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

INTRODUCTION

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

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

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

EMERGENCE

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

Facts:

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

Held:

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

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

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

Facts:

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

Held:

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

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

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

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

CONCLUSION

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

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

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

SOURCES

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

Google Play Billing Policy: Whether Anti-Competitive In Nature

ABSTRACT:

The goals of both, namely the maximization of public welfare, can be compared in terms of how competition law and policy handle the process as well as to those of political democracy.[1] But because of the quick rise of e-commerce and the digital market, it has grown increasingly complex. The paper describes the entire situation by the way of taking an example of the contemporary Indian problem that occurred in relation to the Google Play billing system, contextualize it with the competition law and its current state, and draws attention to the shortcomings in the ruling itself.

INTRODUCTION:

Due to the rapid growth in field of e-commerce and digital market place there has been an insurgence of platform to facilitate the process and in turn gaining power from it. This new field is governed by multiple laws but the focus of the article is on the competition law which keeps the power of the platforms in check in order to preserve the right of freedom of choice and welfare of the consumer by keeping in check the competition in the marketplace.

The Google Play Billing System (hereinafter “GPBS”) in context to the digital market place of Google Play have been in spotlight as was fined for anti-competitive practice which was been followed. The GPBS has been rightfully charged by Competition Commission of India (hereinafter (CCI) and in this article after critically analyzing the facts, issues will lay down the judgement of the court, then point out the Main Factors which the Commission took aid in order to reach an ultimatum as well as substantiating it and then even pointing out the lacunae that even this judgement suffers from.  

ANALYSIS:

India has seen a drastic change in the technology and in the modern times due to increasing availability of electronic devices as smart phones, laptops, etc. with the supplement of the Internet has been the epicenter for the emergence of the e-commerce platform and mobile payment systems. Due to this emergence as the law changes with the change to the society so there has been changes, amendment and even addition of laws or legal provision governing the area of the digital market place. In Businesses operating in the digital market place in India have to comprise with multiple laws such as:

1. The Information Technology Act, 2000,[2]
2. The Indian Contract Act, 1872,[3]
3. The Consumer Protection Act, 2019,[4]
4. The Competition Act, 2002,[5]
5. The Payment and Settlement Systems Act, 2007,[6]
6. The Reserve Bank of India (RBI) regulations on digital payments,[7]
7. The Copyright Act, 1957,[8]
8. The Trademark Act, 1999,[9]
9. The Patents Act, 1970.[10]

But, this article focuses on the aspect of assessing the junction where the interfaces where two domains of completion law and the digital market place meets, in the recent times due to the fine imposed by the CCI against the Google for GPBS being anti-competitive in nature and impugned monetary fine of Rs. 936.44 crores as result of the case of XYZ vs Alpahabet Inc..[11]

XYZ v. ALPHABET INC.:

BACKGROUND:

There was a two-fold allegation made by the informants on Google as recognized by the commission, firstly was the mandatory use of the GPBS for purchasing apps as well as to conduct in-app purchases restricts the choice available to the app developers and also keeping in mind the 30 percent service tax which may be 15 in some cases which is mandatory to be given to Google under the GPBS for any purchasing of the app for the google play store and for ant in-app purchases as well. Secondly, was that the other mobile wallets and UPI apps are not accepted as legitimate payment methods in the Google Play payment system.[12]

Issue arose:

1. Whether making the use of Google Play’s billing system (GPBS), exclusive and mandatory by Google for App developers/owners for processing of payments for App and in-app purchases and charging 15-30% commission is violative of Section 4(2) of the Act?
2. Whether exclusion of other UPI apps/mobile wallets as effective payment options on Play Store is unfair and/or discriminatory as per Section 4(2) of the Act?
3. Whether pre-installation and prominence of Google Pay UPI App (GPay) by Google is in violation of Section 4(2) of the Act?

WHETEHR GPBS PRACTICE IS ANTI-COMETITICE IN NATURE OR NOT:

Yes, the GPBS system was anti-competitive in nature and the commission was right in its approach and holding them liable under 4(2)(a)(i),[13] 4(2)(a)(ii),[14] 4(2)(b)(ii),[15] 4(2)(c),[16] and 4(2)(e) of the Act.[17] and we can analyze each of the aspects discussed by the court while substantiating it even further:

GPBS:

GPBS is the proprietary billing system of the google, in which the app developer makes account with Google, and in this system the Google gets its “service fee” on all the app purchase or in-app purchase. In the due process of creating an account by the app developer with Google they have to agree to the DDA (Developer Distribution Agreement) and the DPP (Developer Program Policies) which clearly mandates the compulsory use of the GPBS.[18] Further, if seen in the Section 4 of the Google Play’s Payment Policy can be clearly inferred that the not only does it mandates the use of GPBS,[19] but in addition it also has an “Anti-steering provisions” which means it also restrict the ability of the app-developer to inform the consumer about in-app purchase from some elsewhere. There were number of factors as to why the GPBS system is anti-competitive in nature such as subsequently discussed.

DISCRIMINATORY PRACTICES:

Then Court finally highlighted the part of discriminatory practice which comes to light when we see that YouTube which is owned by Google does not use GPBS but YouTube is in connection with third-party payment processors directly, Google had given liberty to YouTube but not to the others who still have to follow the GPBS and have to pay the exorbitant rate of 15-30% service fee every time putting them at a disadvantage;[20] (cite) When we say discriminatory practice, we say so in the light of the practices which results in denial of market access in violation of provisions of section 4. (cite para 40 Arshiya Rail Infrastructure Limited Vs. Respondent: Ministry of Railways Arshiya Rail Infrastructure Limited vs. Ministry of Railway: MANU/CO/0076/2012). Also, the Supreme Court itself has interpreted denial of market access under Section 4(2)(c) widely, noting that denial of market access ‘in any manner’ would fall under its ambit, regardless of whether it is a denial of access to competitors or denial of access to players in vertically affected markets.[21] So the denial of market access used in this context is an umbrella term. Here, Google turning a blind eye to the YouTube in turn to increase their revenue allowed them engage with a third-party payment processor and like others they are charged significantly lesser fee then they themselves charge to others which ranges from 15-30%.

ACCESS TO DATA:

All the Google-owned services have access to the all data giving competitive advantage as a result of having access to this downstream competitors’ data set. Google would be able to use this information to enhance its offerings and more effectively target its potential clients. On the other side, the downstream rivals wouldn’t have access to the entire data set, which would hurt their ability to compete;[22] as can be inferred from the clause 9.2 of the DDA,[23] and also from the “Share usage & diagnostics information with Google” as explained on the Google Play’s Support page itself.[24] From the very insurgence of the digital marketplace access to data have been both an enabler and driver of competition and like any tool it serves the competitive as well as the anti-competitive services. There are companies like Google in at this very instance we can see that it misused their data access and companies not being careful not to abuse their control over the data will harm consumer welfare as well as limit the competition.

INNOVATION AND BARRIER TO ENTRY:

The GPBS has an adverse effect on the even though Google argues that GPBS as evident from its averments that it aids in levelling the playing field for app developers and stops monopolistic practices by app shops. On the other hand, while in reality as accepted by the commission as well GPBS stifles innovation by preventing developers from experimenting with fresh business models and sources of income.[25] The same argument is forwarded with respect to barrier to entry as it raises barriers to entry for competitors and inhibits developers’ capacity to provide alternative payment systems, Google’s requirement that app developers utilize its billing system reduces competition and choice for app developers and customers.[26]

UPI

There was another issue of UPI, Google has made only itself available to the intent flow technology while the other UPI only have access to the collect flow technology, to differentiate between in intent flow and collect flow in simple terms would be that, intent flow is a connected chain of steps, user-friendly and simple while collect-flow technology is a broken chain of steps which are disconnected with each other,[27] through this this Google was discriminated between developers of “similarly placed apps, equally placed transactions”.[28] While rejected the last contention as the option of pre-installation is available to all the others just because one utilizes it does not make it abuse of dominant position.

LIMITATION TO THE JUDGEMENT:

The main aim of the competition law is to maintain the following aspects:

1. Prohibition of anti-competitive agreements
2. Prohibition of abuse of dominant position
3. Merger control
4. Consumer protection

When any practice which is in contravention of any of the point and is having an adverse-effect on market competition is an anti-competition practice.[29]

With the rise of the e-commerce and digital marketplace there has been a sharp rise in anti-competitive practice like price-fixing, predatory pricing, Exclusive dealing, tying and bundling, abuse of market power.

As said by Ashok Kumar Gupta, chairman of Competition Commission of India that, “Digital markets are epicenters of technological innovation but lately they have become zones of “entrenched and unchecked dominance”,[30] all this has been possible due to the presence of lacunae in the act of competition law itself. Some of the lacunae are:

LACUANE 1: “RELEVANT MARKET IN DIGITAL MARKET PLACE”

The “relevant market” defined in Indian Competition law,[31] is based on the geographic region as in Section 2(s),[32] and the nature of product or service being offered as in Section 2(t),[33] which is ingenious only in case of the single side transaction, but does not take into account the interconnectedness of the sellers on each other which occurs in a multi-side transaction. There are substantial differences between a multi-side transaction and a single side transaction such as the unlike the traditional market where there was a seller and a buyer, here there can be multiple buyer as well as seller and may at times for one buyer to earn money there has to be involvement of other buyer, all of the people interact through a platform which is to say there is an intermediary role and there is a degree of the network effect, there are pricing models and even risk allocation.[34]

The biggest limitation to Indian Competition Law is the Multi-sided transaction as it is not possible to find the “relevant market” based on the available test, when looking at judicial procurements we see that courts have only recognized multi-sided nature of platform,[35] but have not adopted any means to aid the situation as can be seen from the subsequent judgement including Xyz v. Alphabet Inc.,[36] where to the CCI did not give any weightage to the multi-sided nature of the app store which connects the smartphones users to app developers just applying the tradition test of substitutability and geographic region just gave three separate relevant market and had delineated between market for licensable mobile operating system for smart mobile devices and the market for app store for Android OS.

Keeping in mind the past inconsistent judicial procurements with respect of “relevant market” in competition law ranging from cases such as Matrimony.Com Limited vs Google LLC & Ors,[37] Make My Trip case,[38] to contemporary cases such as Harshita Chawla,[39] Delhi Vyapar Mahasangh cases.[40]

LACUNAE 2: DETERMINATION OF DOMINANT POSITION AND ABUSE OF POWER BASED ON SHARES:

Market share measures the percentage of total sales or revenue in a market that a company controls, but it does not take into account other factors that can affect a company’s ability to exercise market power, such as barriers to entry, network effects, economies of scale, and access to data or other resources. Even though, in the judgement the court while accessing the case of Xyz v. Alphabet Inc.,[41] the court had taken into account other factors such as access to data, entry barriers, etc. but had clearly stated that the Commission is of the view that market share is one of the primary though not determinative parameters to assess dominance in a relevant market.[42] Accepting market share as a dominant factor to access the dominance in the market place can be very misleading in the current age witnessing the rise of e-commerce and digital market place as mentioned above.

CONCLUSION:

To sum up, the key takeaway from this article is that GPBS was anti-competitive in nature and is one of the major accomplishment of the CCI in identifying the issue and then delivering the judgement it in a very detail and a descriptive manner had discussed the issue while shedding light to the aspects of discriminatory practice, access to data and even to the effect of innovation and the barrier on entry, while also highlighting the second clubbed issue of UPI which was discussed then afterwards highlights the lacunae which the decision itself suffers from and through this highlights lacunae we can clearly see the way forward which is, accepting and understanding our own shortcomings which is that unlike other countries with competition law India still falls a bit short, India as a way forward just as a suggestion can take two different ways like:

1. Can pass a similar ruling as the seminal ruling of Ohio v. Amex, the CCI can take into account the feedback effects and competitive constraints in transaction and non- transaction platforms which is unique to the multi-side transaction,[43] or
2. Can either join or create something similar to the Digital Markets Act in the EU,[44] so that the there is a separate legislation to deal with digital market place altogether.

While at the current juncture though there is the Competition (Amendment) Bill, 2022, which a has passed both the Lok Sabha as well as the Rajya Sabha on March 29, 2023 and April, 3 2023 respectively and one of its key issue is analysing digital market, so the India may in the future successfully tackle issues such as which arose at the current instance.[45]

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

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[1] JSTOR: INDIAN COMPETITION LAW: GLOBAL CONTEXT, by B.S. Chauhan, published in Journal of the Indian Law Institute, July-September 2012, Vol. 54, No. 3 (July September 2012), pp. 315-323, at page 315,  available at, https://www.jstor.org/stable/44782475, (last visited 14^th May, 2023).

[2] The Information Technology Act, 2000.

[3] The Indian Contract Act, 1872.

[4] The Consumer Protection Act, 2019.

[5] The Competition Act, 2002.

[6] The Payment and Settlement Systems Act, 2007.

[7] Master Direction on Digital Payment Security Controls, Reserve Bank of India, available at, https://www.rbi.org.in/Scripts/NotificationUser.aspx?Id=12032&Mode=0, (last visited 14^th May 2023).

[8] The Copyright Act, 1957.

[9] The Trademark Act, 1999.

[10] The Patents Act, 1970.

[11] Xyz and Ors. V. Alphabet Inc. and Ors., 2022 SCC OnLine CCI 63.

[12] Xyz and Ors. V. Alphabet Inc. and Ors., 2022 SCC OnLine CCI 63.

[13] The Competition Act, 2002, § 4(2)(a)(i).

[14] The Competition Act, 2002, § 4(2)(a)(ii).

[15] The Competition Act, 2002, § 4(2)(b)(ii).

[16] The Competition Act, 2002, § 4(2)(c).

[17] The Competition Act, 2002, § 4(@)(e).

[18] Xyz and Ors. V. Alphabet Inc. and Ors., 2022 SCC OnLine CCI 63, ¶ 249.

[19] Google Play, Google Play’s payment policy: Google Terms and Services, § 4, Rights and Restrictions, available at, https://play.google.com/about/play-terms/index.html, (last visited on 14^th May, 2023).

[20] Xyz and Ors. V. Alphabet Inc. and Ors., 2022 SCC OnLine CCI 63, ¶ 29.

[21] Competition Commission of India v. Fast Way transmission Pvt. Ltd., Civil Appeal No. 7215 of 2014.

[22] Xyz and Ors. V. Alphabet Inc. and Ors., 2022 SCC OnLine CCI 63, ¶ 282, 284.

[23] Google Play Developer Distribution Agreement, clause 9.2, available at, https://play.google.com/about/developer-distribution-agreement.html, (last visited on 14^th May, 2023).

[24] Google Play Support page: “Share usage & diagnostics information with Google”, available at https://support.google.com/accounts/answer/6078260?hl=en, (last visited at 14^th May, 2023).

[25] Xyz and Ors. V. Alphabet Inc. and Ors., 2022 SCC OnLine CCI 63, ¶ 314.

[26] Xyz and Ors. V. Alphabet Inc. and Ors., 2022 SCC OnLine CCI 63, ¶ 186, 193.

[27] Xyz and Ors. V. Alphabet Inc. and Ors., 2022 SCC OnLine CCI 63, ¶ 354.

[28] Xyz and Ors. V. Alphabet Inc. and Ors., 2022 SCC OnLine CCI 63, ¶ 355.

[29] Competition Commission of India v. Bharati Airtel Limited and Ors. (2018) SCC OnLine SC 2678.

[30] Khurana and Khurana Advocates and IP Attorneys, The Antitrust issues in digital markets – Modifiable anti-competitive conduct of Artificial Intelligence, published at 12^th October, 2021, available at, https://www.khuranaandkhurana.com/2021/10/12/the-antitrust-issues-in-digital-markets-modifiable-anti-competitive-conduct-of-artificial-intelligence/, (last visited at 14^th May, 2023).

[31] The Competition Act, 2002, § 2(r).

[32] The Competition Act, 2002, § 2(s).

[33] The Competition Act, 2002, § 2(t).

[34] Business Model Analyst: Mutisidedx Platform Business Model, available at,  https://businessmodelanalyst.com/multisided-platform-business-model/, (last visited 14^th May, 2023).

[35] Vijay Gopal Vs. Big Tree Entertainment Pvt. Ltd. (BookMyShow) and Ors., 2022 SCC OnLine CCI 36.

[36] Xyz and Ors. V. Alphabet Inc. and Ors., 2022 SCC OnLine CCI 63.

[37] Matrimony.Com Limited vs Google LLC & Ors, 2018 SCC OnLine CCI 1.

[38] Makemytrip India Pvt. Ltd. MMT and Another V. Competition Commission of India and Others, 2022 SCC OnLine Del 4440.

[39] Harshita Chawla (informant) Whatsapp Inc. and Facebook Inc. v. Competition Commission of India, 2020 SCC OnLine CCI 32.

[40] Amazon Seller Services Private Limited, represented by its Authorized Signatory Mr. Rahul Sundaram v. Competition Commission of India, represented by its Secretary and Others, 2021 SCC OnLine Kar 12626.

[41] Xyz and Ors. V. Alphabet Inc. and Ors., 2022 SCC OnLine CCI 63.

[42] Xyz and Ors. V. Alphabet Inc. and Ors., 2022 SCC OnLine CCI 63, ¶ 164.

[43] IndiaCorpLaw: Delineating Relevant Market for Multisided Platforms: Transaction vs Non-Transaction Platforms, by Harshit Upadhyay and Sanigdh Budhia, publishe at October 26, 2022, available at, https://indiacorplaw.in/2022/10/delineating-relevant-market-for-multisided-platforms-transaction-vs-non-transaction-platforms.html, (last visited 14^th May,2023).

[44] European Commission: The Digital Markets Act: ensuring fair and open digital markets, available at https://commission.europa.eu/strategy-and-policy/priorities-2019-2024/europe-fit-digital-age/digital-markets-act-ensuring-fair-and-open-digital-markets_en, (last visited 14^th May, 2023).

[45] PRS Legislative Research: The Competition (Amendment) Bill, 2022, by the Ministry of Finance, available at, https://prsindia.org/billtrack/the-competition-amendment-bill-2022, (last visited on 14^th May, 2023).

Debate and Discussion over Film Title Copyright Are Highly Contentious

Introduction

Shepard Fairey, renowned for his pioneering stance in the early days of copyright legislation, articulated a powerful argument. He passionately contended that copyright regulations should be a wellspring of inspiration for creativity rather than a stifling impediment. In his view, the fundamental purpose of copyright was not to hinder but to cultivate the innovative spirit, igniting the flames of human imagination. Delving further into the realm of intellectual property protection, especially concerning integrated circuit (IC) layout designs, it becomes evident that a multifaceted shield is in place. This protective fortress encompasses various elements such as design patents, copyrights, trademarks, geographical indications, and the safeguarding of closely guarded trade secrets. However, a glaring void exists in the Indian legal framework, where the protection of trade secrets remains elusive due to the absence of well-defined regulations.

Copyright, as Fairey ardently championed, is a robust bastion that shelters a vast array of artistic expressions. Whether it’s the written word, the melodious notes of music, the captivating narratives of films, or the ethereal beauty of sound recordings, copyright extends its protective mantle over them all. Notably, it’s essential to differentiate between copyright and software patents. While software patents find their limitations concerning computer programs, copyright provides a sturdy fortress for creative works. In the realm of cinematic achievements, the endeavors of movie producers and authors are significant. Their relentless dedication to promoting their creations on a global stage, often culminating in prestigious awards, stands as a testament to their commitment. This pursuit of excellence, though, sometimes leads to the unique challenge of ensuring that movie titles, like any other creative work, are shielded from misappropriation, reducing confusion, and maximizing financial benefits. This distinction sets the stage for the core inquiry of this article, which probes into the intricate domain of whether movie titles are safeguarded by copyright rules.

Shepard Fairey’s vision of copyright as an enabler of creativity continues to resonate. In the labyrinth of intellectual property, whether through the protective aegis of copyright or the intricate dance of trade secrets, the tension between preserving creative ingenuity and nurturing it is an ongoing, dynamic dialogue. This article embarks on the journey of unraveling the nuanced layers of protection surrounding movie titles, aiming to provide clarity and insight into the complex interplay of creativity and legal safeguards.

There Is Copyright Protection For Movie Titles

A film’s name or label serves to distinguish it from other films. The title of the film is the first hint to the viewer that the dramatist has put a lot of thought into it. The film’s title correctly describes what could happen in the plot. The title distinguishes it from competitors and is one of the most essential factors in successful production and production companies. In the entertainment sector, registering titles with film organizations is standard practice. The title of a film is not considered to be a statement of an idea. The Copyright Act protects how ideas are conveyed rather than the ideas themselves.^[1] There is no copyright protection for ideas, and there is also no provision in the copyright rules that protects movie titles because copyright protection for ideas would hinder fresh invention and creativity.

What Is Its Economic Significance Intangible Property Rights Include Intellectual Property Rights?

These rights provide protection to the original creators/authors/owners. Just like any other tangible asset, intellectual property rights can be mortgaged, sold, leased, purchased, and licenced. If intellectual property theft isn’t reported, the original author/creator/owner will lose motivation and won’t be able to create another masterpiece. As a result, neither the author/creator/owner of the original work nor the government will be compensated. The government’s ability to improve the country solely through public funding, such as infrastructure development, will harm the economy. When you examine the intellectual property portfolios of the world’s industrialised nations, you’ll notice that they have a diverse range of intellectual properties that they may monetize for commercial development and economic success. If copyright is not secured, authors and artists will be unable to defend their work and prevent it from being misused.

Related Provisions

As we’ve just shown, the Copyright Act doesn’t prevent movie titles from being plagiarised. A trademark protects the brand name of any company. If the movie title is protected under the Trademarks Act of 1999, it can be protected from infringement if it is used without the owner’s express consent later, and if it isn’t, it can be protected under the act of passing off if the earlier user can be shown.^[2] The films’ titles are protected under the Trade Marks Act of 1999. The titles of the films are protected under Class 41 of the Trademarks Act of 1999, which covers entertainment services.

The Registration Of Titles By The Film’s Industry

Registration of titles with film organizations such as The Indian Motion Picture Producers’ Association (IMPPA) is a non-profit organisation that promotes filmmaking in India. It is sometimes known as the Association of Motion Picture and Television Program Producers (AMPTPP) or the Film Writers’ Association. The production of films in India is a common business practice in the entertainment industry, as previously mentioned. This is done in good faith to keep their film titles from being used without their permission. As stated in the preceding paragraph and further clarified in the following decisions, this practice is protected under class 41 of the Trademarks Act of 1999.

Trial Successes: Court Winning Cases

Association of Motion Pictures v. Fisheye Network Pvt. Ltd.

The plaintiff submitted a trademark application with the Association of Motion Picture and Television Program Producers and others in 2005 for the title “Thank You.” A title’s registration with an industry group does not guarantee that it will not be used by others. To qualify for statutory protection, the title must first be registered as a trademark. The plaintiff was aware that UTV had been using such a title since May 2005, and that it lacked copyright protection due to its lack of registration. If the court had issued an interim injunction at that point, the production house would have suffered losses.^[3]

Kanungo Media (P) Ltd. v. RGV Film

Kanungo Media (P) Ltd

The plaintiff, in this case, had previously developed a film called “Nistadbd,” which was later changed to “Nisshabd” due to astrological and numerological conditions. The defendant was also working on a film called “Nishabd,” which was slated to hit theatres in the next ten days. To realize his ambition of filming a film, the plaintiff had invested his entire life savings and received financial aid from friends, family, and relatives. The French government also gave the plaintiff a hefty monetary prize known as ‘FONDS SUD CINEMA.’ To meet one of the prerequisites for obtaining a grant for the film’s production, the plaintiff additionally brought on board M/S Artcam International, France as a co-producer. The producer petitioned the Central Board of Film Certification for clearance of the film title on 08/06/2005 through the Western India Film Producers Association, which was granted on 17/06/2005. The plaintiff claimed that the defendants’ use of the title was a deliberate attempt on the defendant’s part to smear his reputation by releasing a picture with the same title to profit solely from the title. The plaintiff claimed that he was entitled to the first use of the title since he applied for it before the defendant and that the defendant had no right to use the same title. The defendant has already invested a substantial sum of money in the creation and distribution of the picture.^[4]

According to the court, the plaintiff allowed the defendants to complete the film’s filming and post-production, and the plaintiff should have stopped them as soon as the defendants indicated that they were working on a film called “Nishabd.” The plaintiff will not be able to secure an injunction because it is far too late, and the defendants will incur huge losses. As a result, the lawsuit was dismissed, and the plaintiff was denied an injunction.

Bishwaroop Roy Choudhary vs. Karan Johar

On May 17, 2005

The plaintiff filed a trademark/title “KANK” registration under the Trade Marks Act Class 41. Neither party coined the term “KANK” on their own, according to the court. Long before the plaintiff and defendant pondered producing a movie out of it, people had been using the word “KANK.” Exclusive use permission would be granted only after a comprehensive investigation of who has used the mark for a longer period. The judiciary cannot employ any popular term entirely or exclusively. The defendant applied for trademark registration with the Trade Guild and the Registrar of Trademarks. He’d completed the film’s production, sold the music rights to Sony BMG Music Entertainment (India) Pvt. Ltd for Rs 5 crores, and sold a large number of copies in the market, so he was ready to release it in theatres. Because it would have resulted in severe losses for the defendant, the court could not grant the plaintiff an injunction at the time. When the plaintiff learned that the defendant was preparing to use the title for his new film through newspapers, trade guilds, or groups, he failed to utilize it and moved quickly. As a result, the plaintiff’s request for an injunction was denied, and the court ordered the distribution of the picture with the same name.

CONCLUSIONS

We’ve seen enough copyright infringements as a result of removing a film’s title. Rather than simply registering a film’s title with studios, it should always be protected as a trademark. To avoid losing sleep over the opponent’s rights and approaching the authorities when it’s too late, the injunction applicant must be watchful and keep a careful check on who is registering for the applicant’s film title with movie producers and the intellectual property office.

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

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^[1] Digital Media Law Project. (2020, June 17). Retrieved October 25, 2021, from https://www.dmlp.org/legal-guide/copyright

^[2] Copyright infringement. (2021, October 10). Retrieved October 25, 2021, from https://en.m.wikipedia.org/wiki/Copyright_infringement

^[3] Legal Service India. (2019, July 5). Copyright of Cinematograph Films and Sound Recording – Video, song, Film. Copyright of Cinematograph Films and Sound Recordings. Retrieved October 25, 2021, from https://www.legalserviceindia.com/copyright/Cinematograph-Films.html

^[4] Sharf, Z. (2019, December 18). The 20 Most Controversial Films of the Decade. Retrieved October 25, 2021, from https://www.indiewire.com/gallery/controversial-films-decade-2010s/

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

INTRODUCTION

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

WHAT IS A TRADEMARK?

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

WHAT IS DISTINCTIVENESS AND DESCRIPTIVENESS IN TRADEMARKS?

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

FACTS OF THE CASE

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

APPELLANT’S CONTENTIONS

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

RESPONDENT’S CONTENTIONS

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

DELHI HIGH COURT’S OBSERVATIONS

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

[Image Sources: Shutterstock]

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

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

ANALYSIS AND CONCLUSION

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

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

REFERENCES

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

Impact of AI on Trademark Law: Recent Developments and Future

Introduction

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

The Development of AI in Trademark Administration

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

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

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

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

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

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

Future Repercussions and considerations:

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

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

Conclusion  

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

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

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

Bibliography

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

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

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

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

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

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

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

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

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

Liability of Online Marketplace:

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

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

Liability of the Third-party:

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

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

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

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

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

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

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

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

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

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

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

References:

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

[2] Defines ‘Intermediaries’, Oxford Dictionary.

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

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

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

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

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

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

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

Re-evaluation of Descriptive Marks

Introduction

LT Overseas North America Inc and Anr., who are engaged in the rice processing, marketing and export business, filed a suit against KRBL Limited alleging that the defendant’s use of the mark “Zabreen Royal” for the manufacture, sale and distribution of Basmati rice constituted infringement and passing off of the plaintiffs’ trademark registrations, which include the word ‘Royal’ and associated marks. The plaintiffs claimed that they have prior adoption, long and continuous use, an established marketing network, significant global sales and meticulous quality control, which has led to their marks acquiring a strong reputation and goodwill.

The first plaintiff became aware of the use of the Impugned Mark through their sales team in April 2022, but attempts at reaching an amicable settlement failed. The plaintiffs argued that the use of the Impugned Mark would result in irreparable harm and injury to their business.

The defendant contended that the plaintiffs were estopped from seeking to prevent the use of the word ‘Royal’ per se, as they had previously stated in their reply to the examination reports during registration that they were only seeking protection for the word in a label/logo/device format. Additionally, the defendant relied on Section 17 of the Trademarks Act, which provides that protection is granted to the mark as a whole and not to its individual components. Moreover, the defendant asserted that the plaintiff did not hold any registration for the word mark “Royal.”

The defendant’s second argument, which was perhaps the central one, was that they were using the word ‘Royal’ in a descriptive/laudatory sense along with their mark “ZABREEN” to describe the royal quality of their Basmati rice, which has extra-long grains and a royal taste. Therefore, the defendant argued that the Impugned Mark was not likely to cause confusion.

The Court began its examination by addressing whether the term ‘Royal’ can be considered a descriptive mark. It outlined the two critical assessments established by McCarthy to determine if a trademark is descriptive or suggestive: [a] if connecting the mark with the relevant product or service requires imagination; and [b] if the mark is one that rivals must use to describe their product [paragraphs 36 and 37].

The Court utilized these tests to determine whether the word ‘Royal’ could be considered a descriptive mark in this case. It was concluded that the term ‘Royal’ does not fulfill the criteria of being a descriptive term when used for rice. This is because it requires a high level of imagination and cognitive process to associate the term ‘Royal’ with rice, which does not fulfill the first test. Moreover, ‘Royal’ is not a natural attribute or a synonym for rice, which means that competitors are not obligated to use it when referring to rice, thereby failing the second test.

The Court examined the defendant’s cases on descriptive terms and concluded that they were not relevant to the present case because in those cases, either the term was not a significant part of the mark, or it was not registered as a trademark. In the current case, neither of these conditions applied [paras 43-47]. The defendant’s assertion that ‘Royal’ was a term common to the trade was dismissed as it required a factual determination at trial [para 52].

Although the court concluded that the term ‘Royal’ was not descriptive of rice, it was considered laudatory in the defendant’s use of it [para 47]. The court also stated that while ‘Royal’ cannot be regarded as a descriptive term for rice, it is undoubtedly a term of praise [para 64].

It may be challenging to comprehend how a term can be laudatory but not descriptive, as the Court did not provide a clear rationale for distinguishing between the two types of marks. The defendant used the term “Royal” to highlight the positive qualities of its rice, such as its kind and quality, which are also descriptive of the rice. Thus, the Court could have either concluded that the term “Royal” was both descriptive and laudatory or that it was neither. In the former case, the plaintiff would not have been entitled to any rights over the word “Royal,” while in the latter case, the defendant would have been held liable for using the word “Royal” in a laudatory sense.

Conclusion

Returning to the verdict, the defendant presented a proposed packaging to address the court’s and plaintiff’s concerns. The Court ruled that the proposed packaging prominently displayed the term ‘Zabreen’, sufficient to protect the defendant from liability. Nevertheless, the current packaging emphasizes the term ‘Royal’ and was thus deemed to cause dilution and susceptible to injunction during the trial [paras 74-75]. However, the Court ruled that the defendant’s use of ‘Royal Zabreen’ would be allowable if it changed its packaging [para 76].

Overall, the judgment provides a useful analytical framework for assessing descriptive use. However, the ambiguity in distinguishing between descriptive and laudatory use, as well as between descriptive use and the applicable defenses, is a source of concern.

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

References

• https://spicyip.com/2023/04/delhi-high-court-offers-an-evaluation-of-the-meaning-of-descriptive-and-laudatory-marks-but-whats-the-difference.html
• http://164.100.69.66/jupload/dhc/NAC/judgement/25-02-2023/NAC24022023SC3472022_143441.pdf

Issue OF USE OF Similar Trademarks

Introduction

A trademark is the most important thing to protect the identity of a brand, among the many other intellectual properties. A trademark makes a brand different from other brands selling the same product. The use of deceptively similar trademarks was usual for different classes of goods or services, and it was never a major source of concern. For instance, the MARUTI trademark for automobiles is also used for tissue papers, hosiery, and hardware products. Such independent use of the same or a similar trademark for goods belonging to different classes was acceptable and has not caused any conflict or overlap between the relevant customers. The courts, however, continued to hold the position that it was improper for similar-looking trademarks to exist for products or services belonging to the same class.

[Image Sources : Shutterstock]

However, following the recent judgement of Supreme Court in Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd. Civil Appeal No. 2943-2944 of 2018, the same or misleadingly similar trademark can now be used even for products belonging to the same class as long as they are visually distinct from one another.

Case Law

Nandhini Deluxe vs M/S. Karnataka Cooperative Milk Producers Federation LTD.

on 26 July, 2018

Appellant – Nandhini Deluxe

Respondent – M/S. Karnataka Cooperative Milk Producers Federation Ltd.

Bench – Ashoke Bhushan and A. K. Sikri

Facts

According to the facts of the case the respondent Karnataka Cooperative Milk Producers Federation established its business of selling milk in 1985 with the brand name of Nandini and also got it registered under class 29 and 30. Whereas the appellant Nandhini Deluxe was doing a business of running restaurants and it adopted the brand name Nandhini in 1989. But when the appellant applied for getting his trademark registered for the various food items sold by his restaurant; it was opposed by the respondent on the grounds that the Appellant’s mark is very similar to his mark and may be deceptive in many situations5. Also, it was contended by the respondent that it violating section 9(2)(a) and section11(1)(b) of the Trade Marks Act. The case firstly went to Deputy Registrar of Trademark where it was contended by the respondent that the respondent was using this trademark since 1985 and that too not only in Karnataka but in six other states. So, there is a possibility that Nandhini Deluxe might use this brand name for personal monetary benefits. It was also contended that the word Nandhini was not an invented word as both Nandini and Nandhini were names of cow according to Hindu Mythology and according to section 9 a generic word cannot be registered as a trademark unless they have acquired distinctiveness. Whereas the Appellant contended that the respondent is dealing with only dairy products but the appellant is dealing in many types’ products. So, there is no violation of the Trademark rights of the respondent. Hence the Registrar was of a view that the word Nandhini is not creating any kind of confusion in the consumers mind as appellant was a continuous user of this brand name from a long time. Then the matter went to IPAB (Intellectual Property Appellate Board). Where the board was of a view that the mark Nandini was used by the respondent since a long time and the mark Nandhini is very similar in pronunciation in the local language. So, there is a possibility that it can create confusion in a consumer’s mind. Therefore, here the decision went in favour of the respondent. After this the case went to High Court and high court upheld the decision of IPAB without making any changes.

Judgement

Finally, the matter came to Supreme Court. Here the counsel on behalf of the appellant contended that both the High court and the IPAB had wrongly interpreted section 11 of the Trade Mark Act, 1999. The counsel also said that as both the appellant and respondent are selling different goods so there is no possibility of confusion among the general public. On the other hand, the counsel on behalf of the respondent contended that as both the names ‘Nandini’ and ‘Nandhini’ are very similar. Therefore, it is a possibility that it can create confusion for the customers of respondent. So, after listening arguments from both sides the court came to a conclusion, that as both the trademarks have different visual appearance and both the trademarks are used for different products. So, there is very less possibility that it can create confusion among the general public. The Supreme court also used the precedent laid down in the case of Vishnudas v/s Kushandas v/s The Vazir Sultan Tobacco Ltd6. Where the brand name Charminar was in question which it was used by two brands selling two different products and finally both the brand got registered. The second precedent used by the court is from the case of National Sewing Thread Co. v/s James Chadwick and Bros.7, in which the court noticed that as the visual appearance as well as the product sold under both the trademarks are different so they cannot be barred from registering their trademarks. The court also observed that the appellant started using the trademark ‘Nandhini’ in the year 1989, which is just four years after the respondent had started using his trademark ‘Nandini’. There is no evidence available to prove that by the year 1989 the respondent had acquired distinctiveness with respect to his trademark. So, finally Supreme court quashedthe order of the High court, and allowed the appellant to get his trademark ‘Nandhini’ registered for all the products other than milk and milk products.

Analysis

The judgement can be a boon for the businesses who are facing problems in getting their trademarks registered. Just because some business had already got their trademark registered with the same name but for different product. So now even those businesses can get their trademarks registered. Also, after this judgement a registered trademark cannot oppose the registration of another trademark of the same class but for different product, just because it has the same brand name. The judgement also gave a clarity that no business or trade can enjoy monopoly over an entire class of goods unless that business or trade deals with all the products falling under that class. Also, if two trademarks are visually different which are used for different products then they cannot be called deceptively similar.

The case also highlights the lack of practical approach of our judicial system when it comes to the cases related to trademark. As we can see in this case both the IPAB and the High court felt no need to rectify the flaws in the Trademark Act, 1999 and make it easy for many businesses to get their trademarks registered and set a good precedent for the future case which was later done by the Supreme court. They were also unable to consider some important piece of facts which were later considered by the Supreme court. However, the Deputy registrar was on the right track from the beginning and he gave the right decision at the first hearing itself. Therefore, this is a landmark judgement in the history of Trademarks in India and it has set an important precedent for the future cases.

CONCLUSION

A trademark plays an important role in protecting the identity of a company and help it to earn profit in the market by creating a unique identity of the company even though it is selling the same product as hundred other companies in the market. The case of Nandhini Deluxe vs M/S. Karnataka Cooperative Milk Producers Federation LTD. explained us how even if two companies have same trademarks and they are dealing with same class of products then also they can get their trademarks registered only if they are dealing with different products and have different logos. This decision came as a boon for the businesses having similar trademark as that of some other businesses and therefore it is a landmark judgement in the history of trademarks in India. However, the courts shall adopt a more practical approach while dealing with cases related to trademark. Also, it is important to speed up the justice delivery process. As we can see in this case where the matter gets decided after more than 25 years of filing the appeal. Lastly it important to make changes in the Trademark Act, 1999 because after this judgement people might try to use names of big and well-known brands to sell some other products like using brand name of Jaguar to sell T-shirts. Hence it can directly affect the credibility of the brand. Therefore, it is important to make changes in the legislation to protect the credibility of these well-known brands.

Author : Archita Dubey, Second year student, NMIMS Kirit P. Mehta School of Law,  in case of any queries please contact/write back to us at via email chhavi@khuranaandkhurana.com &  IIPRD

REFERENCES

• Vishnudas Trading Company v. Vazir Sultan Tobacco Company Limited [(1997) 4 SCC 201]
• National Sewing Thread Co. vs James Chadwick and Bros, AIR 1953 SC 357
• Nandhini Deluxe Vs Karnataka Coop. Milk Producers Federation Ltd., 2018 SCC Online SC 741
• Sumathi Chandrashekaran, Nandini Vs Nandhini: A Milky Concoction – Intellectual

Property – India Welcome to Mondaq (2018),

https://www.mondaq.com/india/trademark/737904/nandini-vs-nandhini-a-milkyconcoction

Identification Of Trademarks

INTRODUCTION

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

IDENTIFICATION OF TRADEMARKS

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

[Image Sources : Shutterstock]

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

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

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

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

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

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

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

CONCLUSION

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

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

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

REFRENCES

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[i] WIPO

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

Chain of Evidence in infringement of Trademarks

Introduction

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

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

Evidence in Trademark infringement case

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

There are certain grounds of registering a trademark

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

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

Facts

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

Chain of Evidence Presented

By the Plaintiff

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

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

By the Defendants      

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

Judgment

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

Conclusion

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

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

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

[2] 1992(1) ARBLR 417 Delhi