Trademark Enforcement In E-Market : Challenges In Identifying The Infringer And Holding Them Accountable

With the rise of E-Commerce, the online marketplace has become a significant channel for the sale of goods, including counterfeit products that infringe on the trademarks of legitimate businesses. This can be challenging due to the difficulty in indentifying the infringer and holding them accountable. In addition, online marketplaces such as Amazon are often used as a platform for the sale of counterfeit goods, raising questions about their liability and responsibility in trademark infringement

India has experienced a meteoric rise in recent years in both online marketplaces and e-commerce. E-commerce platforms have produced new kinds of purchasing experiences for customers by combining the forces of technology, competitive price offerings, exciting deals, and quick delivery. As a result, the number of online marketplaces created domestically or internationally has significantly increased in India. But as e-commerce platforms have grown, the threat of counterfeiting has grown significantly. The issue of counterfeiting not only compromises a brand’s reputation or brand value, but also puts consumer safety at risk by allowing the sale and uninformed purchase of sub-standard goods. These E-commerce platforms make it simple to access consumer goods from a computer or smart phone, but they also, by their very nature, make it simple for counterfeiters to market their counterfeit goods.

Businesses may find it challenging to enforce trademark rights in online marketplaces because it can be challenging to locate infringers and hold them accountable. In addition, well-known online stores like Amazon are frequently used as a platform for the sale of counterfeit goods, which has prompted concerns about their accountability and liability in trademark infringement cases. Effective trademark enforcement is essential in this situation for protecting the goodwill and financial interests of legitimate businesses. This research paper will explore the challenges involved in trademark enforcement in online marketplaces and examine the various legal and practical approaches that can be employed to combat trademark infringement in the digital age.

There has been boom in the global economy and one of its major reason is the ease in the accessibility of the online marketplaces which is a direct result of widely used internet services. In the Indian economy online marketplaces like – Flipkart, Amazon, Myntra, etc has grown exponentially. This growth in the E-commerce market in our country has helped in the entire economy growth with its compound annual growth rate (CAGR) of over 53%. In the year 2017 the market value of the E-commerce was $38.5 billion and currently it has been rising rapidly as, it is expected to grow to $200 billion by 2026[1].

Amid this growth, the issue of trademark infringement is faced by the trademark owners in online marketplaces. Online marketplaces provide the platform for the third party to engage in the activity of selling their goods/products, which gives rise to the unauthorized use of trademark which is one of the common forms of trademark infringement. For instance, the use of similar marks, logo, and symbol of a brand by an unauthorized third party which can create confusion in the minds of buyers. Another form of trademark infringement would be counterfeiting, where the third party manufacture, produce and sell the type of goods/products which are almost similar to the original trademark product.

Liability of Online Marketplace and third-party infringers in trademark infringement:

In India, the Trademarks Act, 1999 and the Information Technology Act of 2000 largely regulates the liability of online marketplaces and third-party infringers in cases of trademark infringement. The following are the factors to take into account while analyzing an online marketplace’s and third-party infringer’s responsibility and liability for trademark infringement in India.

Liability of Online Marketplace:

Under the Information Technology Act, online marketplaces like Amazon, Flipkart, and others are regarded as intermediaries[2]. Intermediaries are defined by the Information Technology Act’s Section 2(w)[3] as “entities that assist with online transactions and communication”. Under Section 79 of the Information Technology Act, intermediaries are generally protected from liability for content belonging to third parties, as long as they do not fulfill specific requirements. Also, Online marketplaces that do not actively engage in the sale of goods or manage product listings, rather they only offer an opportunity for sellers to list their goods, are regarded as intermediates and may be eligible for protection under the same Section.

The online marketplaces can be held liable only when the trademark owners take certain steps. As resonating the definition of the word “Sell” the online marketplaces act as an intermediate between the original sellers (trademark owners) and the buyers. The online marketplaces do not precisely title the products sold. Further, they don’t directly purchase the goods/products directly frojm the manufacturers or stipulated distributers.

Liability of the Third-party:

As per the Trademarks Act, 1999, individuals who utilize another party’s trademark without their consent may face immediate legal consequences for trademark infringement. Trademark owners are entitled to take legal actions under the same against third-party, the infringers who use their trademark in a way that is likely to mislead or confuse the public. And in those situations, Third-party infringers can be held liable, and will have to pay penalties, including injunctions, damages, and legal fees, depends upon what the Court decided, depending on the facts of the case.

However, through various Judgements the Courts in India have reached to a conclusion that the online marketplaces can be held liable for the trademark infringement through their platforms, only when they have the actual knowledge of such trademark infringement. This liability has been the subject of several legal disputes in India. In Christian Louboutin SAS v. Nakul Bajaj &Ors.[4] In the given decision of High Court of Delhi, solution was put up that if there is any violation in online intermediaries then responsibilities will be applied.[5] This particular decision comprehensively explained about working of intermediary liability in regards to violation of trademarks under India laws. The defendant was “Darveys.com”, it was a “luxury brand marketplace”[6]. In this the plaintiff contended trademark violation against the defendant, by selling counterfeited goods. The defendant argued that the the goods sold were genuine and there was no infringement on his part as it was just a intermediary and was entitles to be protected by “Self Harbor” i.e the provision of Section 79 of IT Act, 2000[7], In the mentioned matter, High court of Delhi observed ‘Intermediary’ in accordance to Section 2(w) of IT Act and also considered intermediary positions in EU, the US and in India. Inthis the Court decided that the defendant was more than an Intermediary and had the complete control over the product sold.

The intermediaries can be disqualified from the safe harbor exemption if they fail to exercise “due diligence” with consonance of intellectual rights. Section 79(3)(a) of IT Act 2000 states that the failure of the same which includes abetting, aiding, inciting, promoting and conducting unlawful business would exempt them from any safeguarding rights. Further it is mandatory for the intermediaries to make it sellers upload the warranties and guarantees of the plaintiff and it should also make sure that any meta-tags that contains plaintiff’s mark should be removed. 

In another landmark judgement of L’Oreal & Ors v. Brandworld & Ors.[8], the Delhi High court held that online marketplaces, including Amazon and Flipkart, can be held liable for trademark infringement if they fail to take appropriate action to stop the sale of counterfeited products on their platforms. The court held that online marketplaces have a duty to ensure that their platforms are not used for the sale of counterfeit products and that they must take proactive steps to prevent such sales.

Suggestions and Recommendations to the existing Indian Laws with respect to such Infringements:

The growth of online marketplaces has made it easier for third-party sellers to infringe on trademarks, which can damage the reputation of the trademark owner. The Indian laws need to be updated to provide better protection to trademark owners in online marketplaces. Here are some suggestions and recommendations for improvement in the enforcement of protection of trademarks in online marketplaces in India.

Firstly, the basic step towards protecting trademarks in online marketplaces is to register them with the Trademark Registry. The registration of trademarks provides legal protection and remedies in case of infringement. The registration process needs to be simplified and made more accessible to small businesses and entrepreneurs who are unable to afford the high costs of trademark registration. Generally, the online marketplaces provide opportunities to many small scale businesses to operate on their platform, and these businesses may face such infringement issues, if they are not registered with their trademark.

Secondly, The Indian laws need to be updated to provide for online enforcement of trademarks. The current laws are primarily designed for offline infringement, and online infringement is not adequately addressed. The laws need to be updated to provide for online enforcement, such as the takedown of infringing content and blocking access to infringing websites. Recently, with new E-Commerce Protection rules of 2020, there has been some progress in the regulation of the activities of these E-Commerce websites[9].

Thirdly, on line of judgements by the US and European courts, The Indian courts have developed the concept of “intermediary liability” in cases of online infringement. This means that intermediaries, such as online marketplaces, can be held liable for the infringement committed by their users if they have knowledge of the infringing activity and fail to take down the infringing content. However, these laws are not clear and settled in India. The Indian laws need to be updated to provide clarity on intermediary liability and to ensure that online marketplaces take proactive measures to prevent trademark infringement on their platforms.

Lastly, the government needs to collaborate with the e-commerce industry to develop effective measures to prevent trademark infringement in online marketplaces. The industry can provide insights into the challenges faced by trademark owners and the methods used by infringers. The government can use this information to develop effective policies and laws to protect trademarks in online marketplaces.

Author :Shruti Sinha- a student of National University of Study and Research in Law, Ranchi, Jharkhand, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at IIPRD.

References:

[1] India’s GDP Compund Annual Growth Rate (2022) Report, World Economics.

[2] Defines ‘Intermediaries’, Oxford Dictionary.

[3] Section 2(1)(ua)(w), The Information Technology Act, 2000.

[4] [Civil Suit No. 344/2018].

[5]Christian Louboutin SAS v. Nakul Bajaj &Ors, [Civil Suit No. 344/2018].

[6]Christian Louboutin SAS v Nakul Bajaj &Ors, [Civil Suit No. 344/2018].

[7] Section 79, IT Act, 2000, ibid., for Chapter XII (w.e.f. 27-10-2009).

[8] (CS (COMM) 980/2016.

[9] Draft Amendments to the Consumer Protection (E-Commerce) Rules, 2020.

Chain of Evidence in infringement of Trademarks

Introduction

Every suit before the court has different stages: pre-trial, trial and post-trial (execution). The evidence plays a crucial role in determining the end result of the case. The evidence helps the court or the judge to reach a logical and reasonable conclusion. The word “evidence” arises from Latin word evidens which means “to show clearly; to make clear to the sight; to discover clearly; to make plainly certain; to ascertain or to prove.” There are certain pre-requisites of evidence before presenting before the court: a) evidence must be concerned to the matter in issue or fact in issue, b) hearsay evidence or not a first-hand knowledge must not be admitted and c) best evidence must be given in all the cases. Evidence that is presented in the suit is governed by the Indian Evidence Act, 1872. It is true that the act is not exhaustive of the rules of the evidence and is subjected to interpretation by the courts. For instance, the judge can decide whether to admit an evidence or not based upon the sanctity, integrity and honesty of the said evidence or witness. But the evidence act shall not be applicable to the proceedings carried on in the Tribunals, even though they have a judicial character. Apart from the tribunals and arbitrators, the Indian Evidence Act applies to any court and a court-martial. It determines whether a witness is competent or not, whether a certain matter is required to be proved by writing or not, whether certain evidence proves a particular fact or not, where the remedy is sought to be enforced and where the court sits to enforce it.

In the trademark, logo or copyright infringement cases, the prime evidence is the mark or the said work. In India, once a particular work is protected under any of the intellectual property rights, it gets a mark on the work to provide a documentary and visible evidence. The registration of these works is not mandated under any of the acts and provisions but it is advisable that the companies, individuals or creators should register their work to protect it from any future dispute. The chain of evidence during the trial stage is nearly same. The types of evidence: oral, documentary and electronic are also similar as that in proceedings carried on by the traditional courts. It might mean that the judge has discretion to admit a piece of evidence or not. It is quite obvious that natural justice shall also play a crucial role in the proceedings of Intellectual property rights infringement suits. The judge should hear both the parties and admit the evidence that is fait and true to the knowledge of the parties. It is clearly based upon the fair analysis of the judge

Evidence in Trademark infringement case

A trademark is a type of intellectual property that contains a recognizable sign, logo, design, expression or tagline. The services of a particular source can also be recognized under the trademarks and are called service marks. Section 2(zb) of the Trademarks Act, 1999 defines ‘trademark’ as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.” A registered trademark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark. A trademark helps to create a differentiating feature. A trademark can be used as an evidence only when registered in the Register of Trademarks. The register contains the names, addresses and other information related to the registered trademarks in an alphabetical manner.

There are certain grounds of registering a trademark

• It should have a distinctive character and thus, should have a capability of differentiating the goods or services of one person from those of another. Further, consequently, it should not deceive the public or cause any confusion.
• It should not consist of exclusively of marks or indications that serve as designation of kind, quantity, quality, values or geographic origin in the trade.
• It should not have become customary in the current language or in the bona fide and established practices of the trade.
• It should not contain scandalous or obscene matter or should not hurt religious susceptibilities of any class or section of citizens.

The Coca-Cola Company vs Bisleri International & Ors.[1]

Facts

• “The plaintiff is the largest brand of soft drinks operating in over 200 countries. In order to ease its processes, it appoints bottlers and grants licenses to them to use specific trademarks for the sale of certain beverages.
• The defendant no. 1 used to be a part of the Parle Group. By a master agreement, the owners of defendant no. 1 sold the trademarks, formulation rights, intellectual property rights and goodwill of their products THUMS UP, LIMCA, GOLD SPOT, CITRA and MAAZA amongst others to the plaintiff. However, the present case only deals with MAAZA. The company which changed its name to Bisleri Ltd amalgamated with defendant no. 1.
• Further in 1994, the License agreement between plaintiff and Golden Agro Products Pvt. Ltd for MAAZA was executed. Herein, the plaintiff is arguing and presenting that after the execution of the agreement, the rights related to trademarks and intellectual property transfers to the plaintiff. However, the defendant no. 1 retained the trademark rights of MAAZA in other countries where it was registered.
• In March, 2008, the defendant no. 1 received an information regarding the fact that the plaintiff had filed for registration of MAAZA trademark in Turkey. Later after few days, the defendant no. 1 sent a legal notice to the plaintiff repudiating the Licence Agreement. The former also expressed intention to use the trademark in India also.
• Thus, the plaintiff filed the present suit seeking permanent injunction and damages for infringement of the trademark by claiming that the defendant no. 1 has completely ignored the agreement previously executed.”   

Chain of Evidence Presented

By the Plaintiff

• The plaintiff first substantiated its issue of the court’s jurisdiction by explaining that the defendant no. 1 is carrying on the business within the court’s territorial jurisdiction and that the defendant no. 1 had the intention of infringing the trademark within the said jurisdiction. Hence, here the evidence is laid by way of legal provisions. Section 16 to 20 of the Code of Civil Procedure Code, 1908 and Section 134(2) of the Trademark Act, 1999. Further, the plaintiff has also relied upon the judicial pronouncement in Tata Iron & Steel Co. Ltd vs Mahavir Steels & Ors.[2], wherein the question of jurisdiction was determined. The court upheld the jurisdiction by relying on the plaint and statements made by the parties.   
• The other reason used by the plaintiff to substantiate the jurisdiction argument is that the defendant no. 1 is carrying on the business within the hon’ble court’s jurisdiction. The same was supported by providing that the defendant no. 1 has a factory at 66, Shivaji Marg, New Delhi which is within the jurisdiction.
• Further, in order to establish the intention of the defendant no. 1 to infringe the trademark of the plaintiff, the latter presented the notice sent by the former regarding revoking the License agreement and taking back the trademark in all the other countries including India.

Thus, the above-mentioned contentions clearly determine and state the types and chain of evidence used by the plaintiff in a trademark suit. It is clear that the plaintiff has primarily relied upon the documentary evidence (License agreement and Report of the Local Commissioner), direct and circumstantial evidence (location of factory, place of cause of action and territorial jurisdiction). It can be said that despite the direct non- applicability of the Indian Evidence Act, the types and forms of evidence are more or less the same.

By the Defendants      

• The defendant no. 1 primarily denied any relation with M/s. Varma International and the proprietor, Vishal Varma. But the same was established later by the report by the local commissioner.
• The defendant no. 1 further contested the jurisdiction of the hon’ble court by denying all the claims made in the plaint. The defendant no. 1 also stated that it has no business within the court’s jurisdiction except a factor of mineral water. The counsel further also stated that the registered office of defendant no. 1 is in Mumbai. Further, the agreement between the parties was also executed either in Atlanta or Mumbai.
• Regarding the intention to use infringing trademark within the court’s jurisdiction, the defendant no. 1 denied all the allegations stating that it had no such intention because the trademark is registered in plaintiff’s name. Moreover, the defendant no. 1 also stated that the article in Times of India is also produced by the office in Mumbai and not in Delhi.
• The counsel for defendant no. 3 M/s Varma International admitted that it had been dealing with M/s. Pars Ram Bros. Australia Pvt. Ltd under the trademark MAAZA. Defendant no. 1 and 3 have also been regularly been exporting goods under MAAZA. When the registration certificate was brought to his notice along with the fact that ultimately the said trade mark had been assigned in favour of the defendant no. 1, he stated his ignorance of the same.

Judgment

The hon’ble court, based on the facts and evidence provided, held that the plaintiff is the registered owner of trademark and there is a good prima facie case of granting injunction. The balance of convenience also lies in favour of the plaintiff. Hence, the injunction was granted so that the plaintiff suffers no loss in the future.   

Conclusion

Intellectual Property Rights play a very crucial role in providing an identity to the organization or any creative work. A lot of efforts and resources give rise to a particular creativity or technological innovation or any other artistic work. Therefore, every innovator tries to secure it with the help of IPR. Often some big market players tend to dominate the small-scale enterprises by filing false claims but truth always prevails. The researcher would like to mention that there is a full-fledged process of trademark or copyright registration, which covers the step of search also. The innovators or firms can appoint lawyers or can themselves also search for the marks or works that are already registered in the same name and prevent going forward with the same. It shall save time, energy, efforts and resources that get wasted during the legal proceedings. Thus, utmost care and precautions must be taken throughout the process.

Author: Tanya Saraswat, in case of any queries please contact/write back to us at via email chhavi@khuranaandkhurana.com &  IIPRD

---

[1] CS (OS) No. 2166/2008

[2] 1992(1) ARBLR 417 Delhi

Personality Rights- The Rights of Celebrities

Introduction

Big names of the industry like Amitabh Bachchan, Sunny Leone, Shahrukh Khan, Sachin Tendulkar, Baba Ramdev, Kajol and more have chosen to get IP protection for their names, brand names or on-screen names to ensure that their personality rights are not misused. The trend in the industry is to have celebrities endorse products so as to form an association with the consumers. The reason for doing so is to establish a connection between the brand and the celebrity and capitalise from using the name, fame and public image of the celebrity. In 2015, according to a survey conducted by Forbes, it was shown that Shah Rukh Khan topped the list of brand endorsement earning with Rs 257.5 crores, further proving the extent to which brands pay celebrities only to use their public image and their personality rights thereof. This being said, it is not always that brands can afford to pay such hefty amounts, more often than not smaller brands with less marketing budgets try to use the images of celebrities without consent projecting them to be endorsing the brands and this is where the role of personality rights comes in.

Main Blog

Over the years several celebrities have gone ahead and gotten trademarks for their names, brand names etc. or have filed cases under the copyright act for infringement claims. If you are wondering why and how this is even possible, you are at the right place. Celebrities have over the years recognised and adopted the use of their right to publicity or their personality right to preserve, use or monetise from their public image. It gives to one the sense of security that their voice, image, appearance or any such publicly known element is not misused or publicised without consent. Like several other, the famous celebrity chef, Sanjeev Kapoor has also filed an application for the registration of his mark ‘Sanjeev Kapoor’s Khazana’ under class 29, Shahrukh Khan, Kajol, Sachin Tendulkar and more have gotten their names registered under class 35. While we are talking about marks registered or in the process of being registered, there have been times where celebrities have filed trademarks and haven’t gotten registrations, for instance Akshay Kumar’s application for a word mark on ‘Khiladi’ stands refused.

Over the years, the awareness on this rather different right has increased. Celebrities like Amitabh Bachchan have taken brands to the courts on different occasions and one of them being the case of Titan Industries Ltd. vs M/S Ram Kumar Jewellers where Amitabh Bachchan and Jaya Bachchan’s ad photos with the famous jewellery brand Tanishq were used by the defendant on their banners, advertising it as their own. The Delhi High Court held that;
‘When the identity of a celebrity is advertised without authorization, then the celebrity’s or famous personality’s right to control when, where and how their identity is used should vest with the famous personality only.’

Intellectual Property Rights and Personality Rights

While no law distinctly provides for jurisprudence on personality rights, the intellectual property laws by their very nature lend protection to those who are troubled by the exploitation of their right. Provisions contained in the copyright act and the trademarks act ensure the protection of personality rights. Over and above the IP protection, the right is also said to have been deep rooted in one’s fundamental Right to Privacy .

The Copyright Act

The Copyright Act lends protection to the original works of people and what can be more original than one’s voice, appearance or smile! Among various other protections, the Copyright Act 1957 safeguards the rights of performers . Celebrities by the virtue of what they do fall under the category of performers, therefore, all rights that vest in performers are inherently theirs to enjoy and any violation of their personality rights is usually parallel to the exploitation of their rights under Section 38 and 39 of the Copyright Act.

Another case where the personality rights of a celebrity were taken into consideration while accessing an infringement claim was that of DM Entertainment Pvt. Ltd. v Baby Gift House and Others where a company was making toys that resembled the popular singer Daler Mehandi which D.M. Entertainment claimed was an attempt made by the toy manufacturers at using the public image of Daler Mehandi. Here, the Delhi High Court held the defendants to be liable for violation of the right of publicity, false endorsement and passing off.

The Trademarks Act
Beyoncé, Sunny Leone, Taylor Swift, Baba Ramdev, Donald Trump, Sachin Tendulkar and an endless list of celebrities have chosen to get their names protected under the Trademarks Act.

In India, a ‘name’ can be trademarked as per section 2(o) of the Act, therefore if your name, on-screen name or brand name are TM protected, any unauthorised use is an infringement of your trademark. While copyrights in original works are inherently yours, trademarks need to be registered. The process is simple and the protection it grants is very significant. In the famous case of Sonu Nigam v. Mika Singh and Ors . the defendants had put up banners containing the image of Sonu Nigam without his consent, the Bombay High Court upheld Sonu Nigam’s personality rights and considered the use of his image without consent as passing off and restrained Mika Singh from using the banner.

Conclusion

What Can You Do?

• Capitalise on your personality rights- The country’s never ending want to hear about the stories of the lives of celebrities opens many possibilities for giving authorisation to who wish to use your image/ story/ likeliness in a legitimate manner. Take charge of your personality rights and license the use through proper legal agreements.

• Seek infringement claims for the unauthorised use of your public image- While getting proper permissions for using any celebrity’s image or likeliness is the ideal way to go about endorsements, often brands use your image/voice etc. without asking you, in such instances you must seek compensation from those who exploit your rights.

• Cease and Desist Notices- If you have spotted the misuse of your personality rights then the first and foremost action is to send to the infringer a notice asking them to take down the illegal content and ask for an audit report of the monetary gain they made from using your public image. This helps in establishing claims against infringers.

Author: Prishita Rathi third-year law student of ILS Law college, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at IIPRD.

Different rules in metrological ACT- IP law

Metrology -What It Is?

The scientific study of measurement is referred to as metrology. The provision of standards for the
management of measures and measuring instruments is facilitated with the assistance of legal
metrology. At the same time, legal metrology protects the public, the environment, customers, and
merchants, and it is necessary for trade that is conducted fairly. According to the Legal Metrology
Act, 2009, a Legal Metrology Certificate is necessary to sell or distribute any packaged goods in
India. This includes export goods, food items.

The Legal Metrology (Packaged Commodities) Rules-The Legal Metrology Act
It encompasses over 40 measuring and weighing instruments, including electronic, weighbridges,
fuel pumps, water metres, sphygmomanometers, clinical thermometers, and many other similar
things.

The state government workers do routine inspections on these weighing and measuring devices
using the Standard Weights and Measures and the process defined in the Rules.

Legal Metrology Law is managed in Entry 50 of the Union list as it construes “to frame the Acts
and Rules, Specification of standards and International Relations, training in Legal Metrology,
etc.” It is also dealt with under Entry 33A of the Concurrent list that discusses the administration
and implementation of Legal Metrology.

The Act was preceded by the Standards of Weights and Measures Act, 1976 and the Standards of
Weights and Measures (Enforcement) Act, 1985.

Different rules in Legal Metrology Act

Section 5 of the Act provides the base unit of weights and measures as (i) length shall be the meter;
(ii) mass shall be the kilogram; (iii) time shall be the second; (iv) electric current shall be the
ampere; (v) thermodynamic temperature shall be the kelvin; (vi) luminous intensity shall be the
candela; and (vii) amount of substance shall be the mole.

Under Rule 6 – All pre-packaged commodities need declaration5
under Rule 6 of the Legal

Metrology (Packaged Commodities) Rules, 2011 wherein every package shall bear a label which
should make a declaration of the net quantity of the commodity in terms of the standard unit of
weight and measurement.

Unit standardisation under Metrology- Unit measurement of commodities shall not differ from
the fundamental units of weights as mentioned in the Legal Metrology Act.

Application of measurement or weights for specific goals- Whether it is a commercial
transaction, deal or contract involving a category of goods, individual product or undertakings, the
process must incorporate the measurement processes as prescribed.

Abolition of quotations that are not specified in the Act- A person associated with the
transference of goods or services must not: Make a formal announcement or quote the charge or
rate in accordance with his whom Issue or reveal the cash memo, invoice, price list or similar other
documents. Design or publish an advertisement or poster . Mention the net amount of any
packaged item

Offenses and Penalties under the Act

Followings are some of the penalties given under the Act in contravention of the legal metrology
laws:

1. For the use of non-standard weight and measure: Fine up to Rs. 25,000/- and for second
   and subsequent offense imprisonment up to 6 months and fine.
2. For alteration of weight and measure: Fine of Rs. 25,000/- and for subsequent act
   imprisonment up to 6 months which can be extended to 1 year with or without fine.
3. For Manufacturing or sale of non-standard weight and measure: Fine of Rs. 25,000/- and
   for subsequent offense imprisonment up to 3 years with or without a fine.
4. For making any transaction, deal, or contract incontravention, quoting, publishing, etc. of
   the non-standard unit, or transaction in contravention of standard weight or measures, or
   penalty for the use of unverified weights and measures: Fine up to Rs. 10,000/- and for
   second and subsequent offense imprisonment of 1 year with or without fine.
5. Penalty for tampering with the license: fine up to Rs.25,000 or imprisonment up to 1 year
   or both.
   

Important definitions under the Act

• Dealer: A dealer is a person who carries out the business of buying, selling, supplying, or
distributing weights or measures or weighing and measuring instruments, directly or
indirectly for cash or any kind of remuneration or consideration. Dealer may include any
person who sells, supplies, distributes, or delivers any kind of weights or measures to any
other person who is not a dealer.
• Manufacturer: A manufacturer is a person who manufactures, acquires, assembles weights
and measures, or any part of them, and claims the end product of weights and measures in
his name.
• Pre-packaged commodity: A commodity that has been placed in a package, sealed or not,
without the purchaser being present so that the product contains a pre-determined quantity.
• Repairer: The person who repairs, cleans, paints, adjusts, and lubricates the weights and
measures or renders any service to make sure that the weights and measures are as per the
standard established by the Act.

Administrative overview of Legal Metrology

The Department is headed by Director, Legal Metrology, whose office is located at Krishi Bhawan,
New Delhi. A few states have their own rules for maintaining Legal Metrology laws. The
Controller of Legal Metrology issues the license to the manufacturer, repairer, and dealer of weighs
and measurement instruments.

Conclusion

The main legislature dealing with Legal Metrology law is the Legal Metrology Act, 2009. Legal
Metrology law provides guidelines for control on weighing, measurement, and measuring
instruments. It protects consumers and provides safety to the public, environment, and traders, and
is very particular about fair trade in India. It relies on providing traceability to measurements and
measuring instruments. It aims at giving confidence to/between consumers, Government,
businessmen, and traders. It controls unfair trade practices.”

Author: Somil Shrivastava, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at IIPRD.

Dealing with the issue of Copyright Online Piracy

All the forms of original expression fixed in tangible medium are subject to copyright protection. With the rapid change and advancement of technologies, protection of copyright work has emerged to be a major challenge. The issue associated with the digital domain is the diffusion of information via internet. Piracy refers to the unauthorized duplication, use or distribution of someone else’s copyrighted material without their permission. Such action leads to copyright infringement and may attract civil as well as criminal charges. Easy access to internet, ubiquitous nature of digital media and exponential number of pirates has made identification of infringer and curbing of the said issue a tedious task.

Challenges in deciding the jurisdiction

The intangible nature of internet makes the determination of jurisdiction a major problem. Rapid change in technology and complexity of cybercrime cases are proportionate to each other, which makes it difficult to determine the engagement of an individual in copyright infringement cases. Once the infringement is established in some other country, it becomes all more difficult to determine the law that needs to be applied in order to punish the infringer.

Right of Reproduction and its challenges

Change in technology will always result in change in society because of its dynamic nature, which will lead the internet technology to grow at a faster pace. Simultaneously, the said technology may be used for the exploitation in the form of infringement of copyright when there are no proper checks and balances. In order to distribute or sale any material on the internet, the infringer is required to reproduce the material. Any work that is copyrighted may be circulated by using some basic tools of technology on cyber space to disseminate or store or use a copyrighted work. Data through the assistance of internet is transferred using a technique which breaks down the data into small packets and further reconstitute them into small packets. These small packets are further reconstituted to form an entire matter. This technique and several other techniques like this are classified as ‘Packet Switching’, ‘Caching’, Framing Technology, Linking and Email which is nothing but a severe violation of copyrights.[1]

Challenges in enforcing liability

In order to make an infringer liable, it is imperative to determine where exactly the liability lies. In an issue related to copyright infringement several people can be involved. Before reaching the final destination i.e., public domain an information can go through various layers and devices. While determining about the liability, role of an intermediary shall also be taken into consideration. As per the amendment which was made in 2012 to the Copyright Act of 1957, an intermediary can not be held liable for the infringement of copyright act if it did not have knowledge about it. Section 52 (1)(c) specifies that “intermediaries are not responsible unless they are aware or have reasonable grounds for believing that such storage is of an infringing copy:” Similar view was held by court in Super Cassettes Industries Ltd. V. Myspace Inc. & Anr.[2] In which the division bench of Delhi High Court held and specified the grounds that are necessary to hold an intermediary liable for copyright infringement. An intermediary can only be held liable, if they had actual or specific knowledge about the existence of infringing content on their website and if they had not taken any steps to remove that content from their website. Therefore, though the section may protect the innocent intermediaries from the blanket of false accusations, it is often misused by the infringers.

What does law of the land states?

Law of the land and the amendments made to it from time to time plays an important role in curbing the issues of infringement. The Copyright Act of 1957 along with the Information Act of 2000 deals with several facets of piracy. The amendment to the Copyright Act which was made in 2012 has expanded its horizons and has bought under its umbrella various forms of online piracy. The amendment not only protects the innocent intermediaries but also protects the rights of the owners of copyrighted material. Section 65 A of the new amended act protects the rights of the owners of the copyright material by imprisoning the infringer for the period of imprisonment which may extend to two years and shall also be liable to fine[3]. Section 65 B provides for the protection of management information[4]. Whereas, Section 66 of the IT Act, 2000 provides for punishment up to 3 years and a fine of up to Rs. 2 lakhs for illegal distribution of copyrighted content.

Conclusion

The infringement of copyrighted work has impacted the lives of people considerably. Though various legal and technological measures have been taken in order to control the infringement, many more steps are necessary to achieve the desired goal of protecting copyright laws getting infringed. Economic development of a country and infringement of copyrighted work are corelated to each other. Digital piracy not only impacts the MSME Businesses but also the large-scale business organizations. It is high time now to find an effective solution to the ongoing issue of piracy and help protect the hard work of artists and producers.

Author: Abhishek Mishra – a student of University of Mumbai Law Academy, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References:

^{[1] Dr. G. Mallikarjun International Journal of Engineering Technology Science and Research ISSN 2394–3386 Volume5, Issue1}

^{[2] 2011 (48) PTC 49 (Del).}

^{[3] Section 65 A states that “any person who circumvents an effective technological measure applied to protect any of the rights conferred by this Act, to infringe such rights, shall be punishable with imprisonment which may extend to two years and shall also be liable to fine.}

^{[4] Section 65 B states that “any person, who knowingly- (1) removes or alters any rights management information without authority, or (2) distributes, imports for distribution broadcasts or communicates to the public, without authority, copies of any work, or performance knowing that electronic rights management information has been removed or altered without authority shall be punishable with imprisonment which may extend to two years and shall also be liable to fine.”}

The Ambiguous Relationship between NFTs and Trademarks

NFT (Non-Fungible Token) was made the word of the year by Collin’s Dictionary in 2021 beating out popular phrases such as “double-vaxxed” and “hybrid-working”. As the name suggests, NFTs are a token that grants ownership to the user of the intrinsic items on the blockchain.

NFTs especially have become a hot topic among the public with many vehemently criticizing the monetization as well as the conversion of art pieces to mere tokens that can be accessed digitally. A mere tweet by Jack Dorsey was sold for a staggering price of $2.9 million and PAK’s The Merge is the priciest NFT sold with a whopping $91.8 million.

In the constantly evolving world of intellectual property rights, these tokens add new facets and unprecedented legal issues. There is no specific legislation in India as of yet pertaining to the implications of digital assets on IP laws and their relationship remains vague and ambiguous. 

What are NFTs?

NFTs can be understood as digital assets that can be bought and sold virtually, with the transaction primarily taking place through cryptocurrencies. The first-ever NFT named “Quantum” was minted in 2014 however, there still exists a lacuna in the law pertaining to their regulations keeping in mind the implications emanating from the same.

Fungible means replaceable, therefore, unlike prominent cryptocurrencies like Bitcoin, Ethereum, etc. that are used for facilitating commercial transactions, they are easily distinguishable. NFTs are minted as opposed to being created on the Ethereum blockchain, which constitutes a decentralized peer-to-peer network of host computers.

A wide range of objects such as virtual real estate, GIFs (NyanCat being a prominent example), artworks, etc can be converted to NFTs. The buyer gets to own a specific digital product with a limitless supply. NFTs allow us to make a line of distinction between a copy and an original digital asset hence, transforming digitally accessible content into unique assets that can be easily verified, valued, and exchanged without any hassle.

NFT investors are primarily motivated to see the potential monetary gains of selling the tokens at a later date. On the contrary, many analysts have perceived NFT as a bubble that could burst at any given point in time.

What are Trademarks?

Historically, Indian craftsmen used to engrave their signatures on their art pieces before selling them which would serve as an identification mark for that artist’s work. A trademark can be easily understood as a distinct, recognizable design, expression, logo, colour, or even a melody affiliated with the products and services offered by a brand.

A prominent example would be the McDonald’s golden arches logo on the packaging and the popular “I’m Loving It” jingle that distinguishes itself from the products offered by other companies. Similarly, every company has some sort of a symbol to distinguish itself from its competitors and to prevent products from being counterfeited. 

Do NFTs coincide with previously existing trademark protections?

The gist of intellectual property laws is to give proprietary rights to one and exclude ownership from others. In the digital landscape, NFTs can be bought by anyone since there is no limit to its supply and can easily be authenticated by any individual to ensure it is an original copy worth more than a mere downloadable copy available on the internet  

As far as NFTs are concerned, artists no longer need to rent galleries to showcase and sell their work, as the digital platform has made it much easier to program smart contracts. With each sale, the artist would get a certain stipulated amount of money. This has been a prominent factor for more and more artists being attracted towards entering the NFT arena. The artists retain their IP rights over the product and the buyer only gains ownership of the work.

NFT has emerged as a new marketplace for trademark owners and could serve as an effective instrument in dealing with counterfeited products since all the transactions would be recorded on the blockchain and the product can be authenticated through the metadata file.

As we inch one step closer towards the metaverse, renowned brands such as Walmart have filed trademarks for selling products virtually. Meanwhile, Coca-Cola launched NFT collectibles last year. However, various legal disputes have arisen on whether NFTs can be created and capitalized upon without seeking prior permission from the trademark owners.

Ongoing lawsuits against NFT creators

The following lawsuits highlight the issue emanating from an overlap between NFTs and the trademark owners.

Hermès International v Mason Rothschild

Hermès, a French luxury brand, recently became the first well-known company to file a lawsuit over the infringement and dilution of their trademarks in the metaverse against the creator of the MetaBirkins NFT. The NFT constitutes a recreated Hermès handbag. A cease-and-desist letter was sent to the creator on the charges of being a digital speculator and profiting off the company’s products. The firm has sued for an injunction against the NFTs, transferring the project website name to Hermès, destroying minted samples produced previously, along with damages.

The counterfeit Hermès bags in the Metaverse.

However, Hermès having trademarked its leather goods particularly their handbags, the NFTs created would not fall within the purview of the leather goods. It has been further argued that the NFT is covered in fur and constitutes an artistic expression that does not mislead consumers, and would be protected by the First Amendment.

Miramax LLC v Tarantino

Another lawsuit has been filed against renowned director Quentin Tarantino for infringing the company’s trademarks as well as copyrights with his NFT collection and misleading consumers. The NFTs were derived from “Pulp Fiction” that he wrote and directed back in 1994.

The issue in this particular case is whether NFTs would fall within the purview of “pieces” of the screenplay that Tarantino has the right to publish. It could become a precedent for many to perceive that copyrighted works such as films could potentially be recreated and monetized via NFTs and other emerging technologies.  

Nike v StockX

Nike has also filed a lawsuit against virtual resale platform StockX on similar charges of violating their trademark. The main dispute is the ambit of the Vault NFTs and whether they would be considered as digital receipts or as a separate product owing to their potential of getting resold multiple times.  

Conclusion: The Way Ahead

Blockchain technology does provide an accessible and secure platform however, the authenticity of the seller cannot be ascertained. It becomes imperative to extend rights to prevent counterfeit products with the objective of protecting both the proprietor and the buyer.

Combined with the lack of legislations and precedents, the realm of NFTs has not been contemplated by the legislature and remains a grey area. There is a dire need for the courts to resolve the conundrum and settle the position of conventional IP rights vis-à-vis NFTs and the virtual space.

It is disputed whether a trademark owner would also have exclusive rights in the digital realm and subsequently, the enforcement of these rights. An optimal solution would be to give legal recognition to NFTs and incorporate them within the ambit of uses in the registered trademark applications. Failing to do so could lead to heavy losses for the brands.

Author: Ria Verma – a student of Symbiosis Law School (Noida) in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

Trademark Infringement

Trademark infringement occurs when a deceptively similar or identical mark is introduced by another organization in an attempt to imitate the former mark. It is necessary to increase knowledge about it. This blog has information about its meaning, the types of copyright infringement, methods in which it can take place, penalties, and the remedies available for when it occurs.

Trademark helps a company to validate their act of establishment towards a product/ service so that their brand gains recognition and value in the open market. An organization must do beyond its limits to protect its brand against a foreign claim of ownership. This is done so that consumers can accurately identify the source of the brand. An array of legal benefits also become available for the proprietor of the trademark. Such exclusive rights are enough incentive for an enterprise for registering its trademark. 

Considering the aforementioned information, an act of imitation initiated by a foreign entity can cost a fortune to the business. A brand when at its peak recognition, is in more perilous a state to be the subject of such an action. Therefore, it is important to be aware of the procedure of trademark infringement and its different aspects. 

WHAT IS TRADEMARK INFRINGEMENT

Section 29 of the Trademarks Act 1999 defines copy infringement, which alludes to the imitation or effacement of a mark by an unauthorized user which is deceptively similar or identical to an already registered trademark.

A trademark is a graphical/ textual representation of a brand that consists of various types such as word mark, service mark, device mark, etc. However, since it is rather a facile task to create duplication of a particular mark, a need to safeguard this nature of exploitation from happening arises. 

METHODS OF TRADEMARK INFRINGEMENT

There 3 ways in which infringement of trademark can take place:

(1) Trade by using a false trademark- The conduction of sale of goods under an already registered trademark. A person infringes said trademark by offering goods in open markets under a trademark possessing a false description. Importing or exporting such a good is another violation that comes under this method. 

(2) Falsely applying for a registered trademark– An infringer may apply for the registered trademark on

• Packaging of goods via the activity of labeling
• Advertising goods or services
• Using it on business papers or other documents

(3) Claiming false registration of the trademark- A person can commit trademark infringement by falsely representing that their trademark has been registered when it has not.

TYPES OF TRADEMARK INFRINGEMENT

A trademark can be subject to infringement in two ways. They are:

(1) Direct Infringement- Direct infringement has been defined under section 29 of the Trademarks Act 1999. A direct infringement has certain constituents:

• Unauthorized user–   A person who is not registered as the proprietor who is using the trademark for any trading purposes comes to be known as an unauthorized user. Infringement only occurs when such an entity is using the trademark by such an individual.
• Identical or deceptively similar- An identical mark means that the mark being used should be identical to that of the registered mark. Deceptively similar marks may confuse the consumer into assuming that both the false mark and the registered mark are similar. 

In Yahoo! Inc. v. Akash Arora & Anton 19 February, 1999[1], the landmark case of cybersquatting, the defendant was found to be utilizing the domain name ‘Yahoo India!’ which was similar and phonologically identical to the plaintiff’s trademark ‘Yahoo!’. The court determined that internet users would be duped and misled into thinking that both domain names came from the same source. The defendant claimed that it had posted a disclaimer on its website as a defense. However, it was noted that a simple notice was inadequate because the nature of the internet is such that the use of a similar domain name cannot be remedied by a disclaimer, regardless of whether ‘yahoo’ is a dictionary word. This is an example of deceptively similar words being used. 

• Registered trademark– Infringement can occur only on the trademarks which already have been registered to the Trademarks Registry of India. In case a certain trademark has not been registered, the tort law of passing off needs to be undertaken. 

Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited on 26 March 2001 [2]is a landmark case that instituted the passing off of an unregistered trademark. 

• Goods or services- The good and the services for which the false trademark is being used need to be similar and fall under the same class of the registered trademark. 

(2) Indirect Infringement- It refers to the kind of infringement that includes any individual other than the direct infringer to have abated or provoked the infringer to commit the act. It does not come under any provision of the Trademarks Act 1999. 

PENALTIES AGAINST TRADEMARK INFRINGEMENT

Under the Trademarks Act, 1999 infringement of a trademark is a cognizable offense that may lead to criminal as well as civil charges to be faced by the infringer.

• Civil Charge- A fine varying between Rs. 50,000 and Rs. 2 lakh
• Criminal Charge – Imprisonment for not less than 6 months which may even extend to 3 years.

REMEDIES FOR TRADEMARK INFRINGEMENT

CIVIL REMEDIES

1. Injunctions– An injunction is passing an order to compel a party to do or halts a party from doing an action. 

• Interlocutory/ Temporary Injunction- A relief offered to the plaintiff to prohibit them an action to the lawsuit till the disposal of the suit.
• Mareva Injunction- Interim injunctions are granted to the defendant for freezing their assets until the trial is completed or the judgment is rendered.
• Anton Piller Order- To ensure that the defendant does not destroy the infringing articles or documents, the trademark proprietor can enter the premises of the infringer to inspect and take copies of such items.
• John Doe Order- It is a pre- injunction remedy that the court orders to seize against unknown defendants to protect an individual’s artistic work.
• Permanent/ Perpetual injunction- It refers to a final order which demands the individual to stop from doing an action perpetually.

2. Damages- It means the granting of compensation to a person who has been impacted due to copyright infringement.
3. Destruction and handing over The defendant give the infringing goods to the plaintiff for destruction. 

CRIMINAL REMEDIES- The infringer faces civil as well as criminal charges as mentioned above. Apart from that a Magistrate Court complaint can be filed requesting an order directing the police to investigate and conduct raids. When a complaint is made, the Magistrate notes the complainant’s evidence and makes an order to the police with specific directions.

ADMINISTRATIVE REMEDIES

1. Opposing a similar mark- A similar mark to an already registered one can be opposed by the general public if they think so, within the 4 months of it being published in the trademarks journal 
2. Rectifying a registered mark- If a complainant considers that a registered trademark is incorrectly remaining on the trademark’s register, the individual can submit for rectification, cancellation, or removal of the mark.
3. Recording to Customs- To prevent the imports and exports of goods with infringed trademarks a record can be submitted to customs.

CONCLUSION- Trademark infringement is a system that can cause heavy damage to a particular business. Some steps need to be taken for ensuring that such an incident doesn’t occur and that the law has provided a considerable number of remedies for taking advantage of in case a trademark is infringed. All trademark proprietors should keep an eye out if their rights are vitiated.

Author: Gurveen Kaur – a intern at  IP And Legal Filings, in case of any queries please write back us via email at support@ipandlegalfilings.com.

---

References:

[1](1999 IIAD Delhi 229, 78 (1999) DLT 285) 

[2](2001 (2) PTC 541 SC)

Walmart Apollo Llc. Vs. Aayush Jain & Anr.: A Case Analysis

Introduction:

India, as a mixed market, has a diverse range of industries that function on a free-market basis. In the market system, there is fierce competition. Any business that wants to succeed in the free market must have brand recognition and value. Trademarks are the most straightforward way to accomplish this. However, the Squatting of trademarks and registering of identical and/or deceptively similar trademarks has been a never-ending problem for registered and prior users of trademarks in recent years. Any application for registration of a trademark that is identical or deceptively similar to an already registered brand in order to profit from goodwill and reputation is considered bad faith. Walmart Apollo LLC. Vs. Aayush Jain & Anr. (2021) is a recent case in which Walmart Apollo (Plaintiff) sued Aayush Jain & Anr. (Defendant) for trademark and copyright infringement over its marks in the Delhi High Court.

Factual Background:

Plaintiff is a wholly-owned subsidiary of Walmart Inc. and the world’s largest retailer, with a global network of massive discount department stores, e-commerce stores, and brick-and-mortar retail and wholesale outlets selling a wide range of goods, including but not limited to home decor items. Under the corporate name and trading style “WAL-MART/WALMART,” Plaintiff runs over 10500 outlets under 48 banners in 24 countries. Plaintiff describes their emblem as a yellow spark, which represents invention, creativity, and diversity. Plaintiff became aware of a trademark application for hosiery and ready-made items, undergarments as defined in Class 25 under the name “WMART.” Plaintiff has filed an opposition before the Registrar of Trademark, which is now pending.

Defendants have submitted another application for the identical mark “WMART” in Class 35, as stated. Defendants are in the business of brick-and-mortar stores as well as online clothing and home accessory sale, and they use the trademark “WMART” with the same spark logo as used by Plaintiff. Defendants operate a website at http://www.wmartretail.com, where they advertise and recruit customers using the Impugned Marks as well as on defendants’ social media sites, and sell online through an e-commerce platform. Plaintiffs claimed that after receiving cease-and-desist letters, Defendants continued to use the infringed marks. The plaintiff’s case was prima facie, and they filed a suit against the defendants under the Trade Marks Act, 1999, and the Copyright Act, 1957, seeking a permanent injunction, infringement of trademark, infringement of copyright, passing off a declaration of a well-known mark, and rendition of account of profits in relation to its trademark WALMART/WAL-MART.

Issues in the case:

1. Whether there is a prima facie case under Trademark Protection for the plaintiff?
2. Whether the application brought against the defendant legal?
3. Whether a lawsuit involving a comparable trademark fit under the act’s trademark infringement category?

Held:

Compliance of Order 39 Rule 3 of the Code of Civil Procedure (India), [Act No. 05 of 1908], was passed, and the court-ordered and stated that the defendants, their successors, servants, agents, licensees, franchisees, representatives, sister concerns, assignees, and anyone acting for and/or on their behalf are restrained using the trademarks WMART and/or any other mark deceptively similar/identical to the Plaintiff’s trademarks WAL-MART / WALMART, as a trademark/trade name/trading style/domain name with respect to their goods and/or services or in any manner whatsoever, which would amount to infringement of the registered trademark of the Plaintiff and passing off the goods/services of the defendants as the goods/services of the plaintiff.

Analysis

In the case of H&M Hennes &Mauritz AB Anr. v. HM Megabrands Pvt. Ltd. & Ors. (2018), Plaintiff, a well-known fashion brand with hundreds of shops across the world, adopted the ‘H&M’ trademark in 1970 and registered it in India in 2005. Plaintiff claimed that Defendant infringed on their trademark by representing their ‘HM’ mark with the same red and white color scheme as Plaintiff. Defendant claimed that their use and adoption of the mark was lawful and that the mark stood for the names of their directors. They also claimed that because Plaintiff entered the Indian market much later, their mark had not yet established a reputation when they adopted their ‘HM’ mark in 2011. The Court found in favor of Plaintiff, holding that a company with a global reputation does not need to open up shop in India in order for its trademark to be protected in India. As a result, Defendant was barred from utilizing the ‘HM’ mark or any of its deceptive modifications.

In another case, the domain names owned by Plaintiff and Defendant, ‘Yahoo!’ and ‘Yahoo India!’ respectively, were practically the same and comparable in the case of Yahoo!, Inc. v. Akash Arora & Anr. (1999). The complainant claimed that the similarities would cause consumers to be confused and deceived, leading them to believe that the two domain names were linked. The Delhi High Court ruled that a domain name serves the same purpose as a trademark and is therefore entitled to the same level of protection. According to the court, internet users would be misled and tricked into believing that both domain names are from the same source. The defendant claimed that a disclaimer was posted on its website. However, it was pointed out that a disclaimer alone was insufficient. The plaintiff’s name gained individuality and uniqueness as a result of its association with him. The Court ruled in Plaintiff’s favor.

Similarly, the Supreme Court concluded in Neon Laboratories Limited vs. Medical Technologies Limited(2016), that the “first in the market test” has always had priority. Milmet Oftho Industries (2004) and N.R. Dongre v Whirlpool Corpn. (1996) both concluded that the worldwide prior user has priority and supremacy over the registered brand in India. It was decided that the visibility in India of web pages displaying the goods is adequate to prove that purchasers in India or Indians traveling overseas are aware of the product and are likely to identify it with plaintiffs for the purposes of establishing a reputation.

Conclusion

When choosing a trademark, it is critical for everyone to choose one that can easily differentiate their products from those of others. Copying logos and selling goods online and offline, particularly in the clothing and garments segment, has become very common. To avoid confusion and unhealthy competition, an independent and distinctive mark should be adopted so that the general public will not be confused between the two trademarks and can buy genuine and authentic goods.

Author: Anuja Saraswat – a student of  B.A.LL.B (Hons.) from NMIMS Kirit P. Mehta School of Law (Mumbai), in case of any queries please contact/write back to us via email vidushi@khuranaandkhurana.com or contact us at Khurana & Khurana, Advocates and IP Attorney.

Critical Analysis of the Practice of Regular Granting of Interim Injunctions

It is a known fact that Indian courts, in relation to IPR infringement cases, are prone to granting interim/ex-parte interim injunctions for putting an immediate bar over such an alleged violation. However, it has to be taken into account that, as happened in a plethora of cases, the party against whom such an injunction is issued did not actually violate the Intellectual Property Rights of the other party. In such cases, despite the courts providing for due compensation, a party may suffer harms, which might be irreparable, due to the earlier issued interim injunction. In relation to this, the author aims to analyze the unpopular opinion of doing away with interim injunction and submit its own opinions in relation to the same.

There have been judgements majorly pronounced by Justice Katju and Justice Bhat, wherein, they have provided that the approach of granting an interim injunction at the preliminary stage might serve as an impediment to the final justice, and henceforth, instead of going forward with interim injunctions every time, the courts should try resolving the whole dispute within the shortest period of time possible. Furthermore, Justice Katju also opinionated that the remedy of interim injunctions should completely be done away with and an approach to resolve IP dispute within months should be adopted. The author does agree to Justice Katju’s opinion, but only to a certain extent.

In author’s opinion, completely doing away with the remedy of granting interim injunctions would not be a right step as it can lead to a violation of TRIPS agreement which does provide for interim injunctions, and therefore, the author contend that this phase elimination should not be done on a regular and straightforward basis, when a prima facie assessment can be carried out easily, but only be done when the court is convinced that a decent prima facie assessment of the matter is almost impossible.

In view of the relative inexperience of the Indian courts with IP infringements, the prima facie strength or weakness of the complainant’s case is often very difficult to assess. There is, therefore, a reason why courts must not grant temporary judgments where patent infringements law suits raise credible, complicated problems concerning infringement and validity. They should move directly to the stage of the trial and assess the merits of a permanent injunction or otherwise.

Such trials, however, should be disposed promptly, inter alia, with the discouragement of adjournments, the insistence on fewer hearings and more pleadings, and the appointment of highly neutral technical experts who can assess technology and the scope of claims more objectively than either side.

In suit requesting the alleged IPR infringement, the court should not grant a provisional order in cases where either the validity of the IP or the infringement fact is “credibly” challenged. Instead, for a final decision, the case should go to the trial. This is the result of the fact that the interim decision scrutinizes the fate of the dispute in most IP cases. Any incorrect decision at this point has enormous consequences which require courts to try and achieve the right outcome in the interim phase.

Furthermore, it is also virtually unfeasible to make the correct evaluation, normally available in a short window during an interim phase, in a complicated IP dispute.  The author recommend, therefore, that Indian courts shorten the interim stage and move directly to the proceedings.

A logical corollary of the above proposition is that, if the defendant defends himself intrinsically, by either fostering a frivolous challenge of validity or claiming that the defendant is not infringed without giving reason, the Court should hold that a case of prima facie was established in favor of the plaintiff. The rare exception to the norm is this situation.

There is still no automatic granting of an interim injunction in the above-mentioned rare cases where a court can get a quick prima facie view of the merits in favor of the plaintiff. Rather, the courts have to emphasize that the plaintiff is favored by other factors, such as irreparable damage, balance of convenience and public interest.

To conclude, Indian courts, with time, should evolve the concept of interim injunctions and realize that even granting a simple interim injunction might cause substantial losses to companies. Since a lot of these companies these days are listed in stock markets, one decision is favor or against can change the public outlook and fluctuate their market to a large extent. With this, the author is of the opinion that while respecting the rights of a company whose IP Rights have been violated, the courts should consider the remedy of interim injunction as an exception and incline towards coming to a final decision in the relation to IP matters at the earliest.

Author: Rounak Doshi – a student of National Law Institute University (Bhopal), currently an intern at IIPRD. In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

Can Copyright Law Regulate Deep Fake?

Images, video, and audio that have been doctored are not new but what makes today’s deep fakes unique and alarming is how advanced digital falsification systems have been. We face a world in which no one knows what a threat to global democracy’s base is. Deep fake victims, on the other hand, are likely to be concerned with more immediate causes, such as the dangers of a fake clip featuring them doing or saying something that hurts their credibility.

Position in the United States

In the United States policymakers have proposed several options, including amending Section 230 of the Communications Decency Act, which says that platforms are not liable for content posted by their customers, and enacting legislation that will impose new liabilities for those who create or host deep fakes. However, there is currently no concrete legal solution to this issue. Meanwhile, several deep fake victims have employed a novel yet faulty strategy to combat the attacks by the use of copyright laws.

According to recent reports, YouTube removed the deep fake portraying Kardashian due to copyright violations. A significant amount of clips from an interview was included in the fake video. The media conglomerate which owns Vogue is likely to have lodged a copyright claim with YouTube. It should have used the basic YouTube copyright removal request process, which is based on the Digital Millennium Copyright Act’s legal requirements.

It’s easy to see why certain people would want to use an already-existing legal system to get deep fakes taken down. As there are no rules that directly tackle deep fakes, and social media site policies are unclear. Following the fake Nancy Pelosi video which got viral, tech companies responded in a variety of ways. The video was taken down by YouTube, though Facebook kept it live but added flags and pop-up alerts to warn users that it was most likely a fake. Copyright law, on the other hand, isn’t the answer to the proliferation of deep fakes. The high-profile deep fake instances we’ve seen so far tend to largely come under the “fair use” copyright infringement exemption. Fair use is a legal doctrine in the United States that permits any unlicensed use of content that would otherwise be covered by copyright.

We can look at four factors to see if a particular situation allows for fair use:[1] (1) purpose and character of the use, (2) nature of the copyrighted work, (3) amount and substantiality of the portion taken, and (4) effect of the use upon the potential market.

However, generally speaking, there’s a strong case to be made that most of the deep fakes would qualify as fair use. As deep fakes can meet the four-factor test and be protected under the principle of “transformative use.” As stated by the United States Supreme Court in the landmark decision of Campbell v. Acuff Rose,[2] when a copyrighted work is transformed into material with new expression, meaning, or message, this is known as transformative use.

Due to the current state of copyright laws in the United States, if deep fakes are taken down based on copyright infringement, it may obstruct one’s freedom of expression. The problem is that deep fakes developed for malicious reasons can also be covered under the transformative use principle. Because of the broad scope of the doctrine of fair use, this may be a risky outcome.

Can copyright law in India deal with a deep fake?

In India situation is that of fair dealing, as described by section 52 of the Copyright Act,[3] which contains an exhaustive description of what is not called copyright infringement. Since deep fakes are not included in this exemption, it is simpler to hold the developer liable. As the right to dignity is protected under Section 57(1) (b). A copyrighted work is protected from distortion, mutilation, and modification. Further for violations of exclusive rights, Sections 55 and 63 enforce civil and criminal liability.

It is suggested that deep fakes cannot be viewed only from the standpoint of property rights, since it has the active involvement of certain personal rights. The assertion of copyright infringement fails to defeat deceptive deep fakes in the United States and other countries with positions close to the fair use doctrine. Therefore it is more fitting for victims of malicious deep fakes to use grounds of privacy, data protection, and online abuse to tackle deep fake if it is not copyright infringement in that country.

Author:  Siddhesh Birajdar a 3rd year student of University of Mumbai, intern at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

References:

[1] Digital Millennium Copyright Act, 17 U.S. Code § 107.

[2] 510 U.S. 569, 92-1292, (1994).

[3] THE COPYRIGHT ACT, NO. 14 OF 1957, §52.