Overview of Ticona Polymers, Inc. vs. Registrar of Trademarks

INTRODUCTION

The matter at hand involves an appeal coming from the Senior Examiner at the Registrar of Trademarks’ office rejecting a trademark application. This appeal is covered by Section 91 of the Trade Marks Act of 1999. Ticona Polymers intended to register the term “COOLPOLY” for two product categories, however their application was denied for two reasons: the proposed mark lacked distinguishing characteristics, and the words within the mark were deemed descriptive of the product.

WHAT IS A TRADEMARK?

According to Section 2(1)(zb) of the Trade Marks Act, 1999, a trademark is defined as a symbol that may be graphically expressed and has the ability to differentiate one individual’s products or services from those offered by others. This broad category of trademarks includes signatures, names, labels, headers, and other features.

WHAT IS DISTINCTIVENESS AND DESCRIPTIVENESS IN TRADEMARKS?

Section 9(1) of the Trade Marks Act of 1999 explains the absolute reasons for rejecting a trademark application, stating unequivocally that a mark that clearly describes the characteristics or features of products and services is ineligible for trademark registration. Nevertheless, Section 9(1) not only enforces a complete ban on registering descriptive marks but also incorporates a provision that permits such marks to be registered if they have acquired distinct recognition through previous use or are recognized as well-known trademarks.

FACTS OF THE CASE

The case revolves around an appeal to the Delhi High Court under Section 91 of the Act, stemming from a trademark application rejection. In this application, the appellant sought to register the term “COOLPOLY” for two specific classes of products: Class 1, which pertains to plastic and carbon molding materials used for creating molded plastic items, and Class 9, encompassing molded heat sinks for computers, their components, and molded electrical conductors. The Senior Examiner at the Registrar of Trade Marks’ office declined this application on October 26, 2020. The primary grounds for rejection were objections raised under Sections 9(1)(a) and 11(1) of the Trade Marks Act. These objections focused on the distinctiveness of the mark and the availability of equivalent marks in the trademark registration.

APPELLANT’S CONTENTIONS

The legal counsel for the appellant stated that the well-established policy of not dissecting a trademark into its many components during the registration review is widely acknowledged. Although Section 17(1) of the Trademarks Act clearly indicates that this idea pertains to cases of trademark infringement, it also applies to evaluating registration eligibility with required adjustments. Because the act of registering contains inherent benefits such as protection against infringement, the principle also applies in this case.

RESPONDENT’S CONTENTIONS

According to the respondent’s legal counsels, it is well-established legal principle that a simple combination of two common phrases or abbreviations, even if never before used, cannot be regarded a newly coined phrase. The terms in question in this case were “COOL” and “POLY.” This principle holds as long as the combined phrase conveys an identical meaning to the average individual, whether through visual or auditory means, as the separate words in their regular form. This principle had been upheld in prior legal cases, including E. Griffiths Hughes Ltd. v. Vick Chemical Co. and A.R. Khaleel And Sons v. Registrar of Trade Marks In India.

DELHI HIGH COURT’S OBSERVATIONS

In delivering its judgment, Justice Hari Shankar of the Delhi High Court underscored a fundamental principle: the assessment of a trademark should consider it as a cohesive entity rather than disassembling it into its constituent parts. This principle, firmly grounded in Indian trademark law, is not confined solely to cases of trademark infringement but also extends to the stage of trademark registration.

[Image Sources: Shutterstock]

With regard to the specific trademark under scrutiny, “COOLPOLY,” the court noted that this term lacks any apparent meaning within the English language and does not constitute a commonly used word. Consequently, it retains the capability to differentiate between the products of one entity and those of another if utilized as a trademark. The court also pointed out that the Registrar’s decision lacked clarification regarding the mark’s distinctiveness. Additionally, the court argued that even if the issue of descriptiveness had been raised, it would not be valid because “COOLPOLY” is a unique, newly coined word. Even when examining the words “COOL” and “POLY” individually, they do not describe the products covered by the Appellant’s application, such as plastic and carbon molding materials, in any way.

Consequently, the court overturned the Registrar’s decision, asserting that the Chief Examiner’s rationale for rejecting the mark lacked a legal foundation. The court instructed the Registrar to ensure the publication of the “COOLPOLY” trademark application in the Journal of Trade Marks.

ANALYSIS AND CONCLUSION

The “COOLPOLY” trademark case underscores the vital importance of evaluating trademarks as whole entities within the domain of intellectual property law. At the core of this ruling lies the Delhi HC’s firm support for the anti-dissection doctrine, affirming that trademarks must be evaluated as unified entities rather than deconstructing them into their constituent parts. The court’s decision in favour of the “COOLPOLY” trademark underscores the word’s absence of inherent meaning within the English language, a pivotal element in trademark distinctiveness. Significantly, the court rejects the idea of descriptiveness by asserting that “COOLPOLY” constitutes a freshly minted term. Even when examining its individual elements, “COOL” and “POLY,” they do not depict the goods encompassed in the application. This verdict not only reaffirms the necessity of holistic trademark evaluation but also highlights the broader role of trademarks in preserving the distinctiveness of brands and fostering innovation in the marketplace.

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

REFERENCES

• Ticona Polymers, Inc. Vs. Registrar of Trademarks, 2023 SCC OnLine Del 1234
• The Trademarks Act, 1999
• E. Griffiths Hughes Ltd. v. Vick Chemical Co., AIR 1959 Cal 654
• A.R. Khaleel And Sons v. Registrar of Trade Marks In India, AIR 1963 Mys 122
• https://cleartax.in/s/trademark-act-1999

Trademark Protection For Domain Names

The Internet Domain Names have now become much more than mere representing the websites of different companies on the Internet. Today, in this age of well-developed information technology and worldwide businesses through Internet, these domain names have attained the status of being business identifiers and promoters. Since the commercial activities on the Internet are to go on increasing day by day, the importance and usefulness of domain names too, are to be enhanced for the purposes of greater publicity, popularity, and profitability of businesses in all economic sectors. According to Bill Gates, the founder of Microsoft, “Domains have and will continue to go up in value faster than any other commodity ever known to man”. Broadly, the functions of domain names are now quite similar to the functions of a trademark or service mark, for these purposes. Ours this very informative web-article offers rich and hugely beneficial and securing information regarding the registration and protection of the domain names as trademarks, with a view to help and serve people, companies, and professions pertaining to diverse occupational and economic fields.”

Domain Name

According to the case of People Interactive (India) Pvt. Ltd. Vs. VivekPahwa&Ors. domain name is the internet equivalent of a physical or a territorial address. Identical to an address it directs the user to a particular part of the web where a domain name registrant stores and displays his information and also offers his services.

Trademarks

Trademarks can be any mark that can be represented in a graphical form and has the capability of differentiating a person’s products and services from that of others and it may include shape of goods, packaging, designs and colour combinations. The owner of the trademark has the exclusive right in connection with his goods in order to distinguish it from his rivals.

Domain Names As Trademarks

To register domain names as trademarks, a domain name should fulfil all the conditions that are required to be registered as trademarks. Therefore, a domain name must be unique, capable of identifying itself, distinguish itself from the products of the competitor and also should act as a reliable source identifier of concerned goods and services in the internet.”

#Case: Satyam Infoway Ltd. vs. Siffynet Solutions

In this case the dispute was as to whether domain names can be recognized as trademarks. To which the Supreme Court held that, “The original role of a domain name was no doubt to provide an address for computers on the internet. But the internet has developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the internet, a domain name is also used as a business identifier.” Therefore, the domain name not only serves as an address for internet communication but also identifies the specific internet site and distinguishes specific businesses or services of different companies. Consequently, a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical. As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high.”

Let’s take an example of a more recent judgement-

#Case: Rajat Agarwal vs. Spartan Online

In 2017 the Calcutta High Court cited the Satyam case held that, “ a domain name is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding Internet location.”

The Court continued by arguing that a domain name must be peculiar and unique to the company in order to retain an exclusive identity. Unlike in the Satyam case, however, the court did not prohibit the Defendants from using spartanpoker.com, noting that the Plaintiffs only registered the domain name and did not invest in creating the web page, trade dress, or designing the mark, as well as the costs associated with its registration.

For a domain name to be properly licenced as a trademark, it must be unmistakably distinct from all other domain names and well-known trademarks on the internet, so as not to confuse or deceive consumers of other firms in the same or different fields, or to breach public order or morality. Instances of trademark infringement lawsuits can arise as a result of such situations.

Domain Name Protection in India

At the global level there is only one organization that deals with the registration of domain names as trademarks which is ICANN [Internet Corporation for Assigned Names and Numbers] along with the national and international protection under the directly concerned national trademarks law and diverse International Trademarks Treaties of the world. In India trademark protection is granted under the provision laid down under the Trademark Act, 1999. It specifically provides that a domain name should fulfil all the prerequisites to be properly registered under the act. After the domain name is registered the owner will have all those rights and rights and authorities that are availed by a trademark owner.

The rights consist of the following-

1. Sue for Infringement- “Any person who violates a domain name which is registered as a valid trademark under the Trademarks Law will be held liable for infringement under section 29 of the Trademark Act, 1999.”
2. For Passing Off-“Even if a trademark owner who has not registered his mark is also entitled to protection of his mark given that he is a prior user,his mark has acquired distinctiveness and there is misrepresentation by anyone else with regard to his goods which is likely to deceive the relevant public.”

#Case: Bigtree Entertainment v Brain Seed Sportainment

In this case the Delhi High Court in 2018 denied the owners of the website bookmyshow.com the interim injunction against the defendant’s use of the website “bookmysports.com”. According to the court the words book my of the plaintiff’s trademark BOOKMYSHOW was descriptive not an arbitrary and also failed to prove that BOOKMY has acquired distinctiveness or secondary meaning.

#Case: Rediff Communications Ltd. v. Cybertooth& Another

In this case the Bombay High Court granted an injunction restraining the defendants from using the domain name ‘Radiff’ or any other similar name. it further also held that-

“When both domain names are considered there is every possibility of internet users being confused and deceived into believing that both domain names belong to one common source and connection although the two belong to two different persons.”

In contrast to a clear recognition of right under the UDNDR Policy, the Indian legal system puts greater importance on domain name protection. The Trademarks Act of 1999 has far-reaching implications, with the potential to have the world’s strongest defence for domain names. The current condition necessitates the harmonious implementation of trademark law standards and domain name requirements. It is important to note that once the Supreme Court renders a decision and it reaches finality, it becomes binding on all people and institutions in India.

It cannot be reversed by proving the existence of astatutory provision’ to the contrary. This is because no statutory provision can circumvent a “Constitutional provision,” and the former must give way to the latter in the event of a dispute. When we consider the Supreme Court’s decision in the Satyam case considering the foregoing debate, this settled legal position becomes important. The Supreme Court’s numerous landmark decisions have given domain names the world’s “strongest defence.”

Conclusion

The trademark is mostly used to promote a product and make it available to potential customers. It seeks to communicate the essence of the product and, if possible, the nature of the product, as well as the brand name that has become well-known over time. At this point, other people are often tempted to pass off their products as those of the mark’s original owner. As a result, in a passing off action, the plaintiff’s right is asserted against the defendant’s conduct that leads to, or is planned or calculated to lead to, fraud.”

After going through various landmark judgements by Supreme Court and various High Courts it is clear that domain name plays a very vital role in the trade and commercial activity of an organization on the internet. There are various firms which solely work and trade through online platform and protection of their domain names is of paramount importance.

In this research work we had seen that protection is offered by trademark law in various jurisdictions individually but since the domain names transcend geographical boundaries it is essential to create a harmonious international law for the protection of domain names.

Author: Rishab Pillai – a student of Dharmashastra national law university (Jabalpur), in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

Monsanto Technology LLC And Ors Vs. Nuziveedu Seeds Ltd. And Ors

Monsanto Technology LLC, one of the world’s leading seed company, was smacked by the decision upheld by the Division bench of Delhi High Court in an appeal that was preferred by them against the order of Delhi High Court single bench.

The dispute initially arose over license and royalty of Patented seed technology–BOLLGARD II, between Monsanto and Nuziveedu seeds Company in 2015 (which has earlier been discussed here),  which stretched to a major debate over the legality of Patent No. 214436 consisting of  Bt. Technology  that was granted to Monsanto.

The disputed Patent No. 214436 is titled as “METHODS FOR TRANSFORMING PLANTS TO EXPRESS BACILLUS THURINGIENSIS DELTAENDOTOXINS”  which was questioned on claims 25-27 that contains biotechnological invention containing the infusion of Bt gene into the cotton genome. This Bt. bacterium eradicates pests afflicting the cotton plant.

Nuziveedu’s Claim

Nuziveedu filed a counter claim under section 64, relying on various grounds such as  absence of novelty[1], absence of obviousness[2], complete specification not revealing any “invention”[3],deficiency in complete specifications[4] and claim[5], false suggestions or representations[6], non-compliance of the requirements of Section 8[7],non-disclosure of source or geographical origin[8]and the invention claimed in the complete specification being not useful[9]. Apart from the above grounds, Nuziveedu focused on Section 3 (j) of the Patent Act, 1970, which served as the main ground for the revocation of the mentioned Patent.

Arguments

1. Interpretation of Section 3(j) of Patent Act,1970 vis-a-vis Patent No. 214436

Nuziveedu contended that Section 3(j)  clearly explains as to what are not an ‘inventions’, i.e. “plants and animals in whole, or any part, thereof, other than microorganisms, but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.” Thus, Nuziveedu asserted that claim 25 of the Patent relates to ‘nucleic acid sequence’, application of which  is only in terms of “a plant cell, a seed, a transgenic plant “or a plant variety”. Thus, the specification does not provide any industrial application. Since, a plant or seed, which has such a nucleic acid sequence containing the Cry2Ab gene, cannot be granted a patent in India as this (claim 25) falls squarely within Section 3(j) of the Act.” Further, Nuziveedu contended that Bt. Trait in Cotton Hybrid varietal plants is an essential biological process, and did not regard cross-bred plants and animals as patentable because they are better regarded as ―discoveries[10] which happens naturally and therefore, its just a discovery which has taken place in a laboratory.

Monsanto interpreted the term ‘Plant’ under section 3(j) as a “living organism” and further averred that exclusion would apply to biological entities, per se and not to inventions, which properly fit the description of “micro-organisms” that are excluded specifically from the mischief of the provision. It explained that “DNA” is the “substance responsible for all the processes within a living organism”  and a ‘gene’ is merely a code which is used for production of a protein in a living organism, thus it is not a living thing. Therefore, the subject matter of the patent (Claim Nos. 25-27) are manmade DNA sequences comprising the CryAb gene which confers insect resistance to plants, when incorporated into the plant’s genome. They emphasized that no part of the DNA sequence is a living organism and thus DNA cannot be called as “part” of a plant as well, because it is not like an organ of an animal or the physical attribute of a plant, like flower, fruit, etc.  This is a method of creating transgenic varieties and micro-organisms that are new and inventive transgenes and therefore, very much a Patentable subject matter under the Patents Act.

2. Applicability of Plant Variety Act

Since ‘Micro-organism’ has not been defined by Plant Variety Act, Nuziveedu provided a Cambridge Dictionary definition of ‘Micro-organism’ as “A living thing that on its own is too small to be seen without a microscope, such as bacteria, germs, viruses. Thus, negated Monsanto’s contention that their Patent claim is inanimate and Patentable. Nuziveedu, emphasized on the history of India’s ratification to the TRIPS Agreement, as consequences to which Plant Variety Act was enacted with the objective to protect plant varieties and, the rights of the breeders and also to encourage the development of new varieties of plants. Nuziveedu contended that since the questioned Patent comes under the definition of micro-scopic living entity and a part of plant variety , thus it should   rather be protected by under the Plant Variety Act instead of Patent Act.

However, Monsanto rebutted the contentions of Nuziveedu by averring that the patented ‘trait’ or DNA is beyond the scope of the expression “plant variety” as defined as ‘plant variety’ with a commentary note which comprehensibly excludes ‘such a plant or part(s) of the plant could be used to propagate the variety) , a trait (e.g. disease resistance, flower color),  a chemical or other substance (e.g. oil, DNA),  a plant breeding technology (e.g. tissue culture)” by International Convention for the Protection of New Varieties of Plants (UPOV Convention 1991). Further, Monsanto elaborately mentioned the history of the Patent amendments in order to explain that through various amendments of the concerned Act in 2002 and 2005, and on observing section 3(j) and section 2(1) (j) read with the objects and reasons of the amendments:

“4. some of the salient features of the Bill are as under :

(a). …

(b). to modify section 3 of the present Act to include exclusions permitted by TRIPS Agreement and also subject matters like discovery of any living or non-living substances occurring in nature in the list of exclusions which in general do not constitute patentable invention.”

So it is very clear that the patentee is entitled to Patent protection for the invention resulting from innovations and skill and the subject claims being products or processes of biotechnology. They also observed that when the patented invention is injected into the cotton seeds which provides a hybrid variety, then that hybrid variety can be protected under Plant Variety Act and the invention will be protected under Patent Act.

3. Trade Mark Violation and Sub-Licensing issue:-

Monsanto alleged that termination of Sub- Licensing was perfectly legal as Nuziveedu failed to provide the required trait value to Monsanto for using their technology. As a matter of right, they could injunct Nuziveedu from using their Patented technology and abbreviation of their trademarks BG I and BG II. Further, once the agreement has been terminated it cannot be restored and the parties cannot be directed to perform the obligations contained therein as per Section 14(1) of the Specific Relief Act, 1963.[11]

However, Nuziveedu claimed that by virtue of  seeds included under the Essential commodity Act, 1955, the Central Government is empowered to fix the trait value of the seeds, exceeding which, one cannot terminate the agreement on the grounds of non-payment of licensee fee. Nuziveedu rebutted the reliance taken by Monsanto under section 42 of specific Relief Act, by asserting that it cannot be bound by those obligations (trait fees) fixed by Monsanto, to which only the Central Government is empowered to fix. Thus, relief under the mentioned provision apropos the present case negated. Furthermore, based on this contention questioned the validity of such termination of sub-licensing agreement, terming it as an arbitrary action taken by Monsanto.

In addition to this, Nuziveedu also averred that such technology is only capable to be protected under Plant Variety Act, which Monsanto neglected, thereby avoiding the provision of Benefit sharing[12] arrangements with the seed companies who developed new Bt. Cotton plant varieties expressing Bt trait (subject Patented).

However, in order to rebut the above-stated contentions, Monsanto referred to the judgment of Percy Schmeiser case[13], where “purposive construction‟ was applied to the similar facts and it was held that Monsanto’s gene patent was infringed by “use”, when an unauthorized person developed and commercialized seeds containing the patented gene, since the gene was present throughout the seed, conferring the advantageous trait to the plant and this amounted to taking advantage of the technical contribution of the patentee. Similarly, Nuziveedu has also taken full advantage of the functionality of insect tolerance arising solely from the use of the patented DNA sequences in their cotton hybrid, thereby infringing their subject Patent. Thus, Nuziveedu is infringing Monsanto’s Patent, as it is using their invention to bring out the ultimate product.

With respect to the, Trademark violation by Nuziveedu, it is claimed by the alleged party that they did not intend to use the mark on their product and have just used the abbreviations of Monsanto’s Trade mark, only with the intention of indicating the source which has been used in manufacturing the product, which is legitimate as being a descriptive mark under section 35 of the Trade marks Act, 1999. Moreover, infringement of Trade mark can occur only if a registered mark is used as ‘Trademark’ and not otherwise.[14]

The Delhi High Court Decision

The division bench of Delhi High Court analyzed contentions of both the parties, it upheld Nuziveedu’s Contention and observed that protection under Plant Variety Act and Patent Act are not complimentary but are exclusive of each other and Monsanto Patent protection was incorrect as it should have been protected under the Plants Variety Act, looking at the nature of invention.

On account of the above reasons and by observing that Monsanto had failed to disclose the details as well as source  of its invention as per section 10(4) of the Act and  the Court held that the subject patent falls comes under the ambit of Section 3 (j) of the Patents Act i.e. the said inventions are not patentable. Therefore, Counter claim filed by Nuziveedu is consequently allowed. The Court further gives Monsanto, an opportunity to restore its right in there subject Patent, by allowing them to seek for registration of the same within three month  from the date of this judgment, i.e. 11.07.208.

With regard to Trade mark infringement, the Court observed that the defendants do not have any malafide  intention  to use the Plaintiff’s marks “BOLLGARD” or “BOLLGARD-II”,  rather, Nuziveedu is only using the abbreviation of  the name which is permitted under section 2 (o) of Trademarks Act.

Further, the Court directed Monsanto to continue with its obligations under the sub-license agreements and allowed “the suit to proceed with respect to the claim for damages and other reliefs”, in the light of the sub-license termination notices issued by Monsanto. The Court also provided a period of three months to Monsanto to seek protection of their subject Patent

Analysis

The whole case revolved around the very major issue, that is whether the Patent No. 214436 has been erroneously granted Patent under the Indian Patent Laws. The Court Observed an important aspect of Intellectual Property Laws, that Patent Act are not complimentary but are exclusive of Plant Variety Act and thus, Monsanto Patent protection was incorrect as it should have been protected under the Plants Variety Act, going by a literal interpretation of provisions of both the statutes.

However, such kind of practice and the current position of law as laid down by Justice  Mr. Justice S. Ravindra Bhat and  Mr. justice Yogesh Khanna, may create a future barrier for entrance of new technologies in the Agricultural Industries as the major incentive for the technology developers have been sacked and also now that the technology developers have lost the right to fix the license price to the Central Government. I feel that with an advanced inventions along with growing technology and need of such development, the statute must be flexible enough to imbibe the new changes and pave way for such technological developers subject to public policy and can be regulated by the Central Government with respect to the kind of invention taking place as well as ‘benefit sharing aspect and license fee’, hence taking care of farmer’s right as well. Therefore,  the subject Patent may be validated and the outcome product after being processed by the Patented invention can be protected under Plant Variety Act. Thereby, avoiding the overlap of IP laws and rightfully protecting each party’s right.

Monsanto, being the world’s biggest agricultural company also may prefer a special Leave Petition for the above placed decision. Let’s wait and watch what’s in store for the company and Nuziveedu has been lucky so far having the laws of the land by its side. If Monsanto appeals against the judgment, which is more probable to happen then The question on  3(j) would definitely arise as to its need, intention and validity in the contemporary world having advanced technological inventions, ideas and its needs.

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

References:

[1] Section 64 (1)(e), The Patents Act, 1970

[2] Section 64 (1)(f), The Patents Act, 1970

[3] Section 64 (1)(d), The Patents Act, 1970

[4] Section 64 (1)(h),The Patents Act, 1970

[5] Section 64 (1)(i), The Patents Act, 1970

[6] Section 64 (1)(j), The Patents Act, 1970

[7] Section 64 (1)(m), The Patents Act, 1970

[8] Section 64 (1)(b), The Patents Act, 1970

[9] Section 64 (1)(g), The Patents Act, 1970

[10] Harvard College v Canada (Commissioner of Patents),[ 2002] 4 SCR 45

[11]Indian Oil Corporation Ltd. v. Amritsar Gas Services and Ors., (1991) 1 SCC 533

[12] Section 26, Plant Variety Act

[13]Percy Schmeiser v Monsanto 2004 1 SCR 902

[14] Section 29, Trade Marks Act,1999

Thank ‘God’! It Is Not Trademarkable: Analysing the Monopoly over the Names of Gods and Holy Books

Rumours have it that Hindus have 33 Crore Gods. From an IPR perspective, it simply means that there are 33 crore names that are in a fix as potential trademark names. The recent judgement of Bombay High Court in the case of Freudenberg Gala Household Product Pvt. Ltd. v. GEBI Products Ltd[1] has opened the Pandora’s box of whether names of Gods should be registered as trademarks. The problem also lies in trademarking names of Holy Books like Ramayana and Mahabharata. Claiming monopoly and enjoying exclusivity over such names poses a threat to the commoners as well as the devotees.

The names of Holy books and Gods are considered good luck and show positive meaning, and thus are preferred by many while associating brand names. For example, ‘Ganesha’ means auspicious and good start whereas ‘Laxmi’ is associated with good fortune. These names do not possess distinctiveness in itself and to acquire secondary distinctiveness, it has to draw commercial magnetism so that the brand name and business become synonymous in public mind.  There has to be some kind of mental association in the minds of the purchaser. However, the registration of such names as word marks, should ideally be refused as names of Gods like Laxmi or Ganesha raise the question of distinctiveness. Mostly the Courts have held that it is difficult to get distinctiveness on God’s name. The consumer has yet not been able to associate any brand with that of the God’s name. However, that remains a question of fact whether a common word like that of God’s name, has acquired secondary meaning or distinctiveness and thus will depend from case to case.

The problem lies not only in the names of Gods and Goddesses but also in using names of Spiritual leaders. Denial of exclusivity over the names of spiritual leaders has been reasoned as no commercial monopoly can be allowed over a religious figure. Italian Supreme Court in in the case of George V. Entertainment S.A. and George V. Records E.U.R.L. v. Buddha CafèS.r.l.(Decided on: 26 January 2016, No. 1277) denied registration of Buddha as tradename of a coffee café in Milan.  The Applicants argued that Buddha was distinctive as tradename and had no connection with coffee; hence was an arbitrary fanciful name. The Court held that the tradename calls out religion but also directs a way of life.

Another situation that arises is when the names of Gods are used for registration of products which are condemned or bad in nature. In the case ofA.T. Raja, Madras v. Mangalore Ganesh Beedi Works[2], the trade name used on the pack of cigarettes was ‘Ganesha’. The case was contended on two arguments. Firstly, that the product was not good in nature and is vice in Hinduism. Secondly, people would use the pack with pictorial depiction of Ganesha and throw it in the bins after use. The Allahabad High Court rejecting the contentions held that nothing was shown to suggest that smoking hurts religious susceptibilities and also observed that photographs of Gods are used in wedding invitation cards by Hindus. Once the purpose is over, the cards are also thrown in the dustbins. The progressive interpretation of the Court was well appreciated. The Court had used judicial wisdom and not believed in literal interpretation of Section 9 (2)(b) of the Trademark Act.

Practically speaking, the image of the God and Goddesses can only be used as Intellectual Property by someone who is most likely not traceable today. Trusts like that of Sabarimala Temple are mere custodians of the deities. From the cases discussed in the paper, it is clear that the Courts have taken a strict stand on handing exclusivity of God’s name as that would prohibit the devotees and the commoners from using the name. What is not being discussed currently by the Indian Courts is the implications of registering names of Gods, Spiritual leaders and Holy books. The decision is only settled when there is any other party who opposes the usage of such names. The only exception being Kerala High Court in Sabarimala case who had suo-moto initiated proceedings. However, the Court dismissed the proceedings.  It is high time that the Registry takes into action the above discussed ratios before allowing and refusing such trade names.

The Courts are also not examining the Constitutional aspect of the rights enjoyed by the Trusts on such registration of names. One more question that remains unanswered is on the limit of inclusion of class whose names can hurt the religious susceptibilities. Can we not trademark the names of demigods, saints, kings and creatures from all mythological stories too? If such trademarks are allowed in future, then ‘God’ knows how many popular images in public domain will be allowed to enjoy exclusivity in the hands of proprietor.

Author: Ms. Esha Himadri, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnils@khuranaandkhurana.com

References:

[1] (Unreported, Commercial Appeal No. 72 of 2017, Decided on: 01.08.2017)

[2] (1999 19 PTC 104)

[3] Lisa E. Cristal and Victor F. DeFrancis, ‘Choosing and Defending a Trade Mark’ [2000] Vol. 17 No. 3, Protecting Intellectual Property.

[4]https://spicyip.com/2017/08/not-in-gods-name-bombay-hc-refuses-monopoly-over-names-of-hindu-gods.html

[5]https://spicyip.com/2015/12/supreme-court-says-no-trademark-registration-for-names-of-holy-books.html

[6] Osho International Forum v Osho Dhyan Mandir [2000] CN FA0006000094990, National Arbitration Forum, USA.

[7] Picture of the deity – Trademark No. 1420800 and the title ‘Sabarimala of Women’ -Trademark No. 1420799 under Class 42 of the Trade Marks Act, 1999.

[8] Eighth Standing Committee Report on the Trade Marks Bill, 1993, Clause 13.3.

Izuk Chemical Works v. Babu Ram Dharam – Part of Trademark Infringed

It is well established that a Trademark have to be used in its totality. A trademark having several components in it, when registered, is taken as a whole. Whereas, according to Section 15 and 17 of the Trade Mark Act, 1999, if the applicant seeks exclusive rights over a part of trademark then he may have to register that part separately.

Despite the fact that there are various provisions dealing with trademark to be used as a whole, the Delhi High Court passed a judgment stating otherwise in the case of Izuk Chemical Works v. Babu Ram Dharam Prakash[1]  in 2007.

In this case, the plaintiff filed a suit seeking relief of permanent injunction and to restrain the defendants from infringing its trademark. The plaintiff was engaged in the business of manufacturing and trading bleaching preparations and other various substances for cleaning, polishing, laundry use etc. since the year 1917. The plaintiff since then is conducting his business under the trademark ‘MOONSTAR’ and has adopted a device of a star in the lap of the moon. By virtue of long and extensive use of the trademark since the year 1917 and of the label since 1998, the trademark and the label have become distinctive and are associated with the goods and business of the plaintiff.

The plaintiff therefore filed a suit against the defendant for malafide and fraudulent acts done by him by using the similar/identical Trade Mark dealing with the manufacture and trade of goods similar to that of the plaintiff. The plaintiff claimed that the defendant dishonestly copied all the essential features of the plaintiff’s trademark and label and is trading henna under the mark ‘SUPERSTAR’. When the suit was filed, the plaintiff was aggrieved by the similarity between the cartons in which the plaintiff was marketing its products and those adopted by the defendant. The same colour scheme, device of a woman and the expression ‘herbal henna’ were displayed in an identical position on the front of the carton as they appeared on the plaintiff’s cartons. The defendant had also copies the device of the star and displayed the same in a similar manner as displayed by the plaintiff with the mark of registration of the trademark and had printed the word ‘SUPERSTAR’ in the same colour and style as the plaintiff’s ‘MOONSTAR’ on its carton. The back of the defendant’s carton was almost identical to that of the plaintiff with same identical changes in the language in which the printed material was displayed and the contents of the information which was given.

Going through the above contentions, the court held:

1. That the plaintiff has established a prima facie case of infringement of its registered trademark by the defendant. The trademark adopted by the defendant contains an essential part of the plaintiff’s trademark that is used for trading.
2. The goods dealt by the defendant and the plaintiff are same and the mark used by the defendant is also very similar to the plaintiff’s mark.
3. The plaintiff also established reputation and goodwill in its business under such trademark which would undoubtedly suffer irreparable loss and damage if the defendant is not restrained from continuing with its offending acts. The balance of convenience, interest of justice and equity lie in favor of the plaintiff and against the defendant. The potential customers would consist of literate, semi-literate and even illiterate people who by virtue of the adoption of the word ‘Star’ as part of its trademark by the defendant as also the device star would be persuaded to believe that the product of the defendant is associated with that of the plaintiff’s.

The application was allowed and the defendants were restrained from using plaintiff’s trademark ‘MOONSTAR’ or any part thereof for manufacturing, selling, offering for sale, advertising or displaying directly or indirectly or dealing in any other manner for its products or business. The defendants, proprietors, promoters, retailers, their agents, partners, servants, assigns, representatives, successors, distributors and all others acting for and on their behalf are also hereby restrained from using the device of star in the lap of the moon or any portion thereof for its products or business. The defendants are also restrained from using any other trademark or device identical or deceptively similar to that of the plaintiff amounting to infringement of plaintiff’s registered trademark; or violating the plaintiff’s common law rights in the trademark.

It is therefore, clear from the above judgment that the Court overturned the provision that trademark has to be considered as a whole and that the applicant may have exclusive rights over a part of his trademark if it contains an essential part of the whole mark.

Author: Ms. Tushita Dogra, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnils@khuranaandkhurana.com

References:

[1] 2007(35)PTC28(Del)

[2] https://indiankanoon.org/doc/1165153/

Effect of Acquiescence on Trademark

The dictionary meaning of acquiescence is the reluctant acceptance of something without protest.

The Trade Marks Act 1999 talks about the “acquiescence” under Section 33 of the Act and is based on the well settled principle-

 “Equity aids the vigilant, not those who slumber on their rights.”

It means a person who has been wronged must act relatively swiftly to preserve his rights.

The proprietor of the trade mark must remain vigilant about any unauthorized use of his mark by others and if he doesn’t, he would not be entitled to claim any relief under the Act due to inaction on his part.

Condition prior to Trade Mark Act 1999–

Prior to the provisions in Trade Marks Act, 1999 there was not any clear and precise law regarding the defense of acquiescence under the Trade Marks Act, 1940 and under the Trade and Merchandise Act, 1958 and the scope of acquiescence was based on judicial pronouncements. Under Trade Mark Act, 1940 the court permitted the defendant to take the defense of acquiescence under ‘special circumstances’ in Section 10(2) of the 1940 Act which says,“In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade mark which are identical or nearly resemble each other in respect of the same goods or description of goods subject to such conditions and limitations, if any, as the registrar may think fit to impose.

 Under Trade and Merchandise Act, 1958 the plea of acquiescence can be availed by the defendant under the ‘special circumstance’ under clause (1) of sub-section (b) of Section 30 of 1958 Act which is as follows –

Section 30 – Acts not constituting infringement :- (1) Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of the right to use of a registered trade mark – (b) the use by a person of a trade mark in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or bulk of which they form part, the registered proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark.

 Acquiescence under Trade Marks Act 1999–

 The act came into force in 2003 and it clearly lays down the provision for acquiescence under Section 33 which is mainly evolved from the various opinions and judgments of the courts over the years.

 Section 33– Effect of acquiescence:

(1) Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trademark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark—

(a) to apply for a declaration that the registration of the later trade mark is invalid, or

(b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used unless the registration of the later trade mark was not applied in good faith.

(2) Where sub-section (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark may no longer be invoked against his later trademark.

Section 33 of the Act in simple words allows the defendant to take the plea of ‘acquiescence’ against the proprietor of the trademark for his ignorance and inaction even after being aware of the use of the proprietor mark in good faith for the period of continuous five years.

The Supreme Court in the Ramdev Food Products Ltd. Vs. Arvind Rambhai Patel [AIR 2006 SC 3304] crystallized the law on the point as – The principle of acquiescence would apply where the plaintiffs found (i) sitting by or allowing another to invade the rights and spend money on it, (ii) it is a course of conduct inconsistent with the claim for exclusive rights for trademark, trade name, etc.

The Delhi High Court in Jolen Inc. Vs. Doctor & Company [2002 (24) PTC 29 (Del)] observed that the defendant can avail the plea of acquiescence not only if he proves that the plaintiff is standing by but he has also to prove that the plaintiff has turned a blind eye for a substantial period. Bombay High Court in the case of Emcure Pharmaceuticals Ltd. Vs. Corona Remedies Pvt. Ltd. upheld that a mere failure to sue without a positive act of encouragement is no defense and is no acquiescence.

The exception to this section is in the words “good faith”. If the proprietor of the mark is able to prove that the defendant adopted the mark in bad faith, to trade upon the reputation and goodwill of the proprietor’s mark for commercial gains, then the plea of acquiescence doesn’t hold good. In the case of  M/s. Hindustan Pencils Pvt. Ltd. Vs. M/s. India Stationary Products Co. Ltd. [AIR 1990 Del. 19]- Delhi High Court held, if the user even after knowing that he is violating the right of the owner of the trademark, acts fraudulently, the relief of injunction is not denied.

Thus a mere delay in filing a suit would not amount to acquiescence. If the plaintiff even being aware of the use of a similar mark sits idle and allows the defendant to grow and popularize its business under the similar mark over a substantial period of time. However, it is clear that the defendant can only be allowed to raise the plea of acquiescence if he proves that he adopted the mark in good faith and without knowledge of the earlier similar mark being in use. Acquiescence can be a ground for granting injunction and factors such as knowledge of unauthorized use of the mark, ignorance, and inaction by the proprietor for a substantial period of time, mala fide intentions of the user are to be considered while deciding the plea of acquiescence, thereby, not only allowing the defendant to use the mark concurrently, but also to get the mark registered!

About the author:     Ankit Chaudhary, Faculty of Law, Delhi University, intern at Khurana & Khurana Advocates and IP Attorneys and can be reached at info@khuranaandkhurana.com