Tag Archives: trademark

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

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

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

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

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

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

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

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

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

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

References:

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

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

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

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

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

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

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

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

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

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

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

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

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

References:

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

[2] (1999 19 PTC 104)

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

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

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

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

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

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

Law On Internet Memes

Internet users in India spend half their time on social media every day. It is one of the most efficient platforms for communication yet the most exploited one. One such famous platform would be Facebook, an online networking site that mostly everyone is aware of. Similarly, internet ‘meme’ is also ubiquitous It is defined as “an idea, behaviour, style or usage that spreads from person to person within a culture.” These memes are a subset of the behaviour passed from one individual to another by imitation or other non-generic memes. In legal terms, it is a ‘derivative work’ and only the copyright owner has the legal right to create such work. Although, if the person claims to have made a “fair use” of the copyrighted work, it can be used as a defense under the provisions of the Copyright Act.

Now, lets come back to the debate as to whether memes shall be protected under the copyright and Trade Mark law or not. You may think that no one is the owner of such memes, rather it is just a creation of the internet but the Law may think differently as some memes do qualify for copyright protection and at some point, they were created by some person who could be the owner of the right. For instance, a meme called the “Grumpy cat” became so famous that it was turned into a business through selling books, posters, mugs, etc. in the name of “Grumpycats.com” and was granted a trademark for the same.

Even though a lot of memes are shared on the internet for the sole purpose of fun, there have been instances in the past that states otherwise. Just like in the case of Getty Images, an American agency which supplies images and illustrations that sent letters demanding license fees who exploited their copyrighted content was an image of “Awkward Penguin”, a photograph taken by George Moberly, a National Geographic photographer, for which Getty enjoys the licensing. Posting a meme on a personal blog (non-monetized) or a personal social network account might not be challenged. However, if it is for a commercial purpose, it might violate the copyright.

Assuming that these marks are registered in India, they will be governed by the Trade Marks Act. Now, if the image on a meme is being used on goods and services or for other commercial purposes, it would lead to infringement of the trademark under Section 29 of the Act which clearly states that a mark may be infringed by use of spoken words or their visual representation meaning that even a slight usage or any modification of that image on social media would result in infringement. However, this provision is only applied to registered marks and not unregistered.

Even though Copyright law in India does not specifically provide remedy in the case of parody, the owner of such artistic work can reach the Court for infringement of his right as any use of the Copyrighted work if,  it is  not a “fair use” can result to infringement leading to a lawsuit.

Even though its tempting to think that viral content is nothing but part of the web that is “owned by everyone”, there is still some source attached to the work and if such work amounts to copyright, the owner should be provided with the rights for the same. Memes are a rapid business and do not get immunity from the skirmishes of copyright and trademark, thus leading to more upcoming battles in court.

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

References:

[1] https://www.plagiarismtoday.com/2013/05/07/copyright-memes-and-the-perils-of-viral-content/

[2]https://www.washingtonpost.com/news/the-intersect/wp/2015/09/08/how-copyright-is-killing-your-favorite-memes/?utm_term=.64b3b3aa2474

[3] http://www.abajournal.com/magazine/article/do_memes_violate_copyright_law

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

 

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

Introduction

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

Brief Facts

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

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

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

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

Issues

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

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

Analysis

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

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

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

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

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

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

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

Ratio Dicidendi

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

Conclusion

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

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

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

References:

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

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

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

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

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

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

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

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

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

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

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

A Reminder for Online Retailers

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

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

The factual matrix of this case lies as below:

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

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

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

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

Arguments

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

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

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

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

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

Judgement

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

Conclusion

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

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

References:

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

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

Appointment of Chairman of the Intellectual Property Appellate Board

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

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

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

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

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

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

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

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

References: 

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

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

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

Time for Considering Territoriality Principle over Universality Principle 

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

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

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

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

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

Universality Principle on behalf of Appellant

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

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

Territoriality Doctrine on behalf of Respondent

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

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

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

Judgment

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

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

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

Analysis

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

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

Sources:

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

[2] 1996 (2) ARBLR 488 SC

[3] [1990] 1 WLR 491

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

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

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

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

Case background:

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

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

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

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

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

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

Judgement:

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

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

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

Present scenario and analysis:

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

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

Source:

[1]   MANU/DE/4642/2012

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

The Question of Internet Jurisdiction

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

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

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

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

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

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

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

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

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

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

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

CONCLUSION

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

Sources

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

[2] 326 U.S. 310 (1945)

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

[4] Burger King Corp v. Rudzewicz

[5] 952 F. Supp. 1119 (W.D. Pa. 1997)

[6] 465 U.S. 783 (1984)

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

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

[9] 2003 (27) PTC 265 (Del)

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

[11] CS (OS) No. 894/2008

[12] 2014 (60) PTC 452 (Del)

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

[14] MANU/DE/0443/2015

Brunei’s Intellectual Property Office Accession to Madrid Protocol

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

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

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

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

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

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

 

References

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

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

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

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

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