ODISHA COURT ADMITTED CASE AGAINST AAMIR KHAN PRODUCTION’S PROPOSED ‘SATYAMEV JAYATE’ USE AS TRADE MARK

As per the sources, the court in the Odisha capital, Bhuvaneshwar has admitted a petition challenging Aamir Khan Production’s plans to use ‘Satyamev Jayate’, the national motto of India, as a business brand under which it is proposed to sell everything from kitchen utensils to footwear.

A city based journalist and social activist, Dr. Subash Mohapatra has filed case against Amir Khan Productions challenging the trade mark ‘Satyamev Jayate’ which is in public domain and thus cannot be monopolised in respect of any goods and services. The SDJM court, Bhubaneswar has admitted the case filed.

The petitioner has claimed that Aamir Khan Production in the year 2012 has filed various trademark applications at Trade Marks Registry Mumbai for exclusive rights to use the term ‘Satyamev Jayate’ as trade mark for goods and services under various classes not only in respect of the television show but also for the goods from kitchen utensils to footwear. These trademark applications are pending with the Trade Mark Registry and were objected on the ground of non distinctiveness.

The petitioner contended that the Bollywood superstar was seeking to exclusively use ‘Satyamev Jayate’ for commercial purpose, which is the most important feature of India’s Constitution and was adopted as the national motto after prolonged debate in the Constituent Assembly.

It is also contended in the petition that the word “Satyamev Jayate” is exclusively property of all citizens of India having authority under the Government of India. It is a symbol of nation and offices in India, the President of India, Judiciary and Executives, also of the Constitution. The people of India glorify and feel proud for that particular word as it enshrines the national sentiment, identity, symbol, faith and culture. So, Satyamev Jayate cannot be property of any private individual person for his personal benefit and interest.

The petitioner also claimed that ‘Aamir Khan already being conferred with the coveted civilian award of Padma Bhushan, was able to influence officials of the Mumbai Trademark Office into granting him two stages of clearance to his proposal, which he said amounts to ‘waging war’ against the country and its Constitution’.

However the question which intrigue our mind is that whether the registration of the term ‘Satyamev Jayate’ is prohibited under section  9(2) (d) which provides that a mark shall not be registered if it is prohibited by the Emblems and Names (Prevention of Improper use) Act, 1950. In order to find the applicability of Section 9 (2) (d) of Trade Mark Act, 1999, it is necessary to determine whether the term ‘Satyamev Jayate’ is an integral part of the National Emblem and if dissected from the Abacus can be referred to as National Emblem as per the Emblems and Names (Prevention of Improper use) Act, 1950. However the State Emblem Of India (Prohibition Of Improper Use) Act, 2005 provides that the motto “Satyameva Jayate”-Truth alone triumphs-written in Devanagari script below the profile of the Lion Capital is part of the State Emblem of India.

Thus it will be interesting to note the Court’s decision in this case that whether the Aamir Khan Production will be able to get the Trade Mark over the term ‘Satyamev Jayate’ without the Central Government’s prior approval or it will be injunct to obtain Trade mark registration over the term ‘Satyamev Jayate’ being the integral part of the National Emblem and its use is prevented by couple of legislations.

News Source: http://odishasuntimes.com

About the Author: Mr Abhijeet Deshmukh, Trademark Attorney at Khurana and Khurana and can be reached at: Abhijeet@khuranaandkhurana.com.

Understanding ITC Litigation (Section 337 Cases)

Having seen regular and growing number of queries from Indian Companies on U.S. International Trade Commission (ITC) cases in the US (primarily companies having domestic market in the US), this is a brief attempt to give clarity on jurisdiction that ITC provides, types of cases handled, advantages/disadvantages of the ITC routes, among few other characteristics of the cases filed.

Introduction:

U.S. International Trade Commission (ITC) has, in the last few years, become a key destination for both Domestic and Foreign IP litigants for different types of Trade Disputes. ITC, in essence, is basically an independent, quasi- judicial Federal agency with broad investigative responsibilities on matters of trade. ITC is enabled to investigate effects of dumped and subsidized imports on domestic industries and conduct global safeguard investigations. The Commission is also involved in adjudicating cases involving imports that allegedly infringe intellectual property rights. The Commission also serves as a Federal resource where trade data and other trade policy-related information are gathered and analyzed for development of sound and informed U.S. trade policy. The Commission makes most of its information and analysis available to the public to promote understanding of international trade issues.

Basic functions of ITC can be viewed here. ITC therefore, not only focuses on IP issues, but handles and has jurisdiction over any action that is to be taken by an appropriately hurt entity on issues relating to import injury, handling Freedom of Information Act Requests (FIAR), customs, Antidumping and Countervailing Duties (AD/CVD), among other like matters. However, ITC is best known for its IP practice, wherein, Section 337 investigations conducted by the U.S. International Trade Commission often involve claims regarding intellectual property rights, including allegations of patent infringement and/or trademark infringement by imported goods, which may lead to unfair practices in import trade. Both utility and design patents, as well as registered and common law trademarks, may be asserted in these investigations. Other forms of unfair competition involving imported products, such as infringement of registered copyrights, mask works or boat hull designs, misappropriation of trade secrets or trade dress, passing off, and false advertising, may also be asserted. In addition, antitrust claims relating to imported goods may also be asserted.

337 Investigations:

A primary remedy available in Section 337 investigations is an exclusion order that directs Customs to stop infringing imports from entering the United States. In addition, the Commission may issue cease and desist orders against named importers and other persons engaged in unfair acts that violate Section 337. Expedited relief in the form of temporary exclusion orders and temporary cease and desist orders may also be available in certain exceptional circumstances. Section 337 investigations, which are conducted pursuant to 19 U.S.C. § 1337 and the Administrative Procedure Act, include trial proceedings before administrative law judges and review by the Commission.

Many of the highest profile, multi-forum IP disputes now include proceedings before the ITC. Since ITC cases go to trial faster than almost any forum in the world, they can be the first to be resolved in these multi-forum disputes and often spearhead resolution of the other cases. Most ITC disputes, as can be seen here, are Patent Infringement Suits filed by Patent holders who must prove that it has a domestic industry with respect to the patent in order to be entitled to relief, against foreign companies that are exporting/ attempting to export potentially patent infringing products to the US. Apart from patent infringement suits, other subject matters relating to, but not limited to, copyright infringement, mask work infringement, misappropriation of trade secrets, passing off, false advertising, and potentially even violations of the antitrust laws may also be asserted under Section 337. However, most of this instant article pertains to allegations being made in context of patent infringements.

Procedure:

As a procedure, following the key steps taken during the case till the same is disposed off:

1. Section 337 investigations are initiated by the Commission following the receipt of a properly filed complaint that complies with the Commission’s Rules.3A Commission notice announcing the institution of an investigation is published in the Federal Register whenever the Commission votes to institute a Section 337 investigation.

2. When an investigation is instituted, the Chief Administrative Law Judge at the Commission assigns an Administrative Law Judge to preside over the proceedings and to render an initial decision (referred to as an “Initial Determination”) as to whether Section 337 has been violated. The Commission also assigns an investigative attorney from the Commission’s Office of Unfair Import Investigations (“OUII”), who functions as an independent litigant representing the public interest in the investigation.

3. In the notice announcing initiation of an investigation, the Commission identifies entities that may participate in the investigation as parties, namely, the complainant(s) that allege a violation of Section 337, respondent(s) that are alleged to have violated Section 337, and the Investigative Attorney.

4. Section 337 investigations are conducted in accordance with procedural rules that are similar in many respects to the Federal Rules of Civil Procedure. These Commission procedural rules (found in 19 C.F.R. Part 210) are typically supplemented by a set of Ground Rules issued by the presiding Administrative Law Judge. The procedural rules and Administrative Law Judge’s Ground Rules provide important instructions and details regarding such matters as the taking of discovery and the handling of motions.

5. A formal evidentiary hearing on merits of a Section 337 case is conducted by the presiding Administrative Law Judge, giving parties the right of adequate notice, cross-examination, presentation of evidence, objection, motion, argument, and other rights essential to a fair hearing.

6. Following a hearing on the merits of the case, the Administrative Law Judge issues an Initial Determination (“ID”) that is certified to the Commission along with evidentiary record. Commission may review and adopt, modify, or reverse the ID or it may decide not to review the ID. If the Commission declines to review an ID, the ID becomes the final determination of the Commission.

7. In the event that the Commission determines that Section 337 has been violated, the Commission may issue an exclusion order barring the products at issue from entry into the United States, as well as a “cease and desist” order directing the violating parties to cease certain actions. The Commission’s exclusion orders are enforced by U.S. Customs and Border Protection. Commission orders become effective within 60 days of issuance unless disapproved by the President for policy reasons.

8. All appeals of Commission orders entered in Section 337 investigations are heard by the U.S. Court of Appeals for the Federal Circuit.

Owing to extremely pressing and short time durations between activities relating to cross-examination, presentation of evidence, objection, motion, arguments, litigating in the ITC enables an efficient resolution in a short period of time, and in a pressure-packed forum that can make or break the commercial success of the products at issue, wherein the entire case, starting from the complaint, to discovery, pretrial hearings, trial, post-trial briefs, to subsequent review by the Commission, typically happens within about 18 months.

Other pointers:

1. Remedies: Unlike in federal district court litigation, ITC does not enable money damages as a remedy and the commission has authority to issue only two types of remedial orders: (1) limited or general exclusion orders and (2) cease and desist orders. Exclusion orders can include Limited Exclusion Order (LEO) that direct the U.S. Customs and Border Protection (CBP) to exclude all infringing articles imported by parties found by the commission to have violated Section 337, whereas a General Exclusion Order (GEO) directs CBP to exclude infringing goods from the United States, regardless of whether the persons importing those goods were parties to the investigation that led to the issuance of the GEO.

2. Jurisdiction: ITC possesses authority to investigate whether certain allegedly imported and infringing articles should be allowed into US and to provide appropriate remedial relief, if necessary. In sum, the commission has in rem jurisdiction over imported goods rather than in personam jurisdiction over the parties who import those goods and the commission’s remedial orders can reach the products of parties over whom a district court may not have personal jurisdiction.

3. Subject Matter Jurisdiction: ITC can only try cases wherein the complainant proves to the satisfaction of the ITC, that there has been importation into the United States, sale for importation, or sale within the United States after importation by the owner, importer, or consignee, of articles that infringe a U.S. patent. A second requirement is that a complainant must allege and establish the existence of a protectable domestic industry. For instance, in patent-based investigations, violation of Section 337 can be found “only if an industry in the United States, relating to the articles protected by the patent concerned, exists or is in the process of being established.”

 Exemplary Cases

1. In Dec, 2010, Motorola Mobility brought a patent infringement case at ITC against Microsoft concerning five of Motorola Mobility’s patents. Of the five, the claims were brought down to just one patent, namely U.S. Patent No. 6,069,896, which specifies a peer-to-peer wireless invention. The dispute was actually between Google and Microsoft, since Google bought Motorola Mobility about a year ago, largely to boost its patent holdings. Concerned patented technology uses Microsoft’s Xbox gaming consoles, wherein the Commissioners at the U.S. ITC refused an appeal by Motorola Mobility to examine findings of ITC Administrative Law Judge David P. Shaw that were determined in March, 2013. Shaw found that Microsoft did not infringe a single patent held by Motorola Mobility. Six Commissioners at the ITC agreed with the administrative law judge’s initial determination, including that “Motorola failed to establish indirect infringement on the merits.” They concluded that the investigation was now “terminated” in a notice, which can be accessed here.

2. In June 2013, ITC cleared video-streaming site Netflix of infringing four patents owned by digital entertainment company Rovi. In its preliminary order, administrative law judge, David Shaw, rejected Rovi’s infringement claims covering interactive television programme guides. One patent was found invalid. The complaint was filed in April 2010, targeting Netflix and consumer electronics companies Roku, LG Electronics, Mitsubishi and Vizio. Roku, which is the only one of those not to strike a licensing deal with Rovi, was cleared by the ITC on June 7 2013 of infringing one The asserted patents mainly cover the ability to customise the display of TV programmes, such as recommending shows based on customer preferences. Several claims within one patent – “Interactive computer system for providing television schedule information” – were found invalid on the grounds of anticipation and obviousness.

In sum, the speedy and specialized nature of ITC forum makes the commission an attractive proposition for getting relief, without factoring into issues such as equitable balance, counterclaims, inordinate costs (although ITC has short-term high costs), which are typical in federal district courts.

About the Author:Sheetal Tiwari, Trademark Attorney, at Khurana & Khurana, IP Attorneys and can be reached at sheetal@khuranaandkhurana.com

Ayur- Generic Term or not?

India is the home to the science of Ayurveda. Recently, the question whether ‘Ayur’ could be monopolized as a trademark was sought to be answered in an order passed by the Intellectual Property Appellate Board.

Alex Hotels and Resorts, Bangalore have been using the mark ‘Ayurtheeram’ since 01/06/2005 and were granted registration for the said mark under Application no. 1384396 in the Indian Trade Marks Registry. Three-N-Products (P) Ltd., was granted registration of the mark ‘Ayur’ for their products which mainly consisted of hair,skin and face care  products. Their brand ‘Ayur’ was in business since 1984 and had manufactured almost 155 variants in their products. Three-N-Products filed an appeal in the IPAB against the registration of the mark ‘Ayurtheeram’ used by Alex  Hotels and Resorts claiming that it was an dishonest adoption of the mark and they intended to trade upon their goodwill and reputation.

The appellants (Three-N-Products) launched their brand ‘Ayur’ for mainly hair, skin and face care products.  They were in business since 1984 and had manufactured almost 155 variants in their products. They also had foreign registrations, copyright registrations and since they were using the mark continuously and extensively, there was a possibility of confusion and deception caused for the appellant’s mark ‘Ayur’ and the respondent’s mark ‘Ayurtheeram’.  Moreover, the Learned Registrar did not consider the fact that the appellants have been using the mark earlier than the respondents and the explanation of the adoption of the mark by the respondents has also not been clearly explained. Further, the appellants also had hotels registered in class 42 and a mark ‘Ayurgram’ which has been registered from 2003.

The respondents, on the other hand, contended that they have been using the mark since 2005 for their hotels. They stated that they have coined the word from ‘Ayu’ which means ‘life’ and ‘Theeram’ which means ‘land’. Further, they stated that ‘Ayur’ is a generic term and the appellants cannot have monopoly over it.  It was adopted in a bona fide manner and the fact that it was in conjunction with another word, strengthens their bona fide use.  The State also honoured them with the Green Leaf classification which makes it well known in the state.

The main question arose whether ‘Ayur’ could be monopolized as a trademark or not.

The IPAB held that the word ‘Ayur’ or ‘Ayu’ cannot be said to be an invented word since it directly denotes the science of Ayurveda. They rejected the contention of the appellants that the word ‘Ayur’ should be used only by them and no other. They further held hat ‘Ayur’ and ‘Ayurtheeram’ were not at all identical or deceptively similar. Further, the ‘Green Leaf’ classification which was granted to the respondent showed their enhanced reputation in their state. The word was associated in the public consciousness with ‘Ayurveda’ and ‘healthy life’, hence no one could appropriate it to oneself. The order further directed for the removal of the word ‘Ayur’ and its other variants which was registered in the name of Three-N-Products, from the Trade Marks registry.

It’s a short story cut even shorter but is indeed embarrassing that Three-N-Products lost their own Trade Mark while trying to seize another’s Trade Mark.

About the Author: Ms. Madhuri Iyer, Trade Mark Associate at Khurana & Khurana and can be reached at: Madhuri@khuranaandkhurana.com

Passing Off Action by Mid-Size Foreign Companies Having Unregistered Marks in India

There are often cases that we undertake for representation, wherein the cases relate to enforcement of trademarks by/of mid-sized foreign corporations that have not been filed and/or used in India against Indian companies that have deceptively used their marks thereby constituting misrepresentation, which might amount to passing off. Rupkatha and Poorva, interns at Khurana & Khurana, look at some of these cases and try to identify certain parameters based on which the mid-sized foreign companies can protect their interest.

Perry v. Truefitt[1], the English case where the tort of passing off was first articulated had clearly pointed out that “a man is not to sell his own goods under the pretence that they are the goods of another trader.”  The House of Lords further laid down the essential elements of passing off in Reckitt & Colman Ltd v Borden Inc [2] as:

• The existence of claimant’s goodwill
• Misrepresentation
• Damage or likely damage

Section 27(2) of the Trade Marks Act, 1999 authorizes any trader to institute passing off action against another in spite of the fact that his mark is unregistered. The Hon’ble Supreme Court of India has laid down three elements that need to be fulfilled in order to institute a passing off action by the plaintiff in Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.[3]:

• The defendant must have sold its goods or offered its services in a manner which has deceived or would be likely to deceive the public into thinking that the defendant’s goods or services are the plaintiffs.
• The likelihood of confusion in the minds of the public that the goods or services offered by the defendant are the goods or the services of the plaintiff.
• The likelihood of confusion in the minds of the public that the goods or services offered by the defendant are the goods or the services of the plaintiff.

Unregistered Marks of Foreign Companies

Section 18 of the Act allows foreign nationals to register their mark in India. Once a mark is registered, the company can take action for infringement against any person who tries to do so. The problem arises when the mark is unregistered. Is there any remedy for the company in such a situation? Or will it remain at the receiving end?

The Indian judiciary has played its role of filling up the gap in the law in such situations. Time and again it has granted relief to foreign companies who are yet to register their marks in India even though the defendant had registered its mark. In N.R Dongre v. Whirlpool Corporation[4], injunction was granted in favour of Whirlpool Corporation based on the fact that although their mark was not renewed, they had gained enough goodwill and reputation in the Indian market which was being wrongly used by the defendant.

The general trend has been to grant relief only to multinational corporations who have a good market in India or who are big names in the international arena. The Hon’ble Bombay High Court in Centrol Industrial Alliance Ltd. versus Gillette U.K. Ltd.[5], the Hon’ble Delhi High Court in Jolen Inc. vs Doctor & Company[6] and Indian Shaving Products Ltd. v. Gift Pack[7] and several other High Courts have held that in order to get injunction in favour of a foreign company with an un-registered trademark, goodwill in the Indian market is an essential pre-requisite.

The problem then arises with the mid-sized companies. There are about 40 marks in the latest trademark journal published by the Controller General of Patents, Designs and Trademark which are deceptively similar or rather have been ‘copied’ from the trademark of some foreign company, big or small. Till now, the trend has been to provide no relief to companies having without any trans-border reputation. The Intellectual Property Appellate Board rejected the opposition posed by the appellant in Kraft Jacobs Sucharc Ltd. v.  Government of India by Secretary[8] on the ground that the opponent did not have any presence in the Indian market and did not intend to come to do business here in the near future.

The road ahead

The Court has definitely observed in the Jolen Inc. case[9] “even if it is assumed that such advertisements or marks do not travel beyond the borders of the countries where the plaintiff has the business, still it has a right to protect its reputation and goodwill. It is more so where the trade name has been pirated in totality and not by way of having deceptive or confusing similarity.” The Supreme Court in Milment Oftho Industries & Ors. v. Allergan Inc.[10]  held that non-use in India would be irrelevant if the plaintiff was the first in the world market. However, the decision carried a word of caution that foreign brand owners who have no intention of coming to or introducing their product in India will not be allowed to stifle an Indian company by not permitting it to sell a product in India, if the Indian company has genuinely adopted the mark.

Therefore, if it can be shown that the defendant had adopted the complete mark knowing very well that another company of some other country has already adopted that mark, then mala fide on part of the Indian company can be argued.

Now, the Indian courts have been conservative in their approach and constantly relied upon the circulation of magazines, journals and extent of Indian travellers going abroad while deciding these types of cases. This approach is outdated in the light of modern means of exchanging information. The internet, for example, provides a global forum for any product manufactured in one country. Thus, when an Indian company launches a website bearing the trademark of some foreign company, it becomes easier to hold it liable. The Internet Corporation for Assigned Names and Numbers (ICANN) manages the top-level development and architecture of the internet domain name space. It authorizes domain name registrars through which domain names can be registered and re-assigned. Thus, any person who seeks to register a domain name is informed about the availability of that domain name. Rule 2 of the Uniform Domain Name Dispute Resolution Policy[11] requires an applicant to determine that the domain name for which registration is sought does not infringe or violate another’s rights. Thus, if the proposed domain name violates another person’s trademark rights, it will violate Rule 2 of the policy. In such eventuality, the registrar can refuse to register the domain name. Thus, a domain name that is properly registered under international requirements is still subject to the Trademarks Act if a rights owner successfully proves that it has rights flowing from the act.

It was held in the celebrated UK case of Marks and Spencer’s v. One in a Million[12] that any person who deliberately registers a domain name on account of its similarity to the name, brand name or trademark of an unconnected commercial organization must expect to find himself on the receiving end of an injunction to restrain the threat of passing off. This was reiterated by the Delhi High Court in Yahoo!, Inc. v.  Akash Arora[13]. After the celebrated case of Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.[14], there is no doubt that internet domain names are subject to the legal norms applicable to trademarks.

Conclusion

A person who has directly copied the trademark of a foreign company having a proper accessible website and trading in the same goods and services, cannot take the plea that he was not aware of his opponent’s presence in the market. Further, it is strongly recommended that the plight of the mid-sized companies be addressed soon and internet as an advertising and communicating forum gets acknowledged. After all, this is a wrong committed by the Indian company and thus a remedy must be sort out.

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[1] (1842) 6 Beav. 66

[2] [1990] 1 All E.R. 873

[3] 2004(6) SCC 145

[4] 1996(5) SCC 714

[5] 1998 PTC (18) (DB)

[6]  2002 (25) PTC 29 (Del.)

[7] [1998] PTC 698 (Del)

[8] 2004 (29) PTC 376 IPAB

[9] Supra n6

[10] 2004 (28) PTC 585 (SC)

[11] It is a process established by ICANN for the resolution of disputes regarding the registration of internet domain names. It currently applies to all .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net,.org, .pro, .tel and .travel top-level domains,and some country code top-level domains. Refer to http://www.icann.org/en/help/dndr/udrp

[12] 1998 FSR 265

[13] 78 (1999) DLT 285

[14] AIR 2004 SC 3540

Gucci vs. Guess

Copying has become quite common in today’s times, and especially when a lower priced product or a small company imitates an expensive brand. However, a trademark infringement fight between two top most fashion brands is not something that we usually see.

Back in 2009, Gucci sued Guess for trademark infringement over the stylized initial “G”. The proceedings of the case started before the US district court in Manhattan on Thursday (5’th April 2012) after 3 years and is expected to remain in federal court for weeks. This lawsuit is the biggest fashion fight of its kind since Christian Louboutin sued Yves Saint Laurent over his trademarked red soles. “Gucci” is a registered trademark since 1969 and the brand was first used in 1953.  Guess has been accused of specifically ripping off four designs: Gucci’s green and red stripe; the interlocking “G” pattern; the square “G” and the brand name’s delicate script font.  Gucci has been in apparel business for more than 40 years and extremely popular and one of the most luxurious brands all over the world. Here in this case, the plaintiff does not need to prove the well-known stature of the trademark and any kind of dilution of the trademark Gucci will affect its brand value.

Since Gucci is such an established name, it is fair to assume that people are likely to get confused over the logo “G”. When a prudent person looks at a product from both the two brands with their respective logo on it, it’s difficult to differentiate between the two. The most important argument and allegation in this case is that Guess has blatantly copied the shoe design from Gucci and here in this case Guess could be in trouble.  There is a likelihood of confusion and dilution of the trade mark Gucci and it can be assumed that Guess has designed or copied the logo and design of Gucci to confuse the consumers.

However, the CEO of Guess Inc.  claims that Gucci has taken too long to file a law suit. The counsel for Guess claimed that Gucci cannot claim infringement because the company “sat on its rights” for at least seven years before deciding to sue.

According to Bloomberg Business week reports, Gucci has claimed $124 million in damages for $221 million worth of Guess product infringements.

It’s a battle of two heavyweight designer luxury companies and it’s interesting to know that now companies are ready to spend millions of Dollar in litigation to protect their Trade Marks. It will be interesting to read the final outcome of the case and what the Hon’ble US court decides in this matter. Meanwhile, one can check the design of both the shoes and decide how much similarity is there.

 

 

 

 

 

 

Image Source: http://www.telegraph.uk

About the Author: Mr. Kumar Janmejay, Trade Mark Attorney at Khurana & Khurana and can be reached at: Kumar@khuranaandkhurana.com