Tag Archives: trademark

Bigtree Entertainment Pvt. Ltd. vs. Brain Seed Sportainment Pvt. Ltd. & Anr

 

“A brainy person does not abuse copyright; instead he respects it and upholds it.” – Maximillian Degenerez.

Introduction

With the rise in number of businesses using the global internet portal for running their businesses and with the increase in the number of start-ups in the current economic scenario, we come across many new issues that have to be dealt with in depth and have to be decided accordingly keeping in mind the far-fetched affect it would have on the domain of intellectual property right. On one such latest instance was a question posed before the High Court of Delhi when it to deal the process to determine whether a phrase is invented or descriptive. Through this article, the author would be discussing one of the latest judgments pronounced by the High Court of Delhi (hereafter, the “Court”)in the matter of Bigtree Entertainment Pvt. Ltd. vs. Brain Seed Sportainment Pvt. Ltd. &Anr.[1]

Brief Facts

Brief facts of the case are that Bigtree Entertainment Pvt. Ltd. (hereafter, the “Plaintiff”) operates an online ticketing platform for booking tickets for movies and entertainment related events through its web portal popularly known as “bookmyshow”, for which the Plaintiff has a secured registration of the marks and logos under class 41 (education, entertainment and training)[2] and class 42 (technology and software services)[3] as “bookmyshow”. The Plaintiff had at present applied for the registration of the mark “bookmy”, which does not separately possess any trademarks of over that terms.

However, the case of the Plaintiff was that the defendant in the present case, Brain Seed Sportainment Pvt. Ltd. (hereafter, the “Defendant”) operates a web portal, namely, ‘http://www.bookmyshow.com’, an online portal for booking sporting events, venues and other sporting facilities. The suit was filed by the Plaintiff claiming an infringing off and passing off the Plaintiff’s registered trademark by the Defendant of using the term “bookmy” in the Defendant’s mark which is deceptively similar to its own, and that it is apprehended by the Plaintiff that the Defendant would mislead the consumers into associating itself with the Plaintiff’s goodwill and mass connection that the Plaintiff’s trademark has with its consumers. In particular, the Plaintiff claimed that the usage of the term “bookmy” was just an interplay of words from the Plaintiff’s registered trademark of “bookmyshow” which is distinctive trademark. The main issue that the Court was faced with was that the Plaintiff’s goodwill over its mark carried over to a part to a part of the mark and thus the mark of “bookmyshow” would pass on to the terms book and my as well and thus their mark had acquired a secondary meaning which deserves to protected in order to protect their goodwill and media connect with the consumers.

The defendants contested the contentions of the Plaintiff on two counts. Firstly, it challenged the merit of the Plaintiff’s claim over concealment of certain facts relevant to the present case before the Court and secondly, the Defendant’s claimed that the words “bookmy” were merely descriptive in nature and it had not acquired any distinctness as claimed by the Plaintiff. Additionally, the Defendant’s argued that the Plaintiff’s claim over the mark of “bookmy” were distinctiveness were indeed flawed by the aspect that there were various other websites operating in similar fields which have been being used prior to or subsequent to the Plaintiff’s web portal coming into existence.

The Defendant’s further claimed that the prefix “bookmy” is not an invented phrase meriting any legal protection, but a descriptive one that is common to a particular business format being run in a particular field. For instance, in the present case, both the parties to the suit are involved in the business of running a web portal of booking tickets, as in the case of the Plaintiff or any sporting event, as in the case of the Defendant. Thus, the Plaintiff’s claim that their trademark of “bookmyshow”  would imply that a part of the mark that is “book” and “my” would also imply a relation to their mark, is flawed on the proposition that no other web portal which deals with the aspect of acting as an intermediary in booking tickets or events in any other field cannot use the term “book” and “my”, which would be necessary to imply the format of business being run by them, hence resulting to the conclusion that the Plaintiff is not the exclusive user and adopter of the mark “book” and “my” or “book” and “my” and “show”.[4]

Issues

The issue that the Court had to looked into by the Court was:

Whether a phrase in a registered trademark is descriptive or invented one for its part trademark also would result in violation of the usage of any part thereof or not.[5]

Analysis

The single judge bench of the Court headed by Hon’ble Justice Mukta Gupta dismissed an interim application for grant of an injunction under Order XXXIX Rule 1 & 2 of the Code of Civil Procedure, 1908[6] on an application filed by Plaintiff against Defendant, against the use of the of the prefix of “bookmy” or the mark of “bookmySPORTS”.

The judgment of the Court delivered on December 13, 2017 dismissed the application on referring to numerous judgment on the same subject matter before the Hon’ble Supreme Court of India and other High Courts as well in the past.

The judgment related the present matter in light with the question of whether a phrase is descriptive or invented was considered at great lengths by the Supreme Court in the case of J.K. Kapoor vs. Micronix India,[7] where it was held that a word which is descriptive of the industry or market in which the concerned parties operates cannot be deemed to be invented as it would restrict the chance of other new participants to be able to relate their product with the industry they wish to pursue their business. Thus providing an undue advantage to the predecessor who has registered any such trademark over an industry specific mark thus refusing other participants to be able to use any part of the mark for their own identification of their product. The Court stated that a brand name cannot claim exclusivity or monopoly over a term which is descriptive of any activity in an industry.

The Court also referred to another decision of the Supreme Court in Reliance Industries Ltd v/s Reliance Polycrete Ltd,[8] the issue that was raised in this matter was whether a goodwill attached to a complete trademark carries over to a part of that trademark. It was held that the existence of any industry using the term ‘Reliance’ would only make a person conclude it was being referred to‘Reliance Industries’ alone, the Supreme Court held that reliance Industries Ltd. could not claim monopoly over the use of the term ‘Reliance’ exclusively as it was not an invented terminology but a generic term which can be used for other usages as well by other participants in the market for propagating a message across to the consumers for a better understanding of what their product is about and what the product is being sold to the consumers.

Referring to the above mentioned judgments, Justice Mukta Guptain her judgment in paragraph 16 of the judgment held:

“In the present case, defendant has placed on record examples of numerous other companies that operate with the same domain prefix, and the plaintiff has yet to put on record any evidence suggesting that the prefix “BOOKMY” is only associated in the minds of the public with the plaintiff’s business and nobody else, thus has acquired a secondary meaning and distinctiveness. Considering the facts that the use of the words “BOOKMY” are descriptive in nature and plaintiff’s trademark “BOOKMYSHOW” has not acquired a distinctive meaning, no case for grant of injunction pending hearing of the suit is made out.”[9]

The Court while dismissing the application revered to another case decided by the High Court of Delhi in the matter of P.P. Jewellers vs. P.P. Buildwell Pvt. Ltd.,[10] wherein a similar contention was raised by the plaintiff that the usage of the term “P.P.” was an exclusive trademark of the plaintiff any other person using it would affect its goodwill and would thus result in the violation of its rights protected under the trademark legislations. Hence the usage of the terminology of “P.P.” is not an invented term but just a generic one over which monopoly of one person cannot be safeguarded to prevent any harm to its goodwill.

Ratio Dicidendi

Thus, the Court while laying the ratio, also laid down the precedent that the usage of the term “bookmy”is vast and does nowhere give the impression that it is created but one of a descriptive nature providing a description of the type of business being conducted and that the plaintiff’s claim that the use of the prefix of “bookmy”is not only associated in the minds of the public with that of the plaintiff’s business and nobody else, thus has not acquired a secondary meaning and distinctiveness.

Conclusion

With the rise in the current scenario of the newly evolved businesses, the rise in mass reach over a media like that of an internet, a trademark violation can often be contended by certain businesses as in the present case. The Court in the past has already dealt with these kinds of issues and is also dealing with these issues at present, the fate of such matters might end in the same manner as is being dealt with in the current scenario wherein the Media law and the trademark laws are interjecting with each other and the court have to decide whether a certain trademark can be given exclusivity in times where a single word or even a letter can be industry specific.

Thus to conclude, media is very sensitive issue that is to be looked into very cautiously, and to decide if any usage of any trademark or any part thereof could result in damage of the goodwill of the trademark owner. The Court in the present matter before us dealt it very meticulously to arrive at a conclusion that any part of a registered trademark cannot be said to be part of the complete trademark. In the opinion the judgment of the Court is indeed on the right track and lays down that very important precedent for future references by the judiciary while deciding such matters wherein such contentions can be raised for relating a part of the trademark with the complete trademark which might result in monopoly of a single player in an industry thus violating the very essence of Article 19(1)(g) of the Constitution of India[11] and preventing any person to conduct any business by using any part of registered trademark for identifying their product with the arena in which their business offers product(s).

Author: Ms. Swatilekha Chakraborty, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at   anirudh@khuranaandkhurana.com.

References:

[1]Bigtree Entertainment Pvt. Ltd. vs. Brain Seed Sportainment Pvt. Ltd. &Anr., CS(COMM) 327/2016

[2] http://www.wipo.int/classifications/nice/nclpub/en/fr/20180101/hierarchy/class-41

[3] http://www.wipo.int/classifications/nice/nclpub/en/fr/20180101/hierarchy/class-42

[4]Paragraph 14 of the judgment, accessible at CS(COMM) 327/2016

[5] Paragraph 9 of the judgment, accessible a CS(COMM) 327/2016

[6] https://www.nls.ac.in/lib/bareacts/civil/cpc/cpco39.html

[7]J.K. Kapoor vs. Micronix India, 1994 Saupp (3) SCC 215

[8]Reliance Industries Ltd v/s Reliance Polycrete Ltd, (1997 PTC (17) 581)

[9] Paragraph 16 of the judgment, accessible at CS(COMM) 327/2016

[10]P.P. Jewellers vs. P.P. Buildwell Pvt. Ltd., [(2010) 169 DLT 35]

[11] Article 19(1)(g): “(g) to practise any profession, or to carry on any occupation, trade or business”

Advertisements

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

Appointment of Chairman of the Intellectual Property Appellate Board

IPAB is one of the most important IP tribunals in the country and was established by the Central Government by notifying in the Official Gazette on 15.07.2003. IPAB is an administrative body that has appellate jurisdiction over the decisions of the Controller of Patents, Registrar under the Trade Marks Act, 1999, and the Geographical Indications. However, IPAB has no statutory powers for trial infringement proceedings.

After the retirement of the Chairman of IPAB, K.N Basha on 13th May 2016, IPAB was run by only one member i.e. Mr.  Sanjeev Kumar Chaswal (Technical Member of Trade Mark) leaving behind other two posts vacant namely Vice-Chairman and Technical Member (Patents). This situation left IPAB almost non-functional for an year, leading to backlog of almost about 50,000 applications, due to which India was put under Priority watch list by US. Trade Representative.

As a result of which writ petitions were filed in Delhi as well as in Chennai, in order to fill up the vacant seats so as to make IPAB functional. This resulted in an expedited appointment of the Chairman, however, other positions are yet to be appointed. Therefore, through the Notice dated 1st January 2018 issued by IPAB (here) in accordance to the order dated 29.12.2017 of Ministry of Commerce and Industry (Department of Industrial Policy and Promotion), Shri Justice Manmohan Singh has been appointed as the Chairman of the said Board.

Justice Manmohan Singh is a well renowned persona in the field of IPR, who practiced the over 10 years and served as the Additional Judge of High Court of Delhi from 11th April, 2008- 21.09.2016.

As to who appointed the present Chairman and the constitutionality thereof are still contentious issues as the Madras High Court had upheld that the selection committee for appointing members of IPAB, shall have a predominant role of the Judiciary rather than of the Executive. Further, pointed that while appointing the ‘chairperson’, the recommendation of the Chief justice of India must be given ‘due consideration’. The concerned High Court,  elaborately explained and also struck down various parts of Section 85[1] of the Trade Mark Act, 1999 in order to upheld the ‘Doctrine of Separation of Power’[2], thereby making the IPAB, a constitutionally valid Judicial body.

However, it is alleged that this appointment has been made under Tribunal, Appellate and other Authorities (Qualifications, Experience and other conditions of Service of Members) Rules, 2017. The said Act provides for composition of the selection committee that consists of Chief Justice of India or his nominee, two secretaries to the Government of India and two experts nominated by the Central Government, leading to greater dominance of Executive rather than judiciary in the appointment procedure of the Chairperson. This blatantly violates the judgement of the Madras High Court as mentioned earlier.

Moreover, let’s wait whether the said appointment of Justice Manmohan Singh will be challenged on the ground of constitutionality or not, keeping in mind the rulings held by the Hon’ble High Court of Madras.

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

References: 

[1] Qualifications for appointment as Chairman, Vice-Chairman, or other Members.

[2]Shamnad Basheer vs Union Of India on 10 March, 2015, W.P.No.1256 of 2011; The petition challenged the constitutional validity of the eligibility criteria, appointment of the members of IPAB

Trade Mark Infringement-Toyoto Jidosha Kabushiki Kaisha. vs. M/S Prius Auto Industries Ltd. and Ors.

Time for Considering Territoriality Principle over Universality Principle 

Courts are gradually shifting their focus to territorial nature of Trade Marks. The same was also quite evident in the Exide case, that has been discussed in the previous blog (here). However, no conclusion was drawn in the case due to ‘out of court settlement’. But, the Supreme Court of India in the instant Toyota case has left a landmark precedent of recent times and re-explained the character of Trademark law.

The case goes back to 2009[1], where Toyota, which is a car manufacturer, claimed that Prius Auto Industries that trades with auto parts and accessories, bore the Plaintiff’s registered ‘Toyota’, ‘Toyota Innova’, ‘Toyota Device’ and ‘Prius’ Trade Marks. The plaintiff approached the Trade Mark Registry for cancellation of registered mark of the defendants, and also filed the suit on the ground that the defendant was using their ‘well known mark’ without their consent, leading to an unfair advantage of their reputation and goodwill of the plaintiff. However, following the decade old practice, ‘global reputation and prior user was upheld’ by the Trial court and gave the judgment stating the Defendant liable for passing off of the Trade marks of the Plaintiff, thereby restraining them from using the said trade marks and imposing punitive damages of rupees ten lacks.

However, the Division Bench of the High Court of Delhi gave a very balanced view and held that the decision of Trial Court was acceptable as far as injunctions against the mark Toyota, Toyota Innova’ and ‘Toyota Device’ is concerned. Injunction against the use of Prius by the Defendant was not justified, as the Plaintiff has to give evidence for showing that there existed a cause of likelihood/actual confusion in the Indian market. Thus, this part of the judgement of the Trial Court was set aside. Therefore, the current case is an appeal filed by the Plaintiff before the Hon’ble Supreme Court which dealt with the question that ‘whether the defendant is liable of passing off due to the use of ‘PRIUS.’

The factual matrix lie in issue that revolves around the mark ‘Prius’. This was the  Mark under which the Plaintiff’s first commercial hybrid car was launched in Japan as well as in other countries since 1997. However, the Plaintiff did not get the Trade Mark “Prius” registered in India and its Prius car was introduced in India only in the year 2009, much later than the year when the Defendant got there Trade Mark ‘PRIUS’ registered in India in 2002.

The importance of the case pertains to the tussle between the two theories of Trade Mark Law. However, the true meaning of Trans-border reputation can very well be observed through this case.

Universality Principle on behalf of Appellant

The Appellantsmain argument was that their Trade Marks had acquired immense reputation and goodwill due to intense advertisement of the product worldwide through print media and internet that were even available in India. Reliance was even made on NR Dongre vs Whirlpool Corporation[2], where it was held that “wide advertisement of trade mark without existence if the goods in local market can well be considered as use of the Trade Mark in the local market”. Also the real test to determine the prior user is to establish that ‘who is the first in the market.’

Thus, the mark PRIUS was a well-known mark under section 2 (1) (zg) r/w Section 11(6) & 11(9) of the Act  as the mark PRIUS had acquired a great deal of goodwill in several other jurisdictions in the world much prior to Prius Auto’s use and registration in India.

Territoriality Doctrine on behalf of Respondent

The Hon’ble Court was convinced with the averments made by the Respondents that most of the courts globally has accepted ‘territorial doctrine over universality principle’, so as to establish the goodwill and reputation in a particular jurisdiction. Therefore, in order to follow the Territoriality Doctrine, one has to show adequate evidence that he has acquired the a substantial goodwill in India for its mark, relying on Starbucks v. British Sky Broadcasting, where the Court observed that:-

“No trader can complain of passing off as against him in any territory… in which he has no customers, nobody who is in trade relation with him.”

Therefore, prior use of the trade mark in one jurisdiction would not ipso facto entitle its owner or user to claim exclusive rights to the said trade mark in other jurisdiction as observed by Division Bench of Delhi Court.

Judgment

Thus, the Supreme Court held that “likelihood of confusion” would be a better test of proving a passing off action, which can only be established from evidentiary documents, which the Appellants failed to provide. In furtherance of this, the Supreme Court also insisted on the Trinity Test as laid down by Reckitt & Colman Products Ltd. v Borden Inc[3] :

  • The goods or services have acquired goodwill or reputation in the marketplace that distinguishes such goods or services from competitors;
  • The defendant misrepresents his goods or services, either intentionally or unintentionally, so that the public may have the impression that the offered goods or services are those of the claimant; and
  • The claimant may suffer damages because of the misrepresentation.

These seven years of clash between the Toyota and Prius automobile company came to an end and the Supreme Court concluded that trademark rights are territorial and not global, thus one has to prove that one has acquired its reputation and goodwill in a territory, only through actual evidence, thereby rejected the trade mark case brought by Toyoto jidosha kabushiki kaisha.

Analysis

The Hon’ble Supreme Court has reiterated the much-needed revision of foundational basis of Trade Mark law, which has also very well described and explained the two most important Doctrine of the Trade Mark law that helps in determining the right owners – Universality Principle and Territoriality Doctrine. Also, Division Bench of High Court has played a very significant role in highlighting the groundbreaking principle and it was very consistent with its view towards the territorial aspect of the Trade Mark law. (which can be seen Exide case). Moreover, the Court Aptly relied on Trans Tyres India Pvt. Ltd vs. Double Coin Holdings Ltd & Anr., which observed that Universality Doctrine (which posits that a mark signifies the same source all over the world) has not been accepted by the courts. Modern day trade; globalization have brought in multi-channel modes of sale in the market and therefore it is the territoriality Doctrine (trade mark being recognized as having a separate existence in each sovereign country) would hold the field.

Thus, it is time to also look into the territorial character of the Trade Mark above the rights of prior user and Trans-border reputation.

Sources:

[1]  http://supremecourt.gov.in/supremecourt/2017/9646/9646_2017_Judgement_14-Dec-2017.pdf

[2] 1996 (2) ARBLR 488 SC

[3] [1990] 1 WLR 491

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

Exide Industries Limited vs. Exide Corporation, U.S.A. & Ors.

The case Exide India v Exide US brings into effect the perplexing issue of Trade Mark law. The dispute dates back to 1997 when the US based Company ‘Exide Technologies’ entered the Indian market post Liberalisation, where Indian company ‘Exide Industries’ was already present over the decades in the local market selling automobile batteries under the trademark “EXIDE”. As soon as the US based company started its operation in India, Indian company “Exide Industries” filed a suit for infringement of trademark in Delhi High Court. After a significantly long and much converse legal conflict, the Court in 2012 restrained Exide Technologies from using “Exide” trademark in India. Exide Technologies further filed an appeal to Division Bench against the judgement of 2012, which was though dismissed the Division Bench held that there was neither infringement nor passing off done by Exide Technologies as both the commercial ventures were genuine users of the mark. Further to this decision, Exide Industries filed an appeal before the Hon’ble Supreme Court, which was disposed off by the court, as the parties to the dispute opted for an out of court settlement. The foremost dispute of the case was as to who is the real owner of the mark EXIDE.

The case is important as it includes the aspect of prior-use of identical trademark by two commercial entities and its legitimate ownership. The case involves a significant concept of trademark law according to which the prior use and adoption of trademark show distinctiveness of the trademark on account of sale of the goods in market which makes the seller, owner of the trademark. The Delhi High Court single judge held that the trans-border use of the trademark by the registered owner of a mark in a particular jurisdiction does not make him the owner in another jurisdiction where the similar mark is in simultaneous use by other local registered proprietors with proven prior use of that trademark. But subsequently the Division Bench declared the judgement to be impugned and thus held that the trans-national use of the trademark is one of the significant aspects to look for the ownership of the trademark and also the goodwill of the trademark continues to be with the assignor of the trademark even if it is assigned to some other company for use in another jurisdiction.

Case background:

M/s. Electric Storage Battery Company (ESBC) was incorporated in USA in 1888 and subsequently was granted the trademark ‘EXIDE’ in USA. It incorporated a subsidiary company in UK in 1891 named as M/s. Chloride Electric Storage Co. Ltd. (CESCO) which was permitted to use the trademark as it was a subsidiary of the parent US Company. Later, CESCO was also granted registration of trademark ‘EXIDE’ in UK. In 1947, following an order of a US District Court, ESBC and CESCO broke connection but CESCO continued to have right to use trademark ‘EXIDE’ pursuant to an agreement between the two. CESCO started selling batteries under the name ‘EXIDE’ in India and subsequently, in 1942 it was granted registration of the trademark ‘EXIDE’ even in India. CESCO is the parent company of the present plaintiff company to which the trademark was transferred. In 1978, by executing a deed of assignment, trademark ‘EXIDE’ was assigned to the present plaintiff company. Thereafter, the plaintiff company applied for transfer of registration of trademarks in its favour which was also granted. Therefore, it was selling batteries under the name ‘EXIDE’ for quite a long time in India.

After liberalisation, when US company Exide Technologies started selling batteries under the name ‘EXIDE’ in India, The Indian Company brought a suit for infringement and passing off against it which became a long drawn battle.The ownership of the trademark EXIDE was the primary issue in this case. The Indian Company Exide Industries claimed ownership on two grounds:

  • It was the registered owner of the trademark in India. This ownership was transferred from the transferor-company.
  • It was the prior user of the trademark in India and thus it acquired the ownership of the trademark ‘EXIDE’ in India.

Similarly the US based company, Exide Technologies claimed the ownership on two grounds:

  • It is the parent company (US based ESBC) of the former transferor-company (UK based CESCO) which owned the trademark ‘EXIDE’ and thus only Exide Technologies have the exclusive right of the ownership of the trademark ‘EXIDE’ even in India.
  • The trademark ‘EXIDE’ is registered in its name in about 130 countries and thus it is the worldwide owner of the trademark. As the company has a transnational existence, it is the real owner of the trademark ‘EXIDE’ even in India.

In the present case, the concept of prior use was applied, which implied that the plaintiff company was using the trademark by selling batteries under the name ‘EXIDE’ in India. The defendant claimed that it was the owner of the trademark in India as well because it was the parent company of the transferor-company from which the plaintiff acquired the trademark ‘EXIDE’ and the defendant pleaded that it had not abandoned its right by not using the trademark in India and instead didn’t use the trademark in India for long period of time because of some ‘special circumstances’. The court did not accept the Defendant’s plea as it failed to show any ‘special circumstances’ for not using the mark over such sufficiently long period of time in India. The result was that the court accepted the fact that the transferor-company was manufacturing batteries under the name ‘EXIDE’ in India from around 1960 from which the plaintiff company got the trademark assigned. Thus automatically, as far as India is concerned, the plaintiff and their predecessors are the prior user of the trademark ‘EXIDE’.

Judgement:

The Delhi High Court in 2012 through Valmiki Mehta, J. restrained Exide US from using the Exide mark in India and held the plaintiff as the legitimate user and owner of the mark in India due to its prior use by plaintiff. Both, infringement and passing off by US Company Exide Technologies were confirmed by the court. The Defendant’s plea of non-use of trademark in India due to special circumstances was also rejected as Court observed that the Defendant failed to establish any special circumstances.

However, the case came up as an appeal to the Division Bench of Delhi High Court which considered both the issues, the prior use of the trademark by Exide Industries and whether Exide Technologies is liable for the infringement and passing off. Relying on the landmark Supreme Court judgement like Cadila Healthcare, Dyechem v Cadbury and Durga Das Sharma v Navratan Pharmaceutical laboratories, the court inferred that passing off and infringement are both different concepts wherein, an impression of deception or confusion relating to the manufacture or origin of the goods is created in the minds of the buyers. Court observed that the trademark ‘Exide’ used by both the parties is identical, and both were genuine users of the mark. The judgement of the court was quite inventive and only one of its kind wherein the court outlined that US based Company was kept out of the Indian market due to trade restrictions but however on record of evidence Exide Batteries manufactured by Exide US was substantially known in India as well. Another point that the Court illustrated was that though, through an assignment deed, the mark was assigned to Exide India, yet the goodwill in the mark was retained by Exide US because the agreement did not specifically transfer the goodwill. Thus, the transnational reputation was highlighted and the court allowed Exide US to be in possession of the goodwill of the trademark ‘EXIDE’ despite of transfer of rights of ownership of the trademark. At the end, the court confirmed that there was no circumstance of passing off or infringement by the Exide US as it had legitimate rights to the mark. The court termed the use of the mark by Exide Technologies as “bona fide and legitimately concurrent”. Moreover, the counterclaim against Exide India was not maintainable since they were the registered owners of the mark in India.

The order of the division bench was further stayed by the Supreme Court after an appeal was filed by Exide Industries. The apex court restrained the Exide Technologies (defendant) from using the mark until the final adjudication of the matter but the parties before the decision of the court brought about an out of court settlement.

Present scenario and analysis:

In the event of widespread reputation through immense technology (internet, websites), globalisation and restructuring of Indian market, Exide case comes as an exception and as a tenet that considers territorial character of Trademark above trans-border reputation. The Delhi High Court judgement of 2012 clearly delineated that the territorial prior use of the trademark by a registered user in one jurisdiction weighed more than the worldwide reputation of the trademark used by another registered user in other jurisdictions. The case was twirled when the Division Bench restored the rights to the mark to both competing proprietors in a way. In this case the true scope and effect of concurrent use of an identical trademark for similar products in different jurisdictions were brought into light. Both concurrent users of the identical trademark in different jurisdictions were held to be the legitimate users in their respective jurisdictions. The allowed of the retained goodwill for substantiating bona fide claim to the mark was an exclusive and unique approach.

However, out of the court settlement by the parties clearly marked an end to the hopeful jurisprudence in cases of use of identical trademark by different commercial proprietors in different jurisdictions. The parties mutually agreed subject to certain terms and conditions to fully and finally settle all disputes and their rights and obligations with respect to the mark in the way set out in the agreement. As a result of the settlement, the Supreme Court disposed off the case without a proper jurisprudence on the issue.

Source:

[1]   MANU/DE/4642/2012

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

The Question of Internet Jurisdiction

With the explosion of Internet and domain names, various disputes have occurred relating to many cyber-crimes and infringement of Trademark laws over domain names[1], and in order to seek justice before the Court of Law, dispute regarding jurisdiction arise owing to Internet having a multi-jurisdictional character.

The issue of jurisdiction has been the most debated and has been a focal point of the whole globe. In absence of a specific legal framework for cyberspace, much reliance is placed on judicial pronouncements of various countries that have developed the concept of ‘Internet Jurisdiction’.

International Shoe Co. V. Washington.[2] was among the first cases that introduced ‘Minimum Contact Test’, which further became the basis of determining Internet jurisdiction globally. In this case, International Shoe did not own any property/ permanent location in Washington, however, the plaintiff earned about $30,000 annually from customers in Washington. The state enacted a tax on companies doing business there that functioned as a mandatory contribution to its Unemployment Compensation Fund, which was stated to have been applied to the Plaintiff.  US court of law held that the court can exercise its jurisdiction over non-resident defendant if certain ‘minimum contacts’ with forum state exist such that maintenance of the suit does not offend traditional notions of fair play and substantial justice.’ This theory was further limited to ‘purposeful availment’ of the defendant to the forum state.[3] The forum court may exercise its jurisdiction over a non-resident defendant/ defendants not physically present where an alleged injury arises out of or relates to actions by the Defendant himself that are ‘purposefully directed’ towards residents of the forum state. It was held that ‘purposeful availment’ would not result from ‘random’ or ‘fortuitous’ contacts by the Defendant in the forum state.[4]

However, a proper analysis of nature and quality of commercial activities of a website in terms of determining the jurisdiction was considered in Zippo Manufacturing Co. v. Zippo Dot Com, Inc.[5], which introduced ‘sliding scale analyses’ based on passive, active, and interactive websites. Court observed that mere passive websites do not form personal jurisdiction but those websites that enable parties of forum state to enter into contracts contemplating business with the forum state, may confer personal jurisdiction.

Further, jurisdiction on the effect of online interaction in the forum state was evolved by the Supreme Court in Calder v. Jones.[6] The effect test is applied in cases with insufficient interactivity or minimum contacts but where an action is targeted at a particular forum. In the Internet context, the effect test can be used to examine the exact nature of a Defendant’s Internet activities to determine whether it’s out-of-state actions were directed at parties or entities within the forum state. Further in Calder v. Jones, it was held that “purposeful direction requires (a) an intentional action that was (b) expressly aimed at the forum state, with (c) knowledge that the brunt of the injury would be felt in the forum state. If a court finds that a Defendant’s actions meet the standard of purposeful direction, personal jurisdiction may be asserted based on Internet activities that do not meet the requisite level of interactivity or minimum contacts needed for other tests of personal jurisdiction in Internet cases.”

Although these tests are referred by many courts of law across the world, Indian courts too have considered these theories for determining Internet Jurisdiction keeping in mind the fundamental provision for determining jurisdiction under section 20 of CPC and section 134[7] of Trade Mark Act considering domain name to be of nature of Intellectual Property.[8]

The first case to ponder over the Internet jurisdiction was Casio India Co. V Ashita Tele Systems Pvt. Ltd[9], where the court passed an injunction against the Defendant from using the website http://www.casioindia.com because of the fact that the website of Defendant is accessible in Delhi, which is sufficient to invoke the territorial jurisdiction of this Court. The High Court of Delhi held that the mere ability to access the website gave the court territorial jurisdiction to decide on the matter at hand. In 2007, the Delhi High Court reiterated the US courts holdings that,  where the website is an interactive one, having target audience in another place, the court of those places has the jurisdiction of dispute arising from that website activities, irrespective of the place of defendants.[10]

(judgement can be found here : https://indiankanoon.org/doc/1043775/).

Indian Position on this issue was made quite clear by the Delhi High Court in the case of Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy and Anr[11]. The most interesting fact of the case was that both the parties to the case were not situated within the territorial jurisdiction of the court but the websites of both the parties were accessible in Delhi. The court’s view changed from the Casio case and observed that mere accessibility of a website in Delhi is not sufficient to provoke jurisdiction by the Delhi Court. It reiterated US case laws and held that ‘The plaintiff has to show Defendant’s ‘purposeful availment’ directed towards the forum state, indicating that the use of website was with the intent of commercial transaction with the site user which leads to a damage or injury to the plaintiff.’ The court, also concluded the law of determining jurisdiction over internet on following conditions:

  1. Commercial transaction must have taken place due to the website.
  2. The defendant must have specifically targeted the forum state.
  3. Some injury must have resulted to the plaintiff due to the actions of the defendant.
  4. The plaintiff must have a presence in the forum state, and not merely the possibility of forum state.

The High Court of Delhi cleared the position of determining Internet jurisdiction in World Wrestling Entertainment, Inc. vs. M/s. Reshma Collection &Ors[12], where it held that mere accessibility of website in a forum state which ‘solicits’ its business, through which Defendent’sgoods and services are sold, is enough to raise cause of action and in determining the personal jurisdiction in Delhi.[13] The same was reiterated in Choice Hotels International Inc. v. M. Sanjay Kumar and Ors[14] by the single judge bench in the High Court of Delhi.

CONCLUSION

The issue of Internet jurisdiction has been challenging because of the involvement multiple locations. However, Indian Courts have definitely welcomed the Internet jurisdiction with a broad perspective by referring to various case laws globally. Through analysis of plethora of case laws, we can observe that Indian Courts have very well merged the fundamental laws of jurisdiction, i.e. section 19 and 20 of CPC, in determining the Internet jurisdiction. It can also be noted that mere presence of a website is sufficient to invoke jurisdiction even though the website has been used only to solicit businesses at a particular place, thus, mostly recognizing the effect test as laid out by the US court in Calder case. However, the practice of following only precedence on case laws, without having any specific guidelines or laws will definitely make these theories of determining jurisdiction vulnerable.

Sources

[1] M/s Satyam Infoway Ltd vs. Sifynet Solutions Pvt. Ltd, (2004) 6 SCC 145;  Supreme Court Held that Domain names are subject to the legal norms applicable to other intellectual properties, such as Trademarks; Yahoo Inc. v. Akash Arora, 1999 PTC 201:  Supreme Court held that general Trademark law to be applied to internet in cases of Domain Name. [In cases of Domain Name, if Infringement takes places it shall be treated as if Trademark Infringement and thus, the remedies granted under trademark infringement/passing off shall be granted]

[2] 326 U.S. 310 (1945)

[3] Asahi Metal Industry Co. v. Superior Court, 480 U.S. 102 (1987)

[4] Burger King Corp v. Rudzewicz

[5] 952 F. Supp. 1119 (W.D. Pa. 1997)

[6] 465 U.S. 783 (1984)

[7] Section 134, Trade Marks Act, 1999; provides statutory provisions for instituting suit against passing off or infringement

[8]Satyam Infoway Ltd. v. Sifnet Solutions Pvt. Ltd., AIR 2004 SC 3540; Tata Sons Ltd. &Anr. vs Arno Palmen&Anr; 199(2013)DLT437

[9] 2003 (27) PTC 265 (Del)

[10] Independent News Service Pvt. Limited v. India Broadcast Live Llc And Ors; 2007 (35) PTC 177 (Del)

[11] CS (OS) No. 894/2008

[12] 2014 (60) PTC 452 (Del)

[13] World Wrestling Entertainment, Inc. vs. M/s. Reshma Collection &Ors; “that it “carries on business” in Delhi because, according to it, its programmes are broadcast in Delhi; its merchandise and books are available for sale in Delhi; and its goods and services are sold to customers in Delhi through its website which can be accessed in Delhi over the internet.” (para 12).

[14] MANU/DE/0443/2015

Brunei’s Intellectual Property Office Accession to Madrid Protocol

The Government of Brunei Darussalam on October 6, 2016 [1] deposited its instrument of accession to the Madrid Protocol for the International Registration of Marks in Geneva with the Director General of WIPO Francis Gurry [5]. The accession makes Brunei Darussalam the 98th member to the Madrid System. The aforementioned protocol came into force On January 6 2017 [1].

The local businesses and brand owners of Brunei Darussalam have already started using the Madrid System in order to ensure protection of their marks in 114 territories of the 98 member countries of the Madrid system [2]. This is achieved by filing a single international application in a single language and paying one set of fees in a single currency.

With the introduction of Madrid system in Brunei Darussalam, foreign brand and trademark owners can now easily seek protection for their marks & brands when they introduce their brands, products or services in Brunei Darussalam [2]. As WIPO celebrated 125 years of the Madrid System, the accession of Brunei Darussalam further displayed the System’s emergence as a key component for protecting marks internationally.

From its inception, the Madrid system has continued to develop according to the needs and requirements of the applicants thereby providing cost-effective and simple features for filing trademark applications across multiple territories. Today, the Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. Applicants can modify, renew or expand their global trademark portfolio through one centralized system with its evolving E-Services options [4].

Notably, Brunei Intellectual Property Office, in addition to the Madrid System, has already implemented two other WIPO-administered international registration systems namely, the Patent Cooperation Treaty (PCT) and the Hague System for the International Registration of Industrial Designs in 2012 and 2013 respectively [3].

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

 

References

[1] http://bruipo.gov.bn/Lists/News/NewDispForm.aspx?ID=1

[2] http://www.wipo.int/madrid/en/news/2016/news_0020.html

[3] http://www.energy.gov.bn/Lists/EDPMO%20Updates/NewDispForm.aspx?ID=70

[4] http://www.wipo.int/madrid/en/

[5] http://www.wipo.int/about-wipo/en/dgo/

Energy and Industry Department at the Prime Minister’s Office (EIDPMO) Launches Trademark Search Kiosk

The Brunei Intellectual Property Office (BruIPO) is an office under EIDPMO and is responsible for the administration and registration of Intellectual Property (IP) including Patents, Trade Marks, Industrial Designs and Plant Varieties Protection (PVP) [2].  In its efforts to enhance its services to the public, BruIPO has recently introduced a trademark ‘Search Kiosk’ at the Business Support Centre (BSC) at the Design & Technology Building (D&T) in Anggerek Desa. This service of search Kiosk enables general public to allow searching for trade mark via the World Intellectual Property Organization (WIPO) Global Brand Database (GBD) and the ASEAN TMView database. These services are freely accessible.

Along with Singapore and the Philippines, Brunei Darussalam currently maintains one of the shortest turnaround times for trademark registration in the region at less than six months [1] and has also been looking at a further growth of its trade mark services by introducing an online portal for e-filing of trademarks in the coming time and has already implemented the Madrid Protocol for the International filing for Registration of Marks [3].

BruIPO along with Search Kiosk also offers other Intellectual Property related services for Subject Matter Experts through their Technology and Innovation Support Center (TISC) that allows inventors & innovators to easily access local, high quality technology information and related services, with the target of helping these innovators to exploit their innovative potential and to create, protect, and manage their intellectual property rights [2].  Few of the services BruIPO provides through TISC comprises of assistance in searching and retrieving technology information; training in database search and basic information on industrial property laws; management and strategy as well as advice on technology commercialization and marketing.

It should be noted that detailed information on BruIPO’s services especially ‘Search Kiosk’ is available at their helpdesk at the Business Support Centre whilst downloadable information such as forms and fee schedule can be obtained from BruIPO’s webpage on the EIDPMO’s website at www.ei.gov.bn.

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

References

[1] http://www.ei.gov.bn/Lists/Industry%20News/NewDispForm.aspx?ID=182

[2] http://www.energy.gov.bn/Lists/EDPMO%20Updates/NewDispForm.aspx?ID=73

[3] http://www.energy.gov.bn/Lists/EDPMO%20Updates/NewDispForm.aspx?ID=70

TATTOOS AS INTELLECTUAL PROPERTY- AN INDIAN PERSPECTIVE

INTRODUCTION:

Tim Parks in his book[1] wrote “You will only have copyright in a society that places a very high value on the individual, the individual intellect, the products of individual intellect.” In an overtly aware society like ours, there is no doubt that we not only value but are also more aware of our rights. In addition to our awareness, there is something else that is more peculiar about present times – our curiosity and our need to keep evolving with time. With this constant need for metamorphosis, our technology and art forms also are changing at a rapid scale, leading to the foundation and formation of various industries emerging from them including the Tattoo industry. This body graphics phenomenon, while may seem to have gained popularity very recently, has its roots inked all the way back in CA. 8000 BP where a ‘moustache’ was found tattooed on the upper lip of the South American Chinchorro mummy[2]. With the tattoo industry growing to become a $1 Billion industry[3], the legal framework to regulate this industry seeks evolution as well. With tattoos, the questions that need to be put to rest seem quite fundamental, beginning with – Do we have adequate laws and the legal framework to regulate and enforce the rights relating to tattoos? Are tattoos artistic enough to be copyrightable at all? If yes, who owns the rights? What is the extent of these rights? How do we enforce them?

This article tries to explore the answers to these questions while making an attempt to understand tattoo related jurisprudence across the world in comparison with current legal framework in India and its possible interpretations.

TATTOO – A COPYRIGHTABLE WORK?

Since copyrights are rights granted to artistic forms of expression on tangible mediums, tattoos ought to qualify, for copyright protection. Unlike in U.S. where the applicable statute[4] requires the “pictorial, graphic and sculptural” copyrightable work to be “original works of authorship fixed on a tangible medium of expression”, Indian law does not explicitly specify the need for tangible medium of expression. However, owing to the permanent nature of the tattoos and the human body being the “tangible medium of expression”, the reservations against tattoo not being copyrightable work, by definition, should be ruled out.  As if to prove Indian Copyright Office’s validation of tattoos as copyrightable works, the Indian Copyright Office, in 2011, granted Shahrukh Khan a copyright registration for his tattoo[5]. While there has not been a copyright infringement case for tattoos as yet in India, the news of the Warner Bros. making use of an unauthorized tattoo in their movie Hangover 2 in 2011 and then, being sued by the tattoo artist from Missouri[6] made quite a stir and has had the legal community thinking of the ramification of making the tattoos a copyrightable commodity. Though the case was discreetly settled, the million dollar question is still being debated as to who shall reap the benefits of the tattoo and can the standard injunctive damages apply, as they apply for paintings, books or other works of art.

To understand the applicability of copyrights to tattoos, one must recognize that it is only original and custom made tattoos that are the subject of this discussion. Standard tattoo in catalogues or on the walls of parlours are not to be considered thereto. Of all the ingredients, originality is the principal ingredient, without which a copyright does not exist. Having said that, the efforts made by the tattoo artists in inculcating the imagination of the tattoo bearer are worth marvelling about, it must be understood that if the copyrights of a tattoo are to remain in the possession of the tattoo artist, the rights to exploit the copyrighted ‘piece of art’ also rests with them. Among the various other rights of the copyright holder mentioned in the Indian Copyright Act, 1957, Section 14(c) (ii) specifies that the copyright holder has the right to communicate the piece of work to the public. It must be noted that this provision relating to the communication of the artistic work to the public speaks of ‘artistic work’ only implying that tattoo artist is entitled rights only of the “artistic work” i.e. the tattoo bearer’s body that has been imprinted with the tattoo while allowing the artist to restrict the replications of the artistic work in any other medium under Section 14. Thus, one may imagine the way in which a copyright holder, in this case the tattoo artist may incorporate the above mentioned right, considering that the ‘work of art’ which is to be communicated to the public is actually on somebody else’s body, unless the tattoo artist has tattooed himself. In other words, it may mean that the tattoo artist has the right to control and regulate the tattoo bearer’s activities which, by all means, violates the very right to freedoms promised to us by Art.19 and Art.21 of the Indian Constitution, to say the least. Another argument in the favour of the tattoo bearers holding the authorship rights is that the tattoo artist is a hired employee, in which case, S.17(c) of the Indian Copyright Act, 1957 may be interpreted as the tattoo bearer being a quasi-employer of the tattoo artist, is the first owner of the copyright, in the absence of a contract between the two. In practice, most tattoo artists, too, believe that once the customer pays for the tattoo, he owns the tattoo and all the rights that come with it.

In the defence of the tattoo artists’ rights to obtain the copyright, it may be said that like painters, they, too, create art and have a right to copyright the same to retain their originality. Also, as in the case of art collectors, the tattoo bearer may merely own the piece of art and the copyrights of the designs may still rest with the tattoo artist and certain amount of royalty may be reimbursed to the artist for replication or incorporation of this piece of art on various mediums such as video games, as in case of THQ Inc.[7], where the gaming company was sued by Mr. Conduit’s tattoo artist for illegally and wrongfully using the mixed martial artist’s tattoo in the game. Taking a leaf from so many cases of tattoo artist’s suing gaming[8] and entertainment companies[9], and also having burnt its fingers once[10], EA Games played it safe by taking permission from the tattoo artists of the respective sportsmen before using their work in their new NFL 15[11].

TRADEMARKING TATTOOS :

Quintessentially, the function of a trademark is to distinguish one’s services or goods from the others selling or providing similar goods or services. So when one gets a trademark or logo tattooed on himself or herself, given the aforesaid logic, the chances of them intending to confuse any member of the public of being the originator of any particular goods or service are rare. However, in some organizations, employees are encouraged to get tattoos of the organization’s logos or taglines[12].

On the other hand, in some cases, one might end up welcoming a cease and desist notice for tattooing a trademark without prior permission, like in the case of a coffee shop owner in New York who was slapped with a cease and desist notice for infringing the trademark “I ♥ NY” for tattooing “I [coffee cup] NY” on his knuckles. [13] The coffee shop owner, in this case, to avoid litigation, settled and agreed to certain terms of the said rightful owner that included restrictions on having his tattooed knuckles photographed and censoring of the cafe’s logo, which happened to be the tattooed knuckle, from the window pane of his coffee shop. While it is essential to note here that not only was there no direct trademark infringement but also the coffee shop owner had not copied the design of the logo as it is. He had introduced the image of a coffee mug instead of the “♥” which could be proved as distinctive form of expression and could have stood his ground pointing the difference in the tattoo design from the allegedly infringed logo. Having said that, like the idiom “every coin has two sides”, every legal argument can be fought from both the sides as well, making this jurisprudence ever so interesting.

CONCLUSION:

There seems to be crystal clarity, with the Warner Bros. case[14] verdict and Shahrukh Khan’s tattoo[15] being granted copyright registration, that tattoos are indeed copyrightable property. The variable in the equation, however, is the extent of the rights that are to be granted to the parties and its enforceability. While the moral rights like endorsing the tattoos in the name of the tattoo artists and giving them their credits when they are due, are undoubtedly implicit, the debate that needs to be put to rest is the statutory rights that are to be bestowed on either party.

Another question that needs the legal community’s immediate attention is the enforceability of these rights once they are granted. In order to protect and execute these rights, we are in need of a strong precedent that will define the limit the extent of injunctive relief that may be sought by the copyright holders without violating the infringer’s fundamental rights. With a Catch-22 situation before us and no binding precedent to break this deadlock, one can see only two definite possibilities – either the tattoo artists are granted their much earned and awaited royalties for every picture, endorsement, and social media coverage given to their art, or the conscious tattoo bearers is to carry fresh, newly drafted contracts for their tattoo artists to have their rights assigned to them every time they enter a tattoo parlour!

Author: Amruta Mahuli, Legal Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at mumbai@khuranaandkhurana.com.

References :

[1] Where I’m Reading From: The Changing World of Books

[2] https://www.researchgate.net/profile/Aaron_Deter-Wolf/publication/275023614_The_Material_Culture_and_Middle_Stone_Age_Origins_of_Ancient_Tattooing/links/552ecd7f0cf2d495071a90b1/The-Material-Culture-and-Middle-Stone-Age-Origins-of-Ancient-Tattooing.pdf?origin=publication_detail

[3] https://www.ibisworld.com/industry-trends/specialized-market-research-reports/consumer-goods-services/personal/tattoo-artists.html

[4] 17 U.S. Code § 102

[5] http://archive.indianexpress.com/news/srk-registers-don-2-tattoo-in-his-name/817871/

[6]  S. Victor Whitmill Vs. Warner Bros., Civil Action No. 4:11-cv-752

[7]  Christopher Escobedo v. THQ Inc., Case No.: 2:12-cv- 02470-JAT, U.S. District Court, District of Arizona (Phoenix)

[8] Solid Oak Sketches, Llc V. 2k Games, Inc., U.S. District Southern District Of New York, No. 16-00724.; http://mitchellhamline.edu/wp-content/uploads/sites/37/2015/11/2-Copyrighting-Tattoos-Artist-vs.-Client-in-the-Battle-of-the-Wai.pdf

[9] Reed v. Nike, Inc, No. 05-CV-198 BR (D. Or. Feb. 10, 2005); http://www.brinksgilson.com/files/190.pdfl; Ibid. 5

[10]  Stephen Allen v. Electronic Arts Inc. et al., Case No.: 5:12-cv-03172, in the U.S. District Court for the Western District of Louisiana.

[11] http://www.barstoolsports.com/dmv/ea-sports-got-permission-from-colin-kaepernicks-tattoo-artists-to-use-his-ink-in-madden-15/;

[12] http://newsfeed.time.com/2013/05/02/employees-get-tattoo-of-company-logo-for-pay-raise/; http://www.bbc.com/news/business-28207945

[13] http://theconversation.com/who-owns-your-tattoo-maybe-not-you-56050

[14] Ibid. 4

[15] Ibid. 3

THE EXCLUSIVITY OF BRAND TAGLINES

Brand taglines are catch phrases which serve to draw a connection for consumers with the business’ products and services, and the concerned brand in general. A particular sequence of words repetitively used in the promotion of a brand or business in relation to its products and services often finds a place in the associative memory of the public. For example, when coming across the catch phrase “Finger lookin’ good”, one is instantly reminded of KFC’s sumptuous range of food products.Similarly, the tagline “Just Do It” is commonly associated with the brand NIKE and the phrase, “There are some things money can’t buy. For everything else, there’s MasterCard” connotes a connection with Mastercard.

Taglines are primarily used for advertising as they are memorable, differentiate the brand and impart certain emotions regarding the brand. The said exclusive association also flows from the mere mention of the brand, for example when one refers to Mc’donalds, the phrase “I’m Lovin’ It” automatically comes to mind, thereby indicating that some sort of intangible ownership of the particular phrase exists. This short note will attempt to elucidate upon whether and if so, what type of intellectual property protection is accorded to taglines or trade slogans with specific reference to the Indian context.

Scope of Brand Taglines as Trademarks

Section 2(m) of the Trademarks Act, 1999 defines “mark” as including a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. It is seen that the legislation provides for a tagline or combination of words to be included within the ambit of the definition of mark.

Trademark is defined under the Act as a mark capable of being represented graphically and of being able to distinguish the goods or services of one person from those of others in the course of trade.[1] Therefore, it is seen that a brand tagline is capable of being reduced to two-dimensional representation on paper. It is submitted that the distinctiveness criterion has a close nexus with Section 9(1) of the Trademarks Act under absolute grounds for refusal of registration.

In order for a brand tagline to qualify as a trademark, it must be distinctive,by acquiring secondary meaning and goodwill,and must not be descriptive of thefeatures of the products and services in respect of which it is used. The brand tagline by itself also must not indicate anything which has become customary in the established trade practices of that particular business.

Distinctiveness of the Generic

The Karnataka High Court in Reebok India Company v. Gomzi Active[2] has held that the person claiming the benefit of distinctive usage has to establish that over a period of time the concerned trade slogan has developed a secondary meaning and goodwill.[3] The Court accepted Reebok’s (Defendant) contention that the phrase “I AM WHAT I AM” is generic in nature and has not any acquired distinctive character in relation to the goods produced by Gomzi Active.[4]It was further held that both parties were operating under different and distinct trade names and by the mere use of the common phrase and expression “I AM WHAT I AM” it cannot be said that a customer with reasonable prudence would be misled to purchase the products manufactured by Reebok mistaking them for the products manufactured by Gomzi Active.[5] It is submitted that extensive advertisement through various modes and subsequent inherent association by consumers of the brand tagline with brand’s products and services would satisfy the test of distinctiveness even if concerned tagline is a common and generic phrase.

Descriptiveness and Commercial Features

The Hon’ble Supreme Court in a petition for special leave to appeal[6] upheld a Division Bench decision of the Delhi High Court in Procter & Gamble Manufacturing (Tianjin) Co. Ltd. &Ors. v. Anchor Health & Beauty Care Pvt. Ltd.[7], wherein the issue of distinctiveness and descriptiveness of brand taglines was discussed and elaborated.[8]The Court held that

  • The expression “ALLROUND PROTECTION” in Anchor’s advertisements and on its product is covered within the meaning of Section 2(m) & (zb) of the Act.

  • There is a difference between specific descriptiveness and generic descriptiveness.Forexample,a particular tagline may be descriptive of such features that are unique to the brand’s products but not generic features of the said products. (It is pertinent to note that Anchor was the first in the industry to use “ALLROUND PROTECTION”)

It is submitted that the Court in a way has interpreted a brand’s tagline or its“communicated commercial essence”tobe considered as a unique feature of its products and services, while deciding that is not a descriptive tagline.

Expressions of Customary Trade Practice

In Stokely Van Camp Inc v. Heinz India Pvt Ltd.[9], the Delhi High Court Division bench held that the trade slogan “Rehydrate Replenish Refuel” used in respect of Gatorade, even though a registered slogan mark, cannot be granted protection since in the energy drink market it has become customary and in fact necessary to describe products as such. Therefore, the Court held the defendant’s use of the expression “Rehydrates fluids, Replenishes vital salts, Recharges glucose” will fall within the ambit of Section 30 (2)(a) of the Trademarks Act, wherein a registered trademark is not infringed when the alleged infringing mark/expression is used to indicate features and characteristics of the products in respect of which it is used.

Therefore, it is seen that brand taglines have been recognised as trademarks in India provided they have acquired distinctiveness through goodwill and secondary meaning. It is also seen that trade slogans can be used to describe particular unique commercial features of the brand’s products and services.

Scope of Brand Taglines as Copyrights

Copyright subsists in original literary, dramatic, musical and artistic works, cinematographic films and sound recordings.[10]The Delhi High Court in Pepsi Co. Inc. and Anrv. Hindustan Coca Cola and Ors.,held that advertising slogans are not to be accorded protection under the Copyright Act and they may be protected under the law of passing off.[11] The Court also opined that although the task of devising advertising slogans often requires a high level of skill and judgment but they will usually not qualify as original literary works.Law of passing off is not limited to names but is wide enough to encompass other descriptive materials including slogans, as part of goodwill built by extensive advertisement.[12]

Further, in Godfrey Phillips India Ltd. v DharampalSatyapal Ltd. & Another[13], the Delhi High Court followed the ratio of Pepsi Co and held that the advertising slogan “ShauqBadiCheezHain” is a mere combination of common words and hence cannot be granted protection as a literary or artistic work under the Copyright Act since they are as such not an outcome of great skill, and at best can be given protection under the law of passing off provided the requisite case is made out for passing off.

It is submitted that the reason as to why advertising slogans or brand taglines are usually not granted copyright protection is due to the generic use of words in such taglines. Brand taglines are often arrived at after much deliberation and exercise of intellectual activity and hence it may be argued to come under the ambit of originality and creativity in order to be treated as literary or artistic works.

Conclusion

In conclusion, it is submitted that a particular brand tagline may be accorded protection as a trademark if it satisfies the distinctiveness and non-descriptiveness criteria. In case of Tagline comprising of common words or generic phrase, it is through extensive use, advertising and campaigning that a tagline or slogan acquires secondary meaning to the extent consumers and the general public start associating it exclusively with the concerned brand or business. Therefore, proper documentation and detailed records regarding the use and advertising of brand taglines are essential for the purpose of preventing the dilution of goodwill created with the public.

It is also to be noted that brand taglines are usually not granted copyright protection due to the use of generic common-place words and the Courts are reluctant in considering them to be original literary or artistic works.

About the Author: Pratik Das, Legal Intern at Khurana and Khurana, Advocates and IP Attorneys and can be reached at abhijeet@khuranaandkhurana.com.

References:

[1] Section 2(zb), Trademarks Act, 1999

[2] 2007 (34) PTC 164 (Karn)

[3]Ibid at paragraph 11

[4]Ibid at paragraph 12

[5]Ibid at paragraph 16

[6]C. Nos. 15928-15929/2014

[7]2014 (59) PTC 421 (Del)

[8]Ibid at paragraph 10

[9]MIPR 2010 (3) 273 at paragraph 9

[10] Section 13(1)(a), Copyright Act, 1957

[11] 94(2001)DLT 30 at paragraph 70

[12]Ibid at paragraph 68

[13] 2012 (51) PTC 251 (Del) at paragraph 14