 and in India since 1984. Further Trademark registry has failed to appreciate that the trademark adopted by the respondent is identical to the appellant, who is a prior adopter and user in India. It was further contended that the Assistant Registrar has erred in holding that usage of the mark by the respondent would not cause confusion and deception amongst the members of the public and trade as the respondent buyers are different from that of the appellant.

The appellant further claimed that “NOMEX” is a well-known trademark. The appellant also argued that the Assistant Registrar has failed to appreciate that the respondent has no use and is yet to use the mark and it is identical to the appellant trade mark. The Assistant Registrar has erred in holding the appellant has not proved prior user from 1984 to 1988.The Assistant Registrar erred by disallowing opposition of the appellant and further erroneously used his discretionary power under section 18(4) of the Act, which are contrary to principals of law. The Assistant Registrar has also erred in holding the respondent had taken proper steps, despite of no search report brought on record.

Arguments advanced by the Respondent:

The respondent contended that they had taken care and prior search in selection, adoption as there was no prior use of the trademark in the pharmaceutical industry. The respondent conceived and coined the trademark “NOMEX” for use in respect of medicinal and pharmaceutical preparations falling in Class 5. Further the respondent argued that the registration of application “NOMEX” in Class 5 will not cause prejudice to the appellant under section 9 of the Act as under section 8 to respondent trade mark is distinctive and capable of distinguishing from the goods of the appellant.

Decision of IPAB:

IPAB stated that while perusing the impugned decision of the Assistant Registrar of 11th , March, 2009, the Assistant Registrar has rendered a short cryptic order without assigning cogent reasons by simply quoting the provisions under the Trade and Merchandise Marks Act, 1958 revised under sections 11(1) and 11 (3) of the Trademark Act, 1999. The impugned order of the Assistant Registrar failed to disclose on what grounds or on what material record that he has allowed the registration to go ahead by rejecting the contentions of the appellant / opponent and further does not disclose any judicious reasoning, while exercising his discretionary power vested with him under section 18 of the Act for granting the registration to the respondent herein.

Further IPAB observed that the Assistant Registrar at one end admits in his order that the marks are similar and identical, without divulging sound reasoning as to how he had arrived into conclusion that the mark though identical and similar but still there is no confusion or deception. IPAB stated that the Registrar has failed to discuss the cogent reasons in accepting the application of the respondent allowing their trademark to be registered.

Thus in the light of averments, IPAB set aside the impugned order by trademark registry observing that the order was passed in gross violation of principal of natural justice and remanded the matter to the Assistant Registrar to consider the matter afresh by affording opportunity to both sides and pass orders on merits in accordance with law.

About the Author: Mr Sitanshu Singh, Patent Associate, Khurana & Khurana, Advocates and IP Attorneys and can be reached at:Sitanshu@khuranaandkhurana.com

Emcure’s Notice of Motion succeeds against Corona Remedies: Bombay High Court

In the recent decision of Bombay High Court in the case of Emcure Pharmaceuticals v Corona Remedies, the Hon’ble court decided on the issue of deceptive similarity, acquiescence and balance of Convenience in favor of Emcure Pharmaceuticals.

Facts of the case:

The plaintiff’s trademarks ‘OROFER’ and ‘OROFER XT’ are registered as word marks since 1996 with the trade mark registry in class 5 in relation to medicinal and pharmaceuticals preparations for iron  deficiency, anaemia, methylcobalmin deficiency, folic acid deficiency, zinc deficiency and so forth.

On, 10 January 2006 the plaintiff became aware of the advertisement of the defendant’s trade mark ‘COROFER’ in the Trade mark Journal 1371. However on 17th December 2007, Plaintiff sent Cease and Desist notice to the Defendant through their attorneys. Thereafter the Defendant’s registration was opposed by the plaintiff on 20th December 2007 claiming inter alia prior and original adopter of the mark ‘OROFER’ in class 5 and due to prolonged and extensive use, the mark exclusively connotes to the plaintiff only and would cause confusion and deception among potentials if used by any other entity.

The plaintiff also sent second Cease and Desist notice to defendants on 26th June 2009. Moreover on dt. 7th September 2013 filed infringement suit against the defendants. The Plaintiff also filed the notice of motion for interim relief injuncting the defendants from using the impugned trademark in any manner thereof.

Issues Involved:

  1. Whether the defendant’s mark is deceptively similar to the Plaintiff’s mark?

  1. Whether the fact that other marks exists with the word “FER” is determinative, in that the use of this word or abbreviation by the Defendant cannot be said to constitute an infringement of the Plaintiff ’s marks?

  1. Whether it constitutes a valid defense if it be shown that Plaintiff is not the first user of the impugned mark?

  1. Whether Plaintiff’s claim stands defeated if the alleged delay is proved? And if the knowledge of the Plaintiff regarding the Defendant’s use is shown, hasnot the Plaintiff acquiesced in the Defendant’s use of its rival marks? Whether S. 33 is limited to a later registered trade mark?

Issue 1:

The court held that the true test is to juxtapose the two marks and then analyze the likely effect on the mind of a person of average intelligence and imperfect recollection. In the present case the entire mark of the plaintiff is incorporated in the defendant’s mark which makes it deceptively similar to the plaintiff’s mark. Thus there is no difference between the plaintiff’s mark and the defendant’s mark except for the addition of the preceding letter ‘C’.  The court also relied on the case of Boots Company PLC v. Registrar of Trade Marks & Anr. Wherin it was held CROFEN to be deceptively similar to BRUFEN. Thus the court held that the Defendant’s mark is confusingly and deceptively similar to the Plaintiff’s mark.

Issue 2:

The court held that the fact is inconsequential that there exists other mark with the term FER in them. Moreover in view of the fact that the defendant itself has sought for the registration of the mark with the term FER, defendants cannot claim lack of distinctiveness.

Issue 3:

The defendants claim that the markl ‘OROFER’ is already used by one Advent Laboratories Patna who is prior user since 1983 and the mark is registered on 24th September 1985. The plaintiff however denied the contention and claimed that the mark was filed on proposed to be used basis and there is no evidence of its actual use. Moreover Section 28(3) and Section 12 provides for co existence of the marks on the register where both the proprietors do not have exclusive rights over each other, however as against third party each of them has full rights against the third party. The court held that in the present case the defendant is the third party and not the concurrent user.

Issue 4:

The court held that mere delay in filing the suit in no way defeat the rights of the registered proprietor and which is not firmly settled by various case laws. (Relied Medley Pharmaceuticals Ltd. v Twilight Mecantiles Ltd. & Anr) Moreover it is also settled principle that in law question of acquiescence arises where the proprietor being aware of the rights and the infringement of the mark but fail to sue without a positive act of encouragement. And this is not the defence available to the infringer.

The court held in reference to acquiescence that “Acquiescence is a species of estoppel, a rule in equity and a rule of evidence.  Essential  to the acquiescence  doctrine  is  that  it  is  accompanied  by  an encouragement  or an inducement:  he who possesses a legal  right must have encouraged the alleged violator of that right in acting to the latter’s detriment, confident in the knowledge that the former is not asserting his rights against the violator. Acquiescence is not mere negligence or oversight. There must be the abandonment of the right to exclusivity”.

The court on the question of delay, acquiescence and honesty of adoption, relied on Cadila Pharmaceuticals Ltd. v Sami Khatib and Hindustan Pencils and Schering Corporation and held that even if it is assumed that the defendant’s adoption was honest, the defendant had the means to discover the plaintiff’s mark and particularly in view of the fact of plaintiff’ opposition to the defendant’s mark, the continued use of the mark by the defendant was at its peril. Moreover the onus of proving the honest and concurrent user lies with the defendant and the defendant fails to prove the same. However the defendant also fails to produce the sales figure. Hence question of acquiescence did not arise. (Relied on Win Medicare v. Somacare Laboratories Ltd)

The defendant further claimed that the S. 33 also applies to the unregistered mark whereas the court rejected the argument and held that the “S. 33 operates in a well defined and circumscribed set of circumstances. It cannot possible oust every other plea of acquiescence”.

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