Trans-Border Trademark Landscape in India Post Toyota-Prius Judgement

INTRODUCTION

A trademark is any word, mark, logo, brand, name, slogan, or other visual element that differentiates one company’s products or services from those of another. Trademarks are considered Intellectual Property Rights and are legally protected under both national and international laws. The rationale for giving legal protection is that trademarks symbolise quality standards and prevent counterfeiting of the company’s products, therefore increasing the company’s goodwill. In India, trademarks are controlled by the Trademarks Act of 1999, which provides an exhaustive framework for trademarks.

One of the many aspects of trademark recognition is the Trans-Border reputation of a trademark. Trans-border reputation means that when the trademark of the company gains goodwill and is reputed globally, beyond the territorial limits of the country where the trademark is filed due to its widespread presence in the market through physical presence product, promotion, advertisements and/or publicity.

Trans-border trademark recognition has become more important in recent years to assist traders in protecting their trademarks internationally. Because the courts acknowledge this element of trademarks, third parties from other countries are limited to registering any trademark that suggests any likeness to a trademark previously filed by one nation in another country.

EMERGENCE

N.R. Dongre vs. Whirlpool Corporation, 1996 (16) PTC 583

Facts:

Whirlpool Corporation and its Indian subsidiary launched a lawsuit against N.R. Dongre in India for trademark infringement. Whirlpool was selling washing machines in India using the same trademark that N.R. Dongre was accused of infringing. The appellants (Whirlpool) contended that they have long used the disputed trademark and that the appellant’s company’s goods have a trans-border reputation. One of the several issues presented in this case was whether Whirlpool was widely recognised in India and had a trans-border reputation.

Held:

The Delhi High Court’s single and division benches both decided in Whirlpool’s favour. It stated that the appellants’ evidence proved that they had been long-time users of the mark in question, whilst the respondents failed to show their innocence for using the mark. Division Bench of the Delhi High Court further acknowledged the mark’s trans-border reputation and indicated that it is not required to have the goods present in physical form to recognise the trademark, but that the product is recognised in the market through marketing, as was the case here. The Supreme Court likewise supported the Division Bench’s judgement, stating that overturning the Division Bench’s decision would cause irreparable injury to Whirlpool because they had been using this mark for a long time.

The concept of trans-border has evolved through this case and the courts have heavily relied on this case to determine the cases of trans-border trademark recognition of multinational companies.

TOYOTA JIDOSHA KABUSHIKI KAISHA vs. M/S PRIUS AUTO INDUSTRIES LTD. & ORS. 2018 (73) PTC 1

Facts:

Toyota (hereafter referred to as plaintiff), an internationally recognised automobile manufacturer, introduced a car named the ‘PRIUS’ for which trademark registrations were submitted across the world. Prius Auto Industries (hereafter referred to as the defendant) is a company incorporated in India that manufactures and sells vehicle components and accessories. Toyota filed before the Single Judge Bench of the Delhi High Court for a permanent injunction against Prius Industries for violating Toyota’s trademark, which it had already filed. If the injunction is not granted, Prius Industries will obtain an unfair advantage over Toyota’s brand reputation and goodwill, which is detrimental to Toyota.

Held:

The Single Judge Bench issued an ex parte ad interim injunction prohibiting the defendants from using Plaintiff’s registered trademarks.

The defendants filed an appeal with the Delhi High Court’s Division Bench against the ruling. The Division Bench decided that Prius lacked a transborder reputation in India, and that print media marketing had minimal impact on the public. Furthermore, no substantive evidence suggested that the public was confused about both items.

The Supreme Court heard an appeal, and upheld the Division Bench’s ruling. Toyota claimed that the ‘PRIUS’ mark was marketed internationally in print media, but failed to demonstrate that the ‘PRIUS’ brand had established significant goodwill and recognition in the Indian market prior to when Prius Industries applied to use the same mark. They also said that if people affiliated with the sector or the items are aware of the mark, it has built a positive reputation and goodwill in the market.

However, the court did not agree with this but rather agreed with the territorial principle to be the primary focus. It noted that in order to establish a trans-border reputation, the mark must have gained goodwill in the Indian market before anyone else may submit a trademark application for it. Because it was not clear in this case that Toyota had a significant level of goodwill for its automobile, the Division Bench of the Delhi High Court’s decision to overturn the permanent injunction was affirmed.

CONCLUSION

According to the well-established precedent set by Whirlpool, even in cases when a product is not physically present in the market, the company’s mark alone would be enough to identify it as a trans-border reputation in the Indian market. The Toyota decision provided more clarification on this issue, with the court ruling that a trademark cannot be considered to have trans-border recognition just because it is printed in newspapers and magazines. Whether or not the general public has been impacted and influenced by these commercials is one of its key components. It acknowledged the territorial doctrine and placed a strong emphasis on the spillover of global reputation to the Indian market prior to its adoption by others.

The Toyota case expanded the scope of trademarks’ trans-border reputation in the Indian market and gave greater protection to those using marks that were not acknowledged in the Indian market but were registered as trademarks elsewhere in the world. Following this precedent, each case’s facts will be interpreted differently because a variety of factors will be taken into account when determining whether a company’s trademarks have a trans-border reputation. This ensures better protection to the other company and fair and equal justice for all which forms the basis of the Indian Constitution. 

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

SOURCES

1. https://www.mondaq.com/india/trademark/665844/transborder-reputation-and-passing-off-action-toyota-prius-case
2. https://singhania.in/blog/trans-border-reputation-of-trademarks-in-india
3. https://www.khuranaandkhurana.com/2022/05/28/the-issue-of-transborder-reputation-of-trademarks/
4. https://www.theippress.com/2021/10/26/effect-of-prius-judgment-on-trans-border-reputation-of-trademarks/
5. https://www.indiacode.nic.in/bitstream/123456789/1993/1/A1999-47.pdf
6. https://indiankanoon.org/doc/163092085/

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

Impact of AI on Trademark Law: Recent Developments and Future

Introduction

In this rapidly changing world of Intellectual Property law, artificial intelligence is transforming trademark law by challenging long-held beliefs. The intersection between trademark law and artificial intelligence providing excess to opportunities and challenges, making a deep understanding of both present developments and the potential long-term effects. Artificial Intelligence has transformed trademark management processes by offering exceptional levels of efficiency and accuracy in work such as trademark monitoring, enforcement and research. These technologies carry on to proceed at a never-before-seen pace. Trademark law experts can efficiently see conflicts and infringement by the use of artificial intelligence. AI inspired solutions that facilitate accurate browsing of long databases. However passionate digital platform observation given by AI powered real time brands monitoring solutions enables trademark owners to safeguard their companies in a progressively connected world However, these types of evolutions also raise challenging legal issues, such as how to resolve legal ambivalence, who is liable for trademark infringement when AI creates the brand, and larger ethical and legal repercussions. In light of this, as AI keeping up to transforming the world of trademark law. It is imperative to look at recent legislative and legal changes as well as possible future challenges and opportunities.

The Development of AI in Trademark Administration

Artificial intelligence (AI) has transformed traditional trademark management techniques by providing previously unheard-of levels of efficiency and accuracy. Let’s examine the salient features of the development of AI in trademark management:

• AI-Powered Trademark Searching: This innovation has completely changed the field of brand protection. With unprecedented speed and accuracy, trademark practitioners may now do thorough searches across enormous libraries of already-registered trademarks and other data. Artificial intelligence systems are highly skilled in discerning minute resemblance and variations among the trademarks, making it feasible to quickly identify the possible disputes. This functionality reduces the chances of unintentionally infringing the already-registered trademarks while also streamlining the trademark clearance process.
• Real-Time Brands Monitoring: Proactive brands security has now entered a new phase with the introduction of AI brand monitoring technologies. In order to find out the any trademark infringements in real-time, these systems continuously scan a variety of online venues, such as social media networks, e-commerce websites, and digital marketplaces. Trademark owners may quickly detect unlawful usage, counterfeit goods, and brand dilution by utilizing artificial intelligence (AI), which enables prompt intervention and enforcement actions. Maintaining brand integrity and stopping illegal activity on digital platforms require real-time brand monitoring.
• 
  Expanded Enforcement skills: Thanks to AI technologies, trademark owners can now successfully encounter infringement by having access to expanded enforcement skills. Large amounts of data can be analysed by AI algorithms to find out trends in unlawful distribution, counterfeit production, and trademark infringement. Furthermore, the automation of enforcement procedures, including the issuance of takedown requests, cease-and-desist letters, and court filings, is made possible by AI-powered enforcement tools. AI helps trademark owners to spend resources more effectively and resolve trademark disputes more quickly by automating repetitive operations and streamlining enforcement efforts.

Obstacles and Legal Matters to Consider:
1. Liability Attribution for Trademarks Generated by AI:
In trademark law, determining culpability for AI-generated trademarks is a major challenge. When AI systems generate trademarks on their own without human assistance, ownership and accountability issues come up. In order to create frameworks that fairly distribute culpability among AI developers, users, and the AI systems themselves, courts must address agency and accountability issues.
2. Ambiguities in the Trademark Infringement: As an AI-generated material proliferates, conventional ideas of trademark infringement become more nuanced. It gets harder and harder to tell the difference between authentic works and automated work when AI algorithms produce logos, slogans and other type of trademark-related materials. The challenge for courts is to modify the current legal frameworks to take into account the subtle of AI-generated trademarks and provide precise standards for infringement.

3. Ethical and Regulatory Implications: Adding AI to trademark law creates more ethical and regulatory issues than just the legal ones. Concerns around the algorithmic bias, data privacy, and the moral of the application of AI to intellectual property management must be addressed by stakeholders. The duty of creating rules and regulations to guarantee the ethical development and application of AI technologies within the trademark ecosystem falls to regulatory authorities
4. Human Involvement Requirements: Historically, trademark law has mandated that people be present during the trademark invention and registration process. But as AI systems advance, it gets harder to determine how much human involvement is required to qualify a trademark. To what degree AI-generated trademarks should be eligible for registration and protection, courts and legislators must decide on this matter.

5. Preservation of Consumer Trust: Concerns concerning the preservation of consumer trust are raised by the increasing use of AI in trademark administration. There is a chance of mistakes or oversights when AI algorithms are employed to automate processes like trademark monitoring and searching, which could erode customer trust in the authenticity of trademarks. In order to keep customers’ faith in the brand, it is imperative that AI-driven procedures are transparent, accountable, and accurate.

6. International Harmonization: Reaching international harmonization is difficult due to the international scope of trademark law and the quick development of AI technology. Attempts to provide uniform norms and guidelines for AI in trademark law are complicated by differently shaped legal frameworks and approaches to AI regulation in different countries. In order to enhance international mutual recognition of intellectual property rights, unify legal concepts, and ease information transfer, collaborative actions are required.

Future Repercussions and considerations:

• Development of Ethical AI: As AI continues to be important to trademark law, it is difficult to ensure that AI is developed ethically. The ethical use of AI technology, taking into account factors like algorithmic bias, neutrality and transparency must be given top preference by the stakeholders. In Trademark supervision, we can reduce possible dangers and can preserve equity and justice by encouraging the moral AI development techniques.
  
• Continuous Monitoring and Adaptation: Keeping up with the latest developments in trademark law requires constant observation and adjustment as AI technologies advance and new difficulties appear. Trademark experts need to be on the lookout, always evaluating how AI is affecting trademark management procedures and modifying their plans as necessary. Trademark experts may maintain the integrity of intellectual property rights in the digital era and successfully traverse the ever-changing field of AI in trademark law by remaining vigilant, adaptable, and knowledgeable.
• Regulatory Frameworks: As AI becomes more and more prevalent in trademark law, strong regulatory frameworks that both handle new issues and promote innovation are required. Legislators must work with technologists, legal professionals, and business stakeholders to pass laws that give clarity on matters like data protection, liability attribution, and AI governance. Regulatory systems can encourage responsible behaviour by defining precise norms and principles.
• Adaptation and Innovation: To successfully traverse the transforming world of artificial intelligence in the trademark law, trademark experts must hold adaptation and innovation. To fully utilizing the AI while managing trademark portfolios, interaction with AI technology, ongoing learning, and the implementation of better practices are crucial. Trademark experts can improve brand safety efforts and streamline trademark management procedures by excepting creative practices and remaining up to date with technology advancements.
  

Cooperation and Knowledge Sharing: To successfully managing the critical issues raised by AI in trademark law, collective methods and knowledge-sharing programs are crucial. It is important that stakeholders from the fields of academics, government, industries and civil society unite in order to share best practices, perspectives, and work together in research and development projects. By uplifting cooperation and information exchange, we might all work together able to solve new problems, stimulate creativity, and enhance the ethical use of AI to trademark management.

Conclusion  

In summary, the incorporation of artificial intelligence (AI) into trademark law signifies a significant change in the intellectual property environment, characterized by both revolutionary possibilities and complex obstacles. Recent advancements have demonstrated how AI can improve trademark administration by facilitating effective searches, providing real-time monitoring, and improving enforcement capabilities. But these developments also bring with them difficult legal issues, such as attribution of blame disputes, unclear trademark infringement claims, and wider moral and legal ramifications. In order to effectively navigate the changing trademark landscape going forward, proactive adaptation and collaboration are essential. Stakeholders need to plan ahead for technology breakthroughs, strike a balance between innovation and intellectual property protection, and encourage the development of ethical AI.

Through the implementation of cooperative strategies including as international harmonization initiatives, interdisciplinary cooperation, and stakeholder engagement, the trademark ecosystem can effectively tackle the diverse issues raised by artificial intelligence (AI) while optimizing its potential advantages. Ultimately, parties involved may guarantee that trademark law continues to be strong, equitable, and successful in protecting intellectual property rights in the digital era by embracing responsible innovation and respecting the values of openness, accountability, and fairness.

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

Bibliography

• Lee Curtis, a. R. (2020, june ). Trademark Law Playing Catch-up with Artificial Intelligence? Retrieved from WIPO MAGAZINE: https://www.wipo.int/wipo_magazine_digital/en/2020/article_0001.html
• Wills, K. (2022). AI around the World: Intellectual Property Law Considerations and beyond. Journal of the Patent & Trademark Office Society, 186.
•  Batty, Rob, Trade Mark Infringement and Artificial Intelligence (August 16, 2021). New Zealand Business Law Quarterly (Forthcoming),http://dx.doi.org/10.2139/ssrn.3978248^[1]
• Moreland, Anke and Vieites Novaes de Freitas, Conrado, Artificial Intelligence and Trade Mark Assessment (October 29, 2019). Moreland, A. & Freitas, C. (2021), Artificial intelligence and trade mark assessment, in Hilty, R., Liu, K-C. & Lee, J-A. (eds.), Artificial Intelligence & Intellectual Property, Oxford University Press, p. 266 – 291, Available at SSRN: https://ssrn.com/abstract=3683807
• Gangue, Dev S., Eye, Robot: Artificial Intelligence and Trade Mark Registers (October 10, 2019). Forthcoming in N. Bruun, G. Dinwoodie, M. Levin & A. Ohly (eds.), Transition and Coherence in Intellectual Property Law, (Cambridge University Press, 2020),  https://ssrn.com/abstract=3467627

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Identification Of Trademarks

INTRODUCTION

Trademark rights are actually established by using the trademark in commercial purposes, not by registering it formally; however, trademark rights can be significantly enhanced by registering them under the Trademark Act, 1999. Since the originality and source of the majority of   the product can only be verified through its trademark on the product. It can be said that many people have a rough idea about the trademark is but they are not aware about the various types of the trademark available. Herein how to identify a trademark with regards to its various types has been explained. Also how to know whether the trademark is registered yet in India or not has been explained.

IDENTIFICATION OF TRADEMARKS

Every trademark is protected by the Intellectual property rights in India. Trademark consists of a special symbol, design or any expression that helps identifies or rectifies the product and its services of the company. A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.[i] The word ‘mark’ has been defined under Trademark Act, 1999 as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. But to protect our trademark from being used or exploited it has to be registration then only we any avail the remedies available to us. Trademark can be registered under Section 18 to Section 23 of the Trademark Act, 1999. The application for trademark can be filed and the mark ‘TM’ can be used until it’s registered. And the once the mark is registered the ‘®’ can be used. The registered trademark is valid for 10 years and can be used by the proprietor for 10 years, which can be renewed from time to time on the discretion of the proprietor. All though there are many types of Trademarks but their purpose is the same which helps to determine the originality and authentication of the product.

[Image Sources : Shutterstock]

Since everyone by having a look at the trademark can say whether it is trademark or not but we cannot easily distinguish in between several of trademark. But by understanding various types of trademark we can distinguish between them. There are several of types of trademarks which can be registered like product mark, certification mark, shape mark, service mark, collective mark, sound mark and pattern mark, some of them explained in detail as below:

1. PRODUCT MARK: Product trademark are those which are attached to identify the goods in short they are affixed to it. Product trademark are used on a product rather than any service. The product mark on any product helps us to identify the originality of the good and this mark helps the company to maintain its band name which helps the company to distinguish their product from the other manufacturers in the market. Herein this mark helps the company to preserve its goodwill and reputation of the brand. Trademark applications filed under class 1 to class 34 of the trademark rules as defined as product trademark, as these classes represent goods and its forms. Example: Nestle Gold coffee, a special gold kind of symbol is used by the company to showcase its uniqueness, and this mark is also affixed to only that product itself.

• SERVICE MARK: A service mark is used to rectify the service of the mark holder like it identifies the source of the product. Service mark is used to represent a service rather than the product, like what is the service provider for that product or good. A service mark distinguishes the services of proprietor from that of other service providers. They represent the service particularly offered by that business and not of any specific good. A service mark may be present on various goods at a time as per the diversification of good possessed by the company. Trademark application registered under class 35 to class 45 of the trademark rules can be defined as service marks, as these classes represent service. Example: Honda bikes mark is a service logo which is used by them on several bike models of the Honda and also it represent the brand name of the company.

• COLLECTIVE MARK: Collective marks can be defined as the marks which are collectively registered by a group of companies; organisation or association is collectively used by them and can be protected collectively by them. Collective mark is used by more than one trader at a time. Collective marks can also be used to promote particular or similar products which have certain characteristics specific to the producer in similar field. The standards of the product are all fixed by the regulators or mark exercisers altogether.  Example: The designation of Chartered Accountant represents a Collective Mark.

• CERTIFICATION MARK: A Certification Mark marks denotes the originality, material and quality of the good or the product. The main purpose of the Certification Mark is to bring out and determine the standardization of the good and guarantee the source of the product. Certification Mark denotes the standard to the good. The resemblance of a Certification Mark on the products denotes that the product has undergone various standard tests and the brand can be trusted since the quality of the product has been verified by the concerned authorities. This guarantees the consumer that the good has went to various audits and process and number to tests to prove it authenticity to ensure the desired quality of the product. Food products, electrical appliances, toys have a Certification Mark over them. Example: FSSAI over any packed food essential defines it quality and people do consider buying the product blind eye over the presence of the FSSAI mark.

• SHAPE MARK: When the shape and packaging of the products is unique and has distinctive features can be registered as a trademark. This specific shape of any product helps the consumer to distinguish the product from other manufactures. Since a mere representation of the good in from of the shape or packaging also helps in recognising our preferred brand. Example: the shape of a coca cola or Fanta bottle can easily be distinguished from all other manufacturers on its graphical appearance and thereof. Also many packaging brands prefer different kind of packaging from other brand to stand out of box with other goods are compared to their goods, example; the packing of kinderjoy is different as compared to other chocolate brands and his competitors which makes them look unique and easy to recognize for the consumers.

• SOUND MARK: A sound, tune or melody with a distinctive recognition feature can be registered as a sound mark. Sound mark is most of the times registered as used in advertisement purpose or in commercial ads form. A sound logo is short tune or melody played at the start or in the end of any commercials or method of advertisement. Sound logos are also referred as audio mnemonic. Example; the IPL tune which is played in every IPL match, on hearing the tune it is easy to co-relate the clip being played is of the match or is related to cricket match. Yahoo Yodel was the sound mark to be registered in India under trademark in the August 2008.   

CONCLUSION

For trademarks that are not registered under the act, the ™ symbol can be used to give notice to the consumers and business competitors that trademark rights are claimed in a brand name or under the logo. The ® symbol will not only protect the trademark’s owner against trademark infringement by any person or an entity but also gives an indication that name or logo is registered under the trademark Act, 1999 in India.

Identifying or recognising a trademark on products or services is as simple as finding identifying the name, logo, or symbol that denotes the source of the goods or services on packaging, in advertising, or on a sign. The likelihood that a name, logo, or other symbol is a trademark increases with distinctiveness. Although a trademark need not be identified by any particular words or symbols, certain designations can be used in conjunction with a trademark to show that the provider of the products or services is the proprietor of the trademark.

Author: Vaibhav Ramdas Misal is 4^th year student at Maharashtra National Law University, Aurangabad, in case of any queries please contact/write back to us at via email chhavi@khuranaandkhurana.com &  IIPRD

REFRENCES

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[i] WIPO

https://www.wipo.int/trademarks/en/

Myanmar’s New Trademark Law

Early 2019 witnessed an introduction of a number of Intellectual Property Laws in Myanmar. A new Trademark Law and a new Industrial Design Law were enacted on January 30, 2019. This was followed by the enactments of a new Patent Law on March 11 and Copyright Law on May 24. Among all these new enactments, the Trademark Law is said to have the maximum impact on the investors and entrepreneurs. This is a big step taken by Myanmar to attract foreign investors given the fact that how important intellectual property protection is viewed by the modern world. Myanmar already bears the brunt for being the only ASEAN country that is not a member of the Madrid Protocol. The new Law establishes a new framework for trademark registration and protection in line with other ASEAN countries and international standards.

The new Trademark Law revamps the current trademark registration and protection policy in the country. Below given are the highlights of the Law with respect to the major principles and administrative bodies it establishes:

• For the administration of trademark registration, the new Law establishes the Myanmar Intellectual Property Office (MIPO) under the Ministry of Commerce. The MIPO will have the authority to examine, publish in the journal and handle opposition proceedings of trademarks.
• For implementation and administration of IP related policies, the Central Intellectual Property Committee (CIPC) and the Intellectual Property Agency (IPA) is to be set up under the Law.
• The trademarks registered under the old system are to be re-filled. A “first-to-file” system will be adopted under the new law for trademark registration and protection, unlike the “first-to-use” system followed earlier.
• The new Law recognizes the concepts of “service marks”, “collective marks”, “certification marks”, “trading names” etc. It also protects “famous marks” (also known as well known marks) and “geographical indications”.
• The new Law also contains provisions for cancellation of registration for ‘non-use’. It also provides for invalidation of a trademark on the ground of non-registrability.
• The term for registration under the new Law is ten years from the date of filing the application.

The introduction of these new provisions and administrative bodies need a lot of effort in order to bring about all the changes from the old system to the new system. Furthermore, no procedure has been provided for the re-registration of the marks under the old system. This means that these marks have to be re-filed to the MIPO which will then take on the examination and the subsequent processes. To facilitate this process of implementation of the new Law, two phases have been prescribed, namely; “soft opening period” and “grand opening period”.

The Soft Opening Period

The time period prescribed to soft opening is between 20^th December 2019 and 19^th May 2020. During this phase, the previous trademark owners are required to re-apply for registration in order to continue getting statutory protection. The re-filing is to be done along with the proof of registration under the old framework supported by a Power of Attorney. Experts also advise submitting any document as evidence proving the past use of the trademarks such as invoices, advertisements, catalogs, etc.

The Grand Opening Period

The grand opening period commences after 19^th May 2020. After the commencement, new trademark applications can be filled and all prospective future right holders may file for registration. The previous owners who fail to qualify and register in the “soft opening” phase will be able to apply after the commencement of the “grand opening”.

The administrative procedures and bodies under the new Law are yet to be established properly and will take some time to be in place to function properly. However, in the meantime, while the ‘soft opening phase’ is underway, the previous owners shall collate necessary documents and evidences in order to get a smooth transition of the registration from the old framework to the new framework. The owners shall give utmost importance to collecting and compiling these documents. This will be an advantage to both the owners and the administrative bodies as it will lessen the burden on the bodies when the ‘grand opening’ commences.

Although it is argued that the sudden revamp of the old framework in addition to the lack of any procedure for the trademark owners under the old system to continue getting statutory protection results in a lot of inconveniences, it cannot be denied that the new Law is futuristic, in line with international standards and provides for an effective and dynamic framework for trademark registration and protection. Furthermore, strong protection of intellectual properties like trademark will strengthen the economy by attracting investors and entrepreneurs from the country as well as from abroad which is much needed for a developing economy like Myanmar.

Author:  Aparthiba Debray, student of 4th Year- B.A. LL.B. (Hons.), Institute of Law, Nirma University, 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] Trademark Law, (2019, Pyidaungsu Hluttaw Law No. 3

[2]An Anlaysis of the New Trademark Law 2019, https://www.lincolnmyanmar.com/wp-content/uploads/2019/04/Trademark-Law-2019-analysis-1.pdf.

[3]https://www.worldtrademarkreview.com/anti-counterfeiting/myanmar-trademark-office-opening-backcountrycom-boycott-and-facebook.

Cultural Appropriation and Trademark Law

Kim Kardashian West, the popular American media personality, described by her critics and admirers of being ‘famous for being famous’ was recently in news this June after receiving a wave of backlash on social media against the decision to name her new shapewear line “Kimono” which is also a traditional Japanese robe garment.

The issue is related to Kim’s lingerie brand, KIMONO-a new line of shapewear and the wider problem of fashion’s cultural appropriation. The brand website explains that Kimono is “a new, solution focused approach to shape enhancing underwear” and “fueled by her (Kim’s) passion to create truly considered and

highly technical solutions for everybody”.^[1] The name of the brand is obviously a clever (some would say deliberately inventive) play on words with Kardashian’s first name, but a huge uproar has erupted online with regards to the fact that the brand is named after the traditional Japanese garment, the venerable ‘Kimono’. Following the launch of her brand, Kardashian came under public outrage, both in America and Japan and primarily on social media platforms labelling it as “cultural appropriation” with people expressing their dissatisfaction and disapproval with the fact that the so-called shapewear Kardashian shared in photo promos looks nothing like an actual ‘kimono’ in the first place.

West explained the mark as serving the dual purposes of being a play on her name and showing respect for the Japanese culture. In fact, Kimono is Japanese for a traditional long, baggy garment that has been worn by Japanese women for centuries. Kardashian’s effort caused an uproar among the Japanese community in Japan and here in the United States. The community accused Kardashian of trying to exploit a centuries-old Japanese tradition for commercial gain.^[1]

Although the immediate controversy has now subsided, Kardashian’s truncated effort has renewed debate around the larger issue of “cultural appropriation” and its intersection with trademark law.

The controversy also prompted the mayor of Kyoto, Daisaku Kadokawa, to issue a statement^[1] urging Kardashian to drop the trademark of Kimono for her shapewear brand. In his letter, he wrote, “Kimono is a traditional ethnic dress fostered in our rich nature and history with our predecessors’ tireless endeavors and studies and the same should not be monopolized, He also went on to emphasise that the city is aiding in Japan’s initiatives to get “Kimono Culture” registered to UNESCO’s Intangible Cultural Heritage list because the rich culture and heritage behind the garment shouldn’t be monopolized.

The Trademark Test

Although the original Trademark application has now been voluntarily amended^[1] omitting the terms, ‘Kimonos’ and ‘Robes’ under the Goods and Services category for the word mark, a search on the USPTO website clearly shows the trademark application containing the two generic terms under the ‘KIMONO’ word mark.

In fact, the word ‘kimono’ has been applied and registered 34 times in the USA. In Australia, Hasbro Inc, the large toy company, has registered the word ‘kimono’ for ‘toys and games and dolls in Japanese national dress’. Mayer Laboratories had registered the name ‘kimono’ for contraceptives in 2007. It would seem that Hasbro and Mayer have avoided the accusation of cultural appropriation.^[1] To be valid, a trademark needs to be distinctive enough to perform its dual identifying and distinguishing functions. Trademark law provides three categories of distinctiveness for trademarks: inherently distinctive, descriptive, and generic.

Inherently distinctive marks (fanciful, arbitrary or suggestive) are inherently capable of acting as source identifiers. Descriptive marks, on the other hand, describe an aspect of the good or service they are used to identify. Descriptive marks are only valid if they have “acquired distinctiveness” or “secondary meaning,” meaning that consumers have come to associate the mark with the product or service it identifies. A generic mark refers to “what” the good or service is, and, as such, is not capable of acting as a source identifier for that good or service.^[1]

In India, such an application would be hit by Section 9(1)(b) of The Trade Marks Act, 1999 which provides for Absolute grounds for refusal of registration as the mark consists exclusively of indication and/or characteristic of the good or services, particularly, the word mark. ‘Kimono’ for a traditional ‘Kimono’ dress.

Trademarks and Cultural Appropriation

The phrase ‘cultural appropriation’ is defined by the Oxford Dictionary as “the unacknowledged or inappropriate adoption of the customs, practices, ideas, etc. of one people or society by members of another and typically more dominant people or society.” In the trademark world, culture and trademarks have always had a rocky relationship. Westernized and European-centric designers have historically been accused of stealing traditional designs, music, dances and hair styles for their own use and profit, while the minority groups from whom they took receive little more than an acknowledgement.^[1] Hence, corporations need to be more sensitive and aware than they have ever been when it comes to applying intellectual property (IP) to a print, shape, saying, or concept that is associated with a particular set of values, expression, and/or ethos of a group of people.^[2]

Appropriating ‘cultural’ symbols has been attempted in the past too. In the 90s, India had to fight a dogged battle against some American companies to protect the name ‘Basmati’ rice despite significant claims to GI-tagging. Those American companies in fact managed a trademark on ‘Kasmati’ rice and it took the Indian government a lot of legal expense and cross-country effort to protect its turf. The words ‘khadi’ and ‘yoga’ have seen pitched battles too. German company Khadi Naturprodukte almost managed an EU trademark not too far back on ‘khadi’ and it took a lot of legal wrangling to negate the foreign entity. It would surprise many to know that the US Patent and Trademark office has reportedly issued 150 yoga-related copyrights, 134 trademarks on yoga accessories and 2,315 yoga trademarks.^[3]

Conclusion

The lesson for brand owners, celebrities and entertainers may be that selecting a name derived from another culture involves more than just ascertaining whether it is available and registrable under a country’s Trademark Law. Consideration should be given to cultural sensitivities and the likely reaction in the marketplace to whether the name will be deemed offensive or inappropriate and ultimately bad for business.^[1]

Author: Himanshu Mohan, LL.B. final year student at Campus Law Centre, Faculty of Law, University of Delhi , Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at niharika@khuranaandkhurana.com

References:

[1] https://www.campaignindia.in/article/weekend-blog-kim-kardashian-and-the-kimohno/452920

[2] https://www.ipwatchdog.com/2019/07/31/countering-cultural-appropriation-trademark-laws/id=111746/

[3]https://www.city.kyoto.lg.jp/sankan/cmsfiles/contents/0000254/254139/Letter_from_Mayor_Kadokawa(ENG)rev.pdf

[4] https://tsdr.uspto.gov/documentviewer?caseId=sn88479867&docId=AMC20190628072307#docIndex=1&page=1

[5]http://www.mondaq.com/article.asp?article_id=824932&signup=true

[6] https://www.ipwatchdog.com/2019/07/31/countering-cultural-appropriation-trademark-laws/id=111746/

[7] https://www.jdsupra.com/legalnews/kim-k-s-kimono-a-snapshot-of-cultural-36889/

[8] https://www.trademarknow.com/blog/hands-off-my-heritage-cultural-appropriation-and-trademarks

[9] campaignindia.in/article/weekend-blog-kim-kardashian-and-the-kimohno/452920

[10] https://www.jdsupra.com/legalnews/kim-k-s-kimono-a-snapshot-of-cultural-36889/

Protection of Celebrity Rights/ Personality Rights in India

The Delhi High Court recently passed an order of injunction against Zee Media from using the TV personality Rajat Sharma’s name in any of its advertisements, whether electronic or print. The Court also asked Zee to remove all hoardings bearing Sharma’s name. Thus, by passing such an order, the Court upheld celebrity rights in the country. But what exactly do celebrity rights refer to?
Celebrity rights or Personality rights, as the name suggests, refer to rights associated with the personality of an individual. This is intricately involved with right to privacy and property of a person. This is mostly important to celebrities as their names, photographs or even voices can easily be misused in various advertisements by different companies to boost their sales.
The right of publicity, the term used in the United States, is defined by the International Trademark Association as “a form of intellectual property right that protects against the misappropriation of a person’s name, likeness and perhaps other indicia of personal identity for commercial benefit.” In America, there’s no federal statute recognizing the right of publicity, but majority of the states have a state law for it. In 1977, for the first time, the US Supreme Court heard a case on rights of publicity in Zacchini v. Scripps-Howard Broadcasting Co Justice White, delivering the judgment on behalf of the majority wrote, “Wherever the line in particular situations is to be drawn between media reports that are protected and those that are not, we are quite sure that the First and Fourteenth Amendments do not immunize the media when they broadcast a performer’s entire act without his consent.”
In Europe, “image rights” is the preferred term for such rights. Even though the European Union lacks a unified regulation, most of the countries recognize “image rights” of certain type as a part of the personality rights. But the UK does not have an established right of publicity. It indirectly stems from copyright law, trademark law and the tort of passing off. The tort of passing off covers those cases where one trader misleads the public into believing falsely that the brand being projected is his, when in fact it’s someone else’s.
The scenario in India

Before the Justice K. S. Puttaswamy (Retd.) v. Union of India judgment was passed by the Supreme Court in 2017, personality rights were mostly derived from the common law principle of the tort of “passing off”, just like in the UK. With the 2017 judgment, these rights were elevated to the position of constitutional rights. Justice Sanjay Kishan Kaul gave constitutional legitimacy to these rights by stating:
“Every individual should have a right to be able to exercise control over his/her own life and image as portrayed to the world and to control commercial use of his/her identity. This also means that an individual may be permitted to prevent others from using his image, name and other aspects of his/her personal life and identity for commercial purposes without his/her consent”.
This is not the first time that the right of publicity has been discussed by the Court. There have been several exclusive personality right cases involving various celebrities such as Rajnikanth – Shivaji Rao Gaikwad (aka Rajinikanth) v. Varsha Production wherein the Court rejected the defendant’s plea that plaintiff’s case be dismissed on the grounds that “Personality Right” has no definition and this particular property right is not recognized by any statute in India. The Court stated that “though there is no definition for the personality right under any statute in India, the Courts in India have recognized the personality right in the name, in various judgments.” An injunction was thus passed by the Court against the defendants from using the plaintiff’s name/image/caricature/style of delivering dialogues in their forthcoming project/film. The Court relied upon the famous case of ICC Development (International) Ltd., Vs. Arvee Enterprises and another in which it was held that:

“The right of publicity has evolved from the right of privacy and can inhere only in an individual or in any indicia of an individual’s personality like his name, personality traint, signature, voice, etc., An individual may acquire the right of publicity by virtue of his association with an event, sport, movie, etc. However, that right does not inhere in the event in question, that made the individual famous, nor in the corporation that has brought about the organization of the event. Any effort to take away the right of publicity from the individuals, to the organiser (non-human entity) of the event would be violative of Articles 19 and 21 of the Constitution of India. No persona can be monopolised. The right of Publicity vests in an individual and he alone is entitled to profit from it.”
The Court further relied upon the famous Titan Industries5 case, in which it was observed that “No one was free to trade on another’s name or appearance and claim immunity.” The Titan Industries case also laid down the famous test for determining the liability for infringement of the right of publicity:
“Validity: The plaintiff owns an enforceable right in the identity or persona of a human being.

Identifiability: The Celebrity must be identifiable from defendant‟s unauthorized use Infringement of right of publicity requires no proof of falsity, confusion, or deception, especially when the celebrity is identifiable. The right of publicity extends beyond the traditional limits of false advertising laws.“
The latest case of Rajat Sharma also relied upon this case, along with the case of Rajnikanth, to pass its injunction order.
Therefore, even though there’s no statute in India regarding Personality Right, the intention of the Court has been to recognize and protect these rights. Perhaps, the first time this was recognized by the Court was in the guise of right of privacy in R Raja Gopal v State of Tamil Nadu. Here the Court noted that the right of privacy has two aspects:
“1) the general law of privacy which affords a tort action for damages resulting from an unlawful invasion of privacy and
(2) the constitutional recognition given to the right to privacy which protects personal privacy against unlawful governmental invasion.”

Conclusion

Over the years, many celebrities like Daler Mehndi, Sridevi, Sonu Nigam, Cyrus Mistry, Arun Jaitely and as we have seen above, Rajnikanth have been involved in cases related to celebrity rights. With the discussion around Article 21 of the Constitution in Justice K. S. Puttaswamy (Retd.) v. Union of India, it can be assumed that right to publicity has been accorded a constitutional status. But since the case actually didn’t revolve around the issue of celebrity rights, this can be ignored by the lower courts as simply obiter. Still, the jurisprudence of this offshoot of the Intellectual Property rights is at a nascent stage. Even judicial interpretations have been limited regarding this evolving field of IPR. The latest case of Rajat Sharma, though applies the principles evolved over the years correctly, but still fails to elaborate this unique field of Intellectual Property Rights.

Author: Mudita Gairola , LLB with IP Hons Rajiv Gandhi School of IP Law IIT Kharagpur , Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

References:

[1] Zacchini v. Scripps-Howard Broadcasting Co 433 US 562 (1977)

[2] Justice K. S. Puttaswamy (Retd.) v. Union of India Writ Petition (Civil) No. 494 of 2012 (Sup. Ct. India Aug. 24, 2017)

[3] Shivaji Rao Gaikwad (aka Rajinikanth) v. Varsha Production 2015 (62) PTC 351 (Madras)

[4] ICC Development (International) Ltd., Vs. Arvee Enterprises and another 2003 (26) PTC 245

[5] TITAN Industries vs. M/s Ramkumar Jewellers 2012 (50) PTC 486 (Del)

[6] R RajaGopal v State of Tamil Nadu 1995 AIR 264

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

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

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

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

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

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

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

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

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

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

References:

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

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

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

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

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

A Reminder for Online Retailers

Here’s one case that involves an online retailing businesses that is having a link with Trade mark Law – Jadebay Ltd and others v Clarke-Coles Ltd (t/a Feel Good UK) [2017] EWHC 1400 (IPEC).

However, overlooking the customary practice of online retailing methods, the Intellectual Property Enterprise Court followed the theoretical root of the Trade mark laws and over-turned such practices by upholding that‘re-use of a third party’s Amazon listing without consent to sell the same goods may, on appropriate facts, amount to trade mark infringement or passing off.

The factual matrix of this case lies as below:

In this matter there were two claimant, the first one was the statutory and common law owner of the Trade mark ‘Design Elements’ for the purpose of  “flagpoles plastic storage box garden furniture”, while the second Claimant was the sole licensee since 2011 to sell the products of the first claimant.  These products were also sold through online shopping portal namely – www.amazon.co.uk, via three listings created by the second claimant.

Usually, the common practice while listing products for sale on Amazon or any such kind of online portals are that each new listing is given a Unique Amazon Identification Number (ASIN). It is pertinent to note that an Amazon listing created by one party can be used by multiple sellers selling common product. Amazon then tends to promote the cheapest of the offerings by selecting them as the default seller, allowing consumers to review each listing in more detail.

Thus, in this case, the issue arose when the defendant listed its product under the listing created by the claimants, with a low price due to which they appeared as the default seller, attracting majority of sales from the said listing.

Interesting fact about this case is, that the claimants sued the defendants for trade mark infringement and passing off and did not even involve Amazon, who encourages sellers to use pre-existing generic ASINs where possible.

Arguments

The claimant focussed on the basic concept of rights of trademark. Firstly, the owner of the trademark has the right to prevent the third party from commercially using any sign (without the permission of the TM owner) that is ‘identical to the trade mark in respect of goods or services which are identical to those for which the mark is registered (double identity) (section 10 (1), Trade Marks Act 1994) (TMA) (section 10(1))’ or ‘ by such use of trademark that causes a likelihood of confusion or association on the part of the public (section 10(2)(b), TMA) (section 10(2)(b)).”

Secondly, the law of passing off a trade mark, which is considered as an element of Tort, the essential feature that is considered to attract this tort is the goodwill attached to the trade mark, such misrepresentation leads to likelihood of confusion among consumers due to which the claimant suffer damage as mention in the case of Reckitt & Coleman Products Ltd v Borden Inc [1990] RPC 341.

However, the defendant relied on the generality of the Amazon listing number. They claimed that since the listing was generic and did not refer to a specific brand, it could list its product under the same listing and that the brands of the competing products were significantly different as the defendant’s brand was “Feel Good UK”.

However, the claimant argued that due to the use of the same listing number namely “20ft aluminium flagpole “by Design Elements”, any consumer can link the defendant’s product as that of the claimant’s product.The defendants should have sold their products through another Unique Identity ASIN number.

The question was not whether the Defendant attached the sign or trade mark to the product or packaging itself, but whether the use of the listing in this way infringed (and/or passed off) the Claimants’ rights.

Judgement

The Intellectual Property Enterprise Court  accepted the claimant’s argument and  further observed that by having the same listing number and linking one’s goods to a competitor’s branded product listing would undoubtedly cause a misrepresentation and confusion among the consumers leading to Trademark infringement and passing off.

Conclusion

The present case has shown the online businesses a reality that the presence of Trade mark law is every where. It is another reminder that these businesses should consider their online marketing very carefully. Attaching products to an existing Amazon listing when the products are clearly not the same could potentially be an infringing act.  Moreover, as per the Objective of Trade Mark law, that is to avoid confusion in the market place, the decision of the court was not strange and perhaps was very apt.

Author: Ms. Pratistha Sinha, Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at anirudh@khuranaandkhurana.com.

References:

[1] https://www.lexology.com/library/detail.aspx?g=55745fd6-0397-4222-9d31-a3b3a8447e19

[2] https://www.rpc.co.uk/perspectives/ip/flagging-the-risk-of-a-new-type-of-trade-mark-infringement

MYANMAR: NEW TRADEMARK LAW EXPECTED TO BE ENACTED IN 2017

For the past few years, the nation of Myanmar has been proactively working on the implementation of its first ever formal trademark law, keeping in mind that the new law will overhaul the nation’s legal framework to encourage and motivate the industries and businesses to come and invest and grow in the country [1].

The implementation of this new Trademark law has been projected for this year. Hopefully once this new trademark law becomes effective, the practices which are currently followed by the practitioners i.e. the registration of Declarations of Ownership at the Registrar of Deeds and Assurances, which is followed by the cautionary notices published in the newspaper, will then be replaced by the new modern Trademark system which will stick to International standards set by WIPO.

The new Trademark law will prove to be greatly beneficial to the brand owners and businesses as the new law will bring proper clarification to the whole trademark application process. Since the Myanmar market is on an economic rise, the new trademark law, once implemented, will be a welcome move for the businesses and their brands, thereby encouraging further growth and prosperity of their brands in Myanmar.

The New Trademark System

The new Trademark Law will be based on the first-to-file principle. The new law will have the following features:

1. The new Trademark law will include following marks which can be protected [2]:

• Smell and touch signs,
• Visual marks, and
• Perceivable sound.

The above mentioned marks are categorized further into service, trade, collective marks, and certification. Registration as a group/collection of marks will also be allowed.

2. The new law will allow both domestic and global/foreign brand owners to apply for registration of trademarks in Myanmar. Having said that, the global/foreign applicants will have to appoint an authorized agent and this agent must be domiciled in Myanmar [2]. This agent will then represent these foreign mark owners at the Myanmar Intellectual Property Office on their behalf.

The new Trademark law will allow the trademark applications to claim priority from foreign applications/registrations.

3. The registration process under the new trademark law will include [2]:

• Filing of an application (where, the application must be either filed in either English or Burmese and must have a Declaration of Intention to Use)
• Substantive examination and other formalities
• Publication for opposition and
• Issuance of certificate.

4. The validity duration of the registered trademarks will be 10 years from the effective filing date and after each renewal will extend the validity by 10 years [2].
5. The new Trademark law will also have a provision for submitting a request for a non-use cancellation against those registered trademark which are not in use for a period of 3 consecutive years [2].
6. The new Myanmar Intellectual Property (IP) office will be created [1] to look after the operations in the new Trademark law. Additionally, new Intellectual Property Courts specialized in handling trademark litigations will be established.
7. Enforcement:

The new Trademark law will have both civil as well as criminal liabilities for potential infringements in Myanmar.Such liabilities as far as Trademark infringement in Myanmar is concerned will have a criminal offence punishable by maximum up to 3 years of imprisonment or fines or both [3].

Another feature which is a welcome move is the possibility that a trademark owner can enforce its rights through customs. In other words, with enough reasons for alleged import, export or transit of infringing goods into, out of or via the country, the trademark mark owners will be allowed to apply to the Department of Customs for a detention or suspension order.

8. Transition from the current to new trademark law

All those owners who have their trademarks registered under the current trademark law will be required to, within the period of three years, re-register under the new law [4].

About the Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

References

[1] http://www.wipo.int/edocs/mdocs/aspac/en/wipo_tm_tyo_2_16/wipo_tm_tyo_2_16_3_4.pdf

[2] http://dbav.org.vn/trademark-protection-in-myanmar-and-the-new-draft-trade-mark-law/

[3] www.wipo.int/ip-development/en/pdf/asean/myanmar.pdf

[4] Griffiths, AJ Park -Amanda. “New Trade Mark Laws for Myanmar Coming in 2017.”Lexology.Lexology, n.d.