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

INTRODUCTION

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

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

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

EMERGENCE

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

Facts:

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

Held:

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

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

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

Facts:

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

Held:

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

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

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

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

CONCLUSION

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

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

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

SOURCES

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

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

INTRODUCTION

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

WHAT IS A TRADEMARK?

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

WHAT IS DISTINCTIVENESS AND DESCRIPTIVENESS IN TRADEMARKS?

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

FACTS OF THE CASE

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

APPELLANT’S CONTENTIONS

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

RESPONDENT’S CONTENTIONS

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

DELHI HIGH COURT’S OBSERVATIONS

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

[Image Sources: Shutterstock]

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

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

ANALYSIS AND CONCLUSION

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

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

REFERENCES

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

Compulsory Licensing in India –

Navigation Intellectual Property and Access to Essential Medicines during COVID-19

India’s use of compulsory licensing during the COVID-19 pandemic underscored the delicate balance between intellectual property rights and public health emergencies. This approach enabled the government to authorize the production of patented drugs or vaccines, addressing the urgent need for affordable healthcare solutions. The move highlighted the crucial interplay between public health and intellectual property law in times of crisis.

Introduction

Compulsory licensing in simple terms will be described as middle path to maintain a balance between Patent rights and access to live saving mechanism. When a government allows a third person to use the patented product or process without the consent of the patent holder in circumstances enumerated by the government.

To address access challenges in the context of medicines like treatments for HIV/AIDS, hepatitis C, and cancer, governments have turned to compulsory licenses. This legal measure gained prominence when governments sought to overcome patent barriers to facilitate the importation or production of generic antiretroviral treatments for HIV/AIDS in the early 21st century. Over the past two decades, compulsory licenses have been considered or employed by countries almost a hundred times for various medicines.

Fast track patent Grant mechanism

Due to COVID fast track patent grant mechanism was introduced, usually patent applications may take a considerable amount of time to be examined and approved under appropriate circumstances. In India patent grant usually takes 3-6 years from the date of application filling

There are 4 steps in usual process

• Filling and publications
• Searching and examinations
• Filling response to examination report
• Decision of the examiner

As a breakthrough in the fight against the slow moving process of patent grants, the Indian Government brought into force, Patent (Amendments) Rules 2016 and incorporated under Rule 24C of Patent (Amendment) Rules 2019.

The existing provisions of these rules permitted applicants to submit a request for a swift examination of their patent application in accordance with Rule 24C of the Patent Rules 2003.

Only If

The Applicant fell under the category of Startup

        Or

An application had indicated India as the competent International Searching Authority (ISA) or it was elected as an International Preliminary Examination Authority (IPEA) in the corresponding international application

The Main Objective of Compulsory Licensing are

• Dealing with business practices or the disregard of patent regulations especially when they fail to meet the needs of our country.
• Making sure that patients can access patented medicines even if they are too expensive or not readily available.
• Allowing the public to use patents, for commercial purposes.
• Granting permission for licenses in cases where patent holders refuse to license producers, including those within our country.
• Managing the possibility of shortages in stock.
• Protecting health in situations, like emergencies, urgent circumstances and epidemics.

What are the provisions under 84-92 of the Indian patent act 1970.

Under the Indian Patent law, Compulsory Licensing have been dealt with under Chapter XVI of the Indian Patent Act,1970.

Under Sections 84-92 of the Indian Patent Law, it further mentions the Perquisites.

Applying for Grant of Compulsory license

 Section 84 of the Indian Patent Act allows any interested party, including the license holder, to apply to the Controller for a compulsory license after three years from the patent’s grant. This application can be based on the fulfillment of the following conditions:

    (a) that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or

   (b) that the patented invention is not available to the public at a reasonably affordable price, or

   (c) that the patented invention is not worked in the territory of India

Moreover, license granted on the accountability and ability of the applicant’s work to the public Advantage. Nature of the invention and measures taken by the patentee to make full use of the invention.

Section 92(1) of the Indian Patent Act states that

In situations of national emergency, extreme urgency, or for public non-commercial use, the central government may grant compulsory licenses for sealed inventions by issuing a notification in the Official Gazette.

After the notification has been issued, any interested party may apply to the Controller for a license. The Controller will then grant a license to the applicant, along with appropriate terms and conditions.

Amid the COVID-19 outbreak, MSF has been consistently urging the use of flexibilities provided by the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement of the World Trade Organization (WTO). These flexibilities include the use of compulsory licenses and government-use licenses, which can address the ongoing issues. To tackle the severe impacts of the pandemic, MSF has been advocating for additional measures to be adopted by WTO and its member countries. These measures should temporarily halt the enforcement and application of relevant intellectual property (IP) to ensure uninterrupted production and supply of essential COVID-19 health technologies throughout the pandemic, until global herd immunity is achieved.

Article 31(b) waives the need to obtain authorization from the right holder of a patented product

There were certain limitations of Compulsory licensing during pandemic

• It may invite unwanted pressure
• It requires case by case approach
• It does not provide an effective remedy for emerging and evolving patent barriers
• It must be used primarily to supply in domestic market

Conclusion

It is within the authority of countries to issue compulsory licenses for essential health technologies. However, in order to ensure unobstructed access to medical tools for COVID-19, they should consider temporary automatic measures such as the TRIPS waiver proposal initiated by South Africa and India. This proposal temporarily suspends certain obligations related to the granting and enforcement of intellectual property on essential health technologies. It provides a crucial legal option to address monopolies on intellectual property during a pandemic. It is recommended that all governments support and adopt this initiative.

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

References:

• https://intellectual-property-helpdesk.ec.europa.eu/news-events/news/compulsory-licensing-india-and-changes-brought-it-trips-agreement-2021-10-12_en
• https://www.iisd.org/articles/policy-analysis/trips-waiver-negotiations-mc12
• https://msfaccess.org/compulsory-licenses-trips-waiver-and-access-covid-19-medical-technologies
• https://www.ncbi.nlm.nih.gov/pmc/articles/PMC7242884/

Pharmaceutical Trademark And Its Conflict With Trademark Law

Out of the many trademarks registered every year, the Indian pharmaceutical industry accounts for a major portion compared to the other sectors. The nature of the relationship between consumers and pharmaceutical companies demands that trademarks assigned to this industry conform to a strict standard of assessing similarity. Herein, the author attempts to demonstrate how the rule of trademark law i.e., the ‘Anti–Dissection’ rule conflicts with one of the similarity tests of trademark law i.e., the ‘Dominant mark’ test. By shedding light on the two contradictory concepts in trademark law, it is necessary to consider whether the Court’s approach in assessing deceptive similarity helps to maintain the standard in adopting pharmaceutical trademarks.

‘Anti – dissection’ rule v. ‘Dominant mark’ test

According to the World Intellectual Property Organization (WIPO), trademarks are the distinguishing factor between products available in the market. They are the sign/mark of a particular brand and act as the source of origin for the product. In 2014, the case of South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. [2014] discussed both the concepts in its ruling. The Delhi High Court firstly touched upon the ‘Anti-dissection’ rule (“the Rule”) which explains that a trademark must not be separated into parts but analyzed as a whole. The inference of an ordinary man and his imperfect recollection is the foundation at which any kind of deceptive similarity is detected in a trademark and hence, such an ordinary man would not consider breaking down a mark at the time of purchase. On the other hand, the ‘Dominant mark’ test (“the Test”) originated from judicial pronouncements. The prominent part of a trademark that attracts the customer or helps in identification can be said to be the dominant part of the mark. The Court can set apart the dominant portion of the mark and verify if the opposite party’s usage of the said mark is an act of infringement. It is notable to mention that the Court in this very case delivered a peculiar explanation stating that the Test simply supports the Rule and thus, both are complementary to each other. It was held that in a holistic perspective, the two opposing concepts intersect to determine the deceptive similarity in pharmaceutical trademarks. The Rule finds its relevance in Section 15 and Section 17 of the Trade Marks Act (1999) while the Test is not recognized. It is, however, noticed that the practice of using the Test is quite common and referred to by the Courts in assessing pharmaceutical trademarks time and again. Thus, the existence of such contradictory concepts may lead to arbitrary decisions.

Public interest in pharmaceutical trademarks

As part of their trademarks, pharmaceutical companies add a suffix or prefix to their line of products. For instance, in Mankind Pharma Ltd. v. NovakindBioSciences Pvt. Ltd. [2021], the plaintiff’s products were coined with the suffix ‘Kind’ (Dexakind, Metrokind, Dentakind, etc.).Thus, the defendant was restrained against using the same suffix as it had the potential to deceive the customers and allow the defendant to piggyback on the plaintiff’s established reputation.[4]In Sun Pharma Laboratories Ltd. v. Ajanta Pharma Ltd. [2018], the Court placed nutraceuticals in the same class as pharmaceuticals and restrained the defendant from using the mark‘GLOTAB’ as it shared the same prefix as the plaintiff’s mark ‘GLOEYE’.

The addition of a suffix or prefix either slightly alters the mark or simply creates a word that is interchangeable in a consumer’s mind. The essence of trademark law is to confer an exclusive right upon the registered proprietor or in some cases, the prior user of the mark or if the mark has acquired distinctiveness and secondary meaning. It helps the proprietor to build a reputation and direct his consumer base towards his brand. Pharmaceutical trademarks with a similar suffix or prefix not only allow another party to bring on a case of infringement but also poses the grave possibility of customers purchasing the wrong product.

Herein, the focus on pharmaceutical trademarks is to acknowledge the growing number of misleading pharmaceutical trademarks and their direct nexus to the public interest. The need to strike a balance is not limited to the parties alone but the general public as well. The degree of caution must be prioritized and must not be misused at the plight of an unsuspecting customer. It was observed that visually and phonetically similar marks, for example, GENTAC and ZANTAC can be mixed up and cause irreversible effects on the customer who is assumed to be an ordinary man with imperfect recollection. The Court was in favor of the plaintiff and restrained the manufacturing and production of GENTAC. Yet again, the suffix ‘TAC’ can be a mark of confusion or clarity for the public. The same Court also highlighted the issue of pharmaceutical trademark confusion among the general public. In a country like India, with the general masses usually unaware of the intricacies behind pharmaceutical products and let the simplicity of the terminologies affect their purchases, the scope of the fault increases exponentially. While this invites confusion and leads to misapprehension by the consumer, the issue can be dealt with with stringent measures to adopt distinctive marks. Since the likelihood of similarity in the names of certain medications can prove to be fatal to the consumers, pharmaceutical trademarks must be placed at a higher pedestal.

Conclusion

The obscure view was taken by the Courts concerning the concepts prompts future rulings that may affect the way pharmaceutical trademarks are dealt with. The ‘Anti-dissection’ rule enshrined in the Trade Marks Act (1999) encourages to look at trademarks as a whole. However, it can be an unrealistic expectation in the pharmaceutical industry. The use of a similar mark in the pharmaceutical market can be disadvantageous to more than one party. The landmark case of CadilaHealthcare v. Cadila Pharmaceuticals[2001] catered to the idea that a stricter approach towards pharmaceutical trademarks is necessary and a revisit to the same would be useful.

Author: Isabel Roy- a student at School of Law from NMIMS (Bengaluru), in case of any queries please contact/write back to us via email vidushi@khuranaandkhurana.com or contact us at Khurana & Khurana, Advocates and IP Attorney.

The Law on Cybersquatting of Domain Names in India

Domain names play an important role in the representation of a business with respect to its goods or services, and often also help in locating the country of business. As observed in Satyam Infoway Ltd. v. Sifynet Solutions Ltd. (2004), domain names are not simply internet websites but are business identifiers. Due to this requirement, they must be unique in nature and follow the tests for distinctiveness under the Trade Marks Act, 1999.

With the growth of e-commerce, however, proprietors of trademarks often face the notorious practice of cybersquatting of domain names. The difficulty with domain name disputes involving cybersquatting is that there is no mechanism in place to prevent it. Unlike trademarks which can be registered, domain names do not require proof of ownership, and only need to be purchased. The current regime therefore makes it convenient for cyber squatters to simply purchase a domain name and wait for the proprietor to take action against it. The intention of cybersquatting is to earn money through the sale of such domain name to the owner who might have genuine or bona fide interest in the mark.

[Image Source: gettyimages]

An important case which shaped the course of cybersquatting disputes was Arun Jaitley v. Network Solutions Private Limited and Ors. (2011). Here, Mr. Arun Jaitley wished to register “www.arunjaitley.com” as his domain; however, he found it to have been already registered at the time. The respondents’ website also stated an exorbitant price in the range of $11,725 – $14,475 to procure the domain name. The plaintiff contended monetary gain of defendants to be the sole purpose behind the domain, and that the registrars of the domain names were acting in collusion with each other to deliberately defeat the rights of bona fide rightsholders in a domain name. The court observed that the name Arun Jaitley to be a popular and distinctive enough name to fulfil the requirements of a mark. Considering the elements of passing off namely, reputation, misrepresentation, and damage to goodwill, the court held that the law of passing off applies to domain names including those with personal names.

However, a major issue with respect to domain names is the absence of a preventative or blocking mechanism. Unlike conventional trademarks which involve antecedent rights, protection against violation of domain names is a remedial right i.e., arising only after its violation and compensated by way of relief. Along the same lines, the Bombay High Court in Hindustan Unilever Limited v. Endurance Domains Technology (2020) noted that the domain name Registrar cannot blacklist or block a registered domain name. One of the reasons given was that a domain name is not owned by anyone, but are in use upon registration and payment of fees for stipulated period of time. There is no human element involved in assessing their legitimacy. The court did note that a domain name can have its registration suspended, but continued suspension cannot be imposed. Therefore, the only remedy available to the bona fide rightsholder is to approach the court.

In a recent case, A WIPO panel’s investigation of marks (Tata vs TAATAS) indicated that merely because a mark is well-known and that there is a possibility of bad faith is not conclusive evidence of cybersquatting. This becomes especially relevant where the dispute, as in this case, is between marks being used it two separate countries. The Panel however did note that in case of domain names, usage in different countries it itself would not preclude the proprietor from claiming trademark protection in another country as the internet is a global medium, which makes it sufficient for a proprietor to demonstrate rights in a different jurisdiction.

Conclusion

The judicial stance on cybersquatting is fairly new, and there are several problems to tackle. For example, unlike conventional trademarks, domain names may be difficult to distinguish in in case of different goods or services even belonging to separate trademark classes. The judgement of the Bombay High Court in HUL leaves the scope of protection far too narrow for a trademark. Currently, the regulation of domain names is done through the World Intellectual Property Organization (WIPO) and the Internet Corporation for Assigned Names and Numbers (ICANN), which has also adopted WIPO’s Uniform Domain Name Disputes Resolution Policy (UDNDR). As seen in the Arun Jaitley case, the Court can enforce the ICANN rules to transfer a domain name from the mala fide to bona fide rightsholder. Nonetheless, the law on cybersquatting in India still fails to address registration of domain names that are prima facie non-distinctive, and decides matters on the basis of bad faith registration.

Author: Tamish Kumar – a student of Symbiosis Law School, currently an intern at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at sudhanshu@khuranaandkhurana.com.

Trade Secret Vs Patents

Intellectual Property Rights (IPRs) are the intangible assets created by the human mind. The governments have taken immense steps by creating legal frameworks to protect these assets through various means intended for the benefit of the innovator for disclosing his / her invention. This includes the offering of monopoly to the innovator.

_{[Image Credit: Shutterstock]}

The widely accepted and known IPRs are patents, trademarks, copyrights, and geographical indications, which are protected through statutory laws. This blog discusses the relatively lesser-known IPR, “Trade secret” and how it differs from the Patents.

Trade Secrets:

The main aim of the IPR laws is to promote new technologies, artistic expressions, and inventions while advancing economic growth. However, it is always not feasible to protect the company’s inventions / intellectual assets through patents alone. Trade Secrets are of great value in these circumstances and offer to protect confidential information, which is classified as a secret having high commercial viability. Examples of trade secrets include secret formulae / recipes like KFC, Coca-Cola, etc.

Since no registration or filing requirements are in place for trade secret protection, there are high risks associated with the trade secrets, particularly when the secret in divulged to a third party. Unauthorized copying and duplicate products/processes are the major impact factors that would also result in a severe economic impact on the actual owner of the Trade secret. Therefore, the company has to take greater measures on its own to protect the confidential information to maintain the secrecy to the fullest extent possible.

Trade secrets offer the profitable option for protection since it does not have to fulfil the governmental regulations like applications or registrations. Further, they also offer the companies many advantages like perpetual monopoly until the secret is divulged to a third party. However, they are considered to be the weakest of the IPR protections since it may lose its protection when there is a failure in the face of the company to take appropriate/reasonable measures to maintain the secrecy.

Patents:

Patents on the other-hand offer protection through monopoly for a limited period i.e., normally 20 years for the disclosure of the information to the public. Since, competitors have access to the products, manufacturing processes and / or formula after a patent request is filed, it promotes healthy innovation competition and would result not only in the economic significance but also results in technological advancements.

However, the monopoly for a period of 20 years offers to exclude the others from making, using, selling the invention without the consent of the patent owners. Any violation of the above would ensue in infringement of the protected inventions and would result in the costly litigations that might result in injunctions, royalties, damages, etc. Hence, companies would always take necessary legal steps like licensing, assignments, etc. before practicing the protected inventions. These will ensure the protection of the economic interests and growth of the innovator companies. Further, patent protection enables the innovator to gain larger market shares, control competition, etc.

Additionally, patenting involves regulatory processes like filing and registration with stricter norms; they offer the highest protection to the inventions by stricter enforced under the law.

Author: Govindhaswamy Srinivasan, a Principal Associate – Patents at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at support@ipandlegalfilings.com

How To Recognize Well-Known Trademarks In India

Well-known Trademark plays an important role in global markets and in identifying symbols and sign that are widely known to the significant general public and enjoys a fairly high reputation. The first time Well-Known trademark was discussed was in the Paris Convention of Industrial property in 1883, wherein the said convention set out certain guidelines for protection of well-known trademark but they did not lay down any procedure per se and hence left it to the signatory countries to make their own rules and regulations for registration of such marks. All the countries globally have accepted the significance of Well-known Trademark including India.

India has given well-known Trademark exceptional rights over registration of identical or deceptively similar marks and also against their abuse. The law makers in India have made specific provisions for safeguarding the Well- known trademarks in the Trademark Act of 1999 and the Trademark Rules of 2017, as earlier the well- known trademarks were protected under Common law from where the passing off was formulated.  Well known trademark is defined under the Trademark Act, 1999 (‘the Act’) as

 “in relation to any goods or services, a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”[1]

India has been protecting well-known trademarks from a very long time and before having it defined under the Trademark Act of 1999, India was following common law to protect the same.  The Trade and Merchandise Marks Act, 1958 did not provide for any specific provisions under which Well-Known Trademarks was defined, and it was only protected under passing-off.  Furthermore, there have been judgments by various High Courts in India, which provided for protection of the same:

There are many cases In India for protection of Well-known Trademark and one of the most famous cases was of Daimler Benz Aktiengesellschaft & Anr v. Hybo Hindustan[2]. In this case, the Plaintiff was a manufacturer of Mercedes Benz cars, and the Defendant was using the mark BENZ for selling its undergarments. The Court in deciding the case acknowledged the logo of the plaintiff as a well-known trademark and hence restrained the Defendant from using the impugned mark by stating that there was no valid reason as to why the defendant would adopt the name “Benz”, which is associated with one of the finest engineered cars in the world and has a trans-border reputation and goodwill.

In another case of Rolex Sa v Alex Jewellery Pvt. Ltd. & Ors.[3], the Plaintiff filed a case against the defendants who were dealing with artificial jewellery, and using the trade name “Rolex” associated with the plaintiff. The court held that the plaintiff’s trade mark was a well-known trademark since the general public using watches recognize the trade name Rolex and the defendant using the same name for dealing with artificial jewellery would create confusion in the minds of the general public and might create an assumption that the products are those of the plaintiff company. Hence, the court granted injunction against the use of the trade name Rolex by the defendants. 

In Microsoft Corporation v Kurapati Venkata Jagdeesh Babu,[4] the Delhi High Court held that the mark MICROSOFT was a well-known mark since it is being used and known to most of the public throughout the world, while also considering extensive evidence in relation to advertising and publicity for the mark in India. The court held that the defendants were not allowed to use the same mark “either as a trademark or part of its trading style/corporate name in relation to similar or dissimilar business as the said trademark has got a unique goodwill and reputation”.

PROCEDURE OF REGISTRATION

Before the new Trademark Rules of 2017 came into force, the Registry had made a list of well-known Trademark and uploaded on the website of Trademark Registry, but after the New Rules were introduced in 2017 March for registration of well- known trademark, the registration has to be done by filing an application online to register mark as Well- Known mark.  These New Rules help in determining and declaration of Well-known Trademark.

I. To determine whether the mark is Well- known or not, the registry  will consider following things[5]:

1. That the general public has knowledge about the said mark and are able to recognize the alleged well known mark and the recognition obtained by way of promotions.
2. The duration, extent and geographical area of any use or promotion of that trademark.
3.  The record of successful enforcements of the rights in that trademark, in particular the extent to which the trademark has been recognized as a well known trademark by any Court or Registrar under that record.
4. The number of actual or potential consumers of the goods or services.
5. The number of persons involved in the channels of distribution of the goods or services.
6. The business circle dealing with the goods and devices to which the trademark applies.
7. Wherein a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well known trademark for registration under this Act.

Section 11 of the Trademark Act, 1999 provides protection of Well- Known Trade mark and protection for the marks which are registered in good faith.

II. Filing a Mark as Well- know Trademark in India

According to Rule 124 of the Trademark Rules, any person can apply for Registration of Well- Know Trademark. But there are certain steps which need to be followed for filing a mark as Well-Known Trademark:

1. Form TM – M- : For getting mark registered as Well- Known Trademark one need to file Form an application on the form TM-M.
2. The prescribed fee as per the first schedule of the rules in Form TM- M is Rs. 1,00,000/-.
3. That the Application will be filed online through the e-filing services of the trademark made available at official website i.e. www.ipindia.nic.in
4. Furthermore, there are certain documents which need to be filed along with the form[6]
5. Statement of case describing the applicant’s rights in the trademark and describing the applicant’s claim that the trademark is a well-known trademark,
6. Evidence in support of the applicant’s rights and claim viz. evidence as to use of trademark, any applications for registration made or registration obtained, annual sales turnover of the applicant’s business based on the subject trademark duly corroborated, evidence as to the number of actual or potential customers of goods or services under the said trademark, evidence regarding publicity and advertisement of the said trademark and the expenses incurred therefore, evidence as to knowledge or recognition of the trademark in the relevant section of the public in India and abroad, o
7. Details of successful enforcement of rights, if any, relating to the said trademark in particular extent to which trademark is recognized as well-known trademark by any Court in India or Registrar of Trademarks,
8. Copy of the Judgment of any court in India or Registrar of Trademarks,  if any, wherein the trademark is determined as well-known trademark,
9. The size of the document submitted along with statement of case as evidence / supporting document should be in PDF format with resolution of 200 X 100 dpi on A4 size papers and total file size shall not exceed the limit of 10 MB.
10. After the submission of the form, the office will consider on the basis of the documents submitted.  It may or may not be considered by the Registry.
11. If accepted, then said mark will be added in the list of Well- Known Trademark.
12. If one objects for inclusion of a particular Trademark in the list of Well- Known Trademark then they can file objection to the Registry of Trademark by stating its reasons for objection.
13. Copy of such objection will be given to the Applicant and they can file counter statement for such objections within stipulated time.
14. That after seeing both the side of the parties the final decisions will be given.
15. If the Applicant mark is included in the list of well- known trademark the same shall be informed to the Applicant.
16. Same shall also be informed to the Trade mark Journal and the mark shall be included in the list of well- known Trademark, will also be available on the website. 

LIST OF WELL- KNOWN TRADEMARKS IN INDIA

There are about 97 Well- Known Trademark, as per the list updated by the registry[7]. However, there are numerous trademark applications that are pending before the Registry, which are yet to be declared as well-known trademarks in India. The list of the existing well-known trademarks in India is mentioned in the table below:

Serial No.	Trademark	Proprietor	Report	Observation
1	7 O’CLOCK for shaving razors	Gillette U.K. Ltd., England	1998 PTC 288 DB	It is recognized that trade mark 70’Clock is well known. As such the use of the mark in respect of tooth brush will lead to passing-off.
2	AIWA	Sony Corpn., Japan	Decision dated 26-09-2007	AIWA is a well-known trade mark in India in respect of electronic goods. Use of this mark without due cause for any other products would be likely to deceive or cause confusion, unfair advantage and be detrimental to the distinctive character and repute of mark.
3	BAJAJ	Bajaj Electrical Limited	AIR 1988 BOM-167	The use of a family name Bajaj by defendants was held to be an act of passing-off. The goodwill and reputation of Plaintiff company was recognized.
4	BATA & BATA FOAM for footwear	Bata India Ltd.	AIR 1985 ALLAHABAD 242	The plaintiff company Enjoy a reputation for its products.
5	BENZ	Daimler Benz	1994 PTC 287	Reputation extends worldwide.
6	BISLERI	Acqua Minerals Ltd.,	2001 PTC 619	BISLERI is well-known in the Indian market and one of the first marks introduced for bottled mineral water. The defendant who was held to have adopted the domain name Bisleri with the intention to trade on the plaintiffs reputation and goodwill, was restrained.
7	CARREFOUR	Carrefour Society Anonyme, organized under the laws of France	2007 (35) PTC 225	The trade mark /name used by the applicant for 47 years throughout the world has to be protected, in order to promote commercial morality and discourage unethical.trade practices. Plea of well-known trade mark is accepted.
8	CARTIER for wide variety of goods including jewellery,watches, perfumes etc.	Cartier International, B.V, Netherlands	2003(26) PTC 160(Del)	Trade Mark Cartier in respect of various consumer goods have acquired a reputation for quality not only in India, but throughout the world. Plaintiff company has acquired brand image and personality in respect of their products. Permanent injunction granted.
9	CATERPILLAR	Caterpillar Inc., USA	1998IPLR 326	Name Caterpillar in respect of heavy vehicles and the name has earned reputation & goodwill world wide.
10	CHARLIE	Revlon Inc.	1997 PTC 394	Defendants intention was fraudulent and dishonest to encash upon reputation and goodwill of products of plaintiff. Injunction granted.
11	DR.REDDY In respect of pharmaceutical products.	Dr.Reddy Laboratories	2004 (29) PTC 435	Trade Mark PR.REDDY, in spite of not being registered, has acquired considerable trade reputation and goodwill in the community dealing with drugs and pharmaceuticals not only in India, but abroad also.
12	DUNHILL	Alfred Dunhill Limited, U.K.	1999 PTC 294	Plaintiff has prima-facie established a distinctive reputation, image and goodwill in the trade mark and trade name DUNHILL. Plaintiff has acquired global reputation.
13	ENFIELD BULLET	Enfield India Ltd.	2006(32) PTC 397	BULLET is a well known trade mark. It cannot be permitted to be copied even in respect of different goods. Appeals against Registrar’s decision allowed.
14	EVIAN Mineral Water	Society Anonyme Des Eavx Minerals ‘D’ Evian	1993 PTC 103	Evian acquired excellent reputation and goodwill world over. Said reputation and goodwill extended to India. Mark acquired high degree of distinctiveness. Para 3 & 4 exparte order.
15	FEDDERS For air conditioners	Fedders North America	2006(32) PTC 573	Defendants cannot be permitted to cash in on the international reputation of the plaintiffs. Injunction granted.
16	Whirlpool	Whirlpool Corporation,USA	1996 PTC 476	A product and its trade name transcends the physical boundaries of a geographical region and acquires a trans-border or overseas or extra-territorial reputation not only through import of goods but also by its advertisement. The knowledge or the awareness of the goods of a foreign trader and its trade mark can be available at a place where goods are not being marketed Injunction granted.
17	GLAXO	Glaxo India Ltd.	2002 (25) PTC 105	GLAXO is an invented word. By original adoption, registration, long and continuous user, plaintiff alone is entitled for the exclusive use of the trade mark GLAXO and no one else.
18	HAYWARDS 5000 For alcoholic	Shaw Wallace & Co. Ltd.	2003 (27) PTC 63	The defendants used.numeral 5000 in respect o$3e*r to cash in on vide reputation and goodwill butf. ovet the years by the plaintiffs. Interim injunction confirmed.
19	HOLIDAY INN	Holiday Inn Inc.	2002(25) PTC 308 (DB)	Words HOLIDAY INN have been adopted by appellant to ride on global reputation of the respondent Commercial goodwill and global reputation should W be allowed to be exploited in a clandestine marine -. Appeals dismissed.
20	HONDA	Honda Motor Co. Ltd.	2004(28) PTC 332	Trade Mark HONDA is famous around the globe.
21	HONDA For motor cycles, motor cars etc.	Honda Motors Company Ltd.	2003 (26) PTC1	Plaintiffs business is of international character and reputation .Trade mark Honda has a global reputation.
22	HORLICKS For food products, malted biscuits, toffees.See also similar case	Horlicks Limited.	2003(26) PTC 241(Del) 2002(25) PTC 504 2003 (26) PTC 241	Suits for injunction filed against various companies by the plaintiffs, injunction orders have beer passed and most of the suits have been decreed in”0VQur of the plaintiffs. (Under Section 11(6) record of the successful enforcement of the rights in that traifi nwks is a relevant consideration) Use of mark by the defendant ‘is a flagrant and blatant attempt to imitate plaintiffs r.itfrk.
23	Hamdard	Hamdard National Foundation (Hamdard Davakhana)	2008 (38) PTC 109	The defendant took a calculated risk in using the HAMDARD word and eye mark; indeed its use of the eye mark points to an attempt to “free ride” on the plaintiffs reputation.
24	INTIMATE	Revlon Inc.	1997 PTC 394	Defendants intention was fraudulent and dishonest to encash upon reputation and goodwill of products of plaintiff. Injunction granted.
25	Infosys	Infosys Technologies Ltd.	2007 (34) PTC 178	The owners has established expenditure of 392 crores towards sales promotion marketing expenses and brand building during 2004-05 alone. It has established an enviable reputation and goodwill in the market nationally and international level.
26	Intel	Intel Corporation	2007 (34) PTC 492	Famous and well-known trademarks especially those that embody a reputation of pre-eminent excellence and quality, as plaintiffs Intel trademark, are required to be given a broad protection.
27	KANGARO	Kangaroo Industries	2004 (29) PTC 175	Mark declared as well known mark.
28	KIT KAT	Societe Des Produits Nestle,S.A.,1800 Vevey,Canton of Vaud,Switzerland.	Judgement in TA/1/2007/TM/DEL/(C.M.(M)) No. 148 of 2002) dt. 11/12/2009	KIT KAT is a Well-known having trans-border reputation.
29	LETTER*T IN A CIRCLE House mark	Tata Engineering & Locomotive Co. Ltd.	2006 (32) PTC 296	Respondents who have established their reputation and goodwill in automobiles and several other goods are entitled to have the trade mark safeguarded. BENZ case applied.
30	Logo *M’ in the distinctive style and design of the famous golden arches	McDonald’s Corporation, U.S.A.	1999 PTC 9	The Logo ‘M’ is a well-known and famous logo and courts have recognized the existence of trans-border reputation.
31	MAHINDRA; MAHINDRA & MAHINDRA; M & M	Mahindra & Mahindra Ltd.	2002 (24) PTC 121; CS (OS) 921/2013; Suit No. 2061 of 2012	Mark is in use for five decades. The name has acquired a distinctive secondary meaning in the business or trade circles
32	MARS for chocolates, confectionery etc.	Mars Incorporate,USA	2003(26) PTC 241(Del) 2002(25) PTC 504 2003 (26) PTC 241	Use of mark by the defendant ‘is a flagrant and blatant attempt to imitate plaintiffs r.itfrk.
33	NIRMA See also Sl.No.32	Shantaben 1 Karasanbhai Patel and Others	2001 PTC 427	NIRMA is an invented word. It has acquired great reputation. The owners have been spending huge amount on advertisement for their trade mark. Their sales in relation to various goods are mounting every year.
34	NIRMA for washing & cleaning preparations	S.K.Patel	2004(29) PTC 634	The principle laid down by various courts was applied namely where a regd. Trade mark has got reputation & goodwill they cannot be permitted to be used by another person even in respect of different goods.
35	NIVEA	Beiersdorf A.G.	2009 (39)PTC 38	Nivea is a recognized product of high quality and has international reputation and recognization. These are marks where the line between the goods and the name is blurred. The mark starts to represent the source or the person than merely a particular are specific type of goods or services. .
36	ODONIL & ODOMOS For mosquito repellants	Balsara Hygiene Products.	2004(29) PTC 226	Plaintiff has built up reputation in the mark, goodwill & huge sales turnover.
37	OMEGA	Omega S.A.,Bienne,Switzerland	2003 27 PTC 327	The Plaintiff company has been using the trade name OMEGA for more than 50 years and has enjoyed reputation for its products.
38	PANADOL & PANADOL EXTRA	SmithKline Beecham Pic.	2001 PTC 321	Defendants deliberately used Plaintiffs well known mark.
39	PEPSI	Pepsi Inc.	2006(32) PTC 225	Pepsi enjoys a huge reputation and goodwill not only in India but also internationally .
40	PHILIPS	Philips NV Netherlands	AIR 1983 P&H418	Is a household mark and has acquired enviable reputation in India and throughout the world.
41	PIZZA HUT Logo in respect business relating to restaurants	Pizza Hut International LLC, USA	2003(26) PTC 208(Bom)	Plaintiffs enjoy a worldwide reputation, including in India. It is settled law that if the marks/logos enjoy a trans border reputation, they are entitled to be protected against infringement and passing off in India.
42	PLAYBOY for magazine and several other goods	Playboy Enterprises Inc.,	2001 PTC 328	Plaintiff has demonstrated its strength due to the degree of distinctiveness, fame and reputation of the trade mark Playboy. The trade mark acquired world wide circulation and publication in as many as 16 foreign countries.
43	RED BULL	Red Bull GmbH	2003(27) PTC 164	Trade Mark RED BULL is one of the best known trade marks not only in Austria but all over the world. Registration of domain name by the respondents was held to be in bad faith.
44	REVLON	Revlon Inc.	1997 PTC 394	Defendants intention was fraudulent and dishonest to encash upon reputation and goodwill of products of plaintiff. Injunction granted.
45	TACO BELL for Restaurant business	Taco Bell Corporation,USA	2000 PTC (20) 554	Plaintiff operated over 6000 restaurant worldwide using name taco bell as logo. Mark registered in more than 70 countries including India in classes 29 & 30. Defendants intention was to trade upon the famous mark of the plaintiffs.’
46	TATA SEE also TATA CASE	Tata Chemicals Limited	2003 (27) PTC 422 2004 (29) PTC 522 (Delhi) 2001(21) PTC 129 2009 (40) PTC 54	The trade mark TATA is a household name in respect of various products all over India.TATA is a household word in India and solely and exclusively associated with the House of Tata.TATA is a well known mark.In the decision list of cases where enforcement of rights have succeeded is given.
47	TELCO	Tata Engineering and Locomotive Co. Ltd.,	2001 PTC 562	TELCO mark has gained transborder reputation and goodwill. The mark is identified with the owners and their products throughout India as well as various countries in the world.
48	TOSHIBA	Toshiba Corporation,Japan.	2005 (30) PTC 188	TOSHIBA held as a well known mark and registration cannot be rectified for non-use.
49	USHA For sewing machines, electric fans etc.	Not given	2004(29) PTC 647	The respondent had built up long reputation and goodwill in India as well as abroad. The same cannot be permitted to be benefited by the appellant in respect of different goods or by different architecture or design.
50	VICKS VAPO RUB	Richardson Vicks Inc.	1990 PTC 16	Prima facie the mark as well as bottles distinctive labels and metal containers have become well known and acquired a great reputation (para 32).
51	VOLVO for automobiles	Aktiebolaget Volvo	1998 PTC (18) 47	Trans-border reputation is recognized by Indian courts and that actual sale in India is not necessary for a Plaintiff to establish its goodwill and reputation in India.
52	KIRLOSKAR	Kirloskar Proprietory Limited	AIR 1996 BOM-149	The mark KIRLOSKAR used by the plaintiff had acquired a secondary meaning and had become a household word.
53	WOOLWORTH In respect of clothing etc	F.W.Woolwor th Company	2004 (29) PTC 477	Trans-border reputation enjoyed by the mark WOOLWORTH is not something to be not taken account of. The world wide reputation of the mark was recognized.
54	Yahoo	Yahoo, Inc.	1999 PTC 201	The services of the Plaintiff under the Trade Mark/Domain name ‘Yahoo’ have been widely publicized and written about globally.
55	Polo (label with device of polo player)	POLO/LAUREN COMPANY IP (USA)	Decision dated 19.12.2011 in CS(OS) 1763/2005	Having regard to the evidence placed on record the plaintiff has established that the registered trademark of the plaintiff is a well-known mark as defined in Section 2 (z) (g) of the Trade Marks Act
56	GE Monogram	General Electric Company (USA)	Decision dated 21.12.2011 in CS(OS) 1284/2006	It can hardly be disputed that GENERAL ELECTRIC as well as GE whether written in plain letters or in a stylized form such as monogram are well known marks of the plaintiff within the meaning of Section 2 (z) (g) of the Trade Marks Act
57	KALPATARU	Kalpataru Properties Private Limited, Santacruz Mumbai	Suit No 2976 of 2010 decided on 29th July 2011	“The Plaintiffs have thus established that .’Kalpataru’ is a well known mark ” .”I have held above the plaintiff’s mark “KALPATARU” to be a well known mark”
58	Castrol	Castrol Limited	Judgement in Suit No. CS(OS) 1369/2006 Decision dated 18/08/2011	High court observed CASTROL is a well known Trade Mark within the meaning of Sec. 2(1) (zg) read with Sec. 11(6) of TM Act 1999.
59	Lupin	Lupin Limited	Judgement in Suit (L) No. 3137/2011 Decision dated 05/12/2011	The High Court observed Lupin, a Well Known Trade mark.
60	Canon	Canon Kabushiki Kaisha, Japan	Order in OA/43/2005	The Appellate Board Concluded that CANON mark is a well known term under Sec. 11(10) of TM Act 1999.
61	Microsoft	Microsoft Corp.	Judgement in Suit No. CS(OS) 2163/2010 order dated 03/02/2014	Court has specifically determined that Microsoft is a well-known trademarks and it is known to the most of the people.
62	Nestle	Societe des produits Nestle S.A.	Judgement in Suit No. CS(OS) 551/2010 dated 08/03/2013	Court has specifically determined that Nestle is a well-known trademarks
63	BBC	British Broadcasting Corporation	CS (OS) 1171/2007	Hon’ble Court has determined the mark as a well-known in Indian Territory in its observation
64	Dupont	E. I. du Pont de Nemours and Company	CS (OS) 2998/2012	Hon’ble Court has determined the mark as a well-known in its observation
65	Candid	Glenmark Pharmaceuticals Ltd.	Suit No. 182/2013	Hon’ble Court has determined the mark as a well-known in its observation
66	AMUL	Kaira District Co-Operative Milk Producers Union Lld.	OA/56/2011/TM/KOL	The IPAB Emphasised AMUL as a well-Known Trademark.
67	Rajnigandha	Dharmpal Satyapal Ltd.	CS (OS) 381/2012	Hon’ble court observed that Plaintiff has established the mark as a well known trademark.
68	Louis Vuitton	Louis Vuitton Malletier	CS (OS) 270/2014 and CS (OS) 90/2006	Hon’ble Court has determined the mark known in Indian Territory in its observation
69	GOOGLE	Google Inc.	CS(OS) 317/2011 ; CS(OS) 2907/2011	The Court has observed Google worldwide reputation and provided the relief on this basis only.
70	HAVELLS	Havells India Limited	CS(OS) 3770/2014	The Court accepted Havells a well known TM
71	BLOOMBERG	Bloomberg Finance, LP	CS(OS) No. 2963/2012	Interim Order was passed in favour and same was confined vide order dated 12/02/2014 in which HC Observed Bloomberg as well-known.
72	JOHN DEERE	M/s Deere & Co. Ltd.	CS (OS) 3760/2014	The Court observed John Deere a well known TM (para 13 of order dated 05/03/2015).
73	RAYMOND	M/s Raymond Ltd.	OA/16-17/2010/TM/CH	The IPAB observed this mark as Well-known TM.
74	FERRERO ROCHER	M/s Ferrero Spa	CS (OS) 404/2012	The Court observed this mark as Well-known TM.
75	FORD	M/s Ford Motors Co.	CS (OS) 1710/2015	The Court observed this mark as Well-known TM.
76	TOYOTA	M/s Toyota Motors Corporation	CS (OS) No. 62/2007	The Court observed this mark as Well-known TM.
77	TIMBERLAND	M/s TBL Licensing LLC,	CS (OS) No. 2158/2007	The Court observed this mark as Well-known TM.
78	SONY	M/s Sony Corporation	OA/49/2007/TM/KOL	The High Court and tribunal has observed this mark as Well-known TM.
79	ULTRATECH	M/s UltraTech Cement Limited,	Suit No. of 2288/1986	The Court observed this mark as Well-known TM.
80	VOGUE	M/s Advance Magazine Publishers INC	Suit No. 3079/2003	Suit No. 2860/2011
81	VIRGIN	Virgin Enterprises Ltd	Order No.73/2005 (IPAB)	Suit No. 2860/2011
82	SIEMENS	Ms. Siemens Aktiengesellschaft	CS (OS) No. 3785/2014	The Hon’ble Court has determined the subject mark as a well-Known TM
83	LAVASA	Lavasa Corporation Ltd.	Suit No. 562 of 2013	The Hon’ble court in its order dated 19/07/2013 has observed that subject mark is a well-Known Trademark
84	MOTHER DAIRY	Mother Dairy Fruit & Vegetable Pvt. Ltd.	CS (OS) 2399/2010	High Court of Delhi, observed “MOTHER DAIRY (Blue Logo)” is a well known TM
85	MONGINIS for cakes, pastries and other bakery products	Monginis Foods Private Limited at B-60, Off Link Road, Andheri West, Mumbai 400053.	N/A	The Registrar observed that the Mark is well-known in reference to cakes, pastries and other bakery products.
86	MARUTI For Industrial Oil, Automobile, Business administration and retail outlet, Research & Development.	Maruti Suzuki India Limited, At Plot No. 1, Nelson Mandela road, Vasant Kunj, New Delhi-110070	N/A	The Registrar observed that the Mark is well-known in reference Automobile, Business administration and retail outlet, Research & Development
87	GODREJ	Godrej & boyce MFG. Co. Ltd., at Firojshanagar, Vikhroli, Mumbai-400079	N/A	The Registrar observed that the Mark is well-known trademark in view of its wide presence in the market
88	BIOCON For Pharmaceutical preparation, Business administration & retail outlet and Research & Development.	Biocon Limited 20th K.M. Hosur Road, Electronic City, Bangalore-560100	N/A	The Registrar observed that the Mark is well-known in reference Pharmaceutical preparation, Business administration & retail outlet and Research & Development
89	BrahMos	BrahMos Aerospace Private Limited at 16 Cariappa Marg, Kirby Place Delhi Cantt. – 110010	(CS (OS) No. 2655/2013	Hon’ble Justice in the matter observed that “I have no hesitation to come to the conclusion that the trademark Brahmos is a well-Known trademark.”
90	TCS For Software development and allied serviced	TATA SONS LIMITED, Bombay House, 24 Homi Mody Street, Mumbai-400001	N/A	The Registrar observed that the Mark is well-known in reference Software development and allied serviced.
91	LuLu for Fast Moving Consumer Goods, Hospitality, Retail services / Malls, Financial Services and Fashion Stores	LuLu International Shopping Mall Private Limited, 34-1000, NH: 47, Edapally, Kochi, Kerala – 682024	N/A	The Registrar observed that the Mark is well-known in reference to Fast Moving Consumer Goods, Hospitality, Retail services / Malls, Financial Services and Fashion Stores.
92	INDIA GATE For Food grains and allied Products.	KRBL Limited, 5190, Lahory Gate, Delhi. 110006	N/A	The Registrar observed that the Mark is well-known in reference to Food grains and allied Products.
93	ZEE With reference to Services i.e. Media, Entertainment, Packaging, Infrastructure, Education etc.	ZEE Entertainment Enterprises Limited, B-10, Essel House, Lawrence Industrial Area, New Delhi, 110035.	N/A	The Registrar observed that the Mark is well-known with reference to Services i.e. Media, Entertainment, Packaging, Infrastructure, Education, Processing of Precious Metals, Finance, Technology, Health care and Allied Services.
94	GARNIER Relating to ‘toiletry and cosmetic products.	L’OREAL S.A. At 14, Rue Royale Paris 75008 France.	N/A	The Registrar observed that the Mark is well-known with reference to ‘toiletry and cosmetic products’.
95	7 ELEVEN Relating to ‘retail chain, allied products and services	7-ELEVEN, INC. At 3200 Hackberry Road, Irving, Texas 75063, USA	N/A	The Registrar observed that the Mark is well-known with reference to ‘retail chain, allied products and services’.
96	ORAL-B Relating to oral care products	Procter & Gamble Business Services, At 1959 Upper Water Street, Suite 800, Halifax, Nova Scotia, B3J 2X2, Canada.	N/A	The Registrar observed that the Mark is well-known with reference to oral care products.
97	KESARI In respect of travel and tourism Services	Kesari Trust, Kesari Trust, At B/5, Silver Queen CHS, Soonawala Agiary Marg, Mahim, Mumbai-400 016, Maharashtra, India	N/A	The Registrar observed that the Mark is well-known with reference to travel and tourism Services.

CONCLUSION

The scope of protection of well-known trademarks will be determined after a comprehensive consideration of the above factors, as mentioned in the procedure.  The Registry is very particular while considering the mark as Well -Known Trademark as once the mark is in the list of Well- Known Trademark then no one can take that mark in any goods and services, therefore the Registry goes into voluminous documents and lot of evidence is taken into consideration, otherwise this will be of no use as per the new Trademark Rules of 2017, which has been implicated and if it is not followed it will lead to a lot of legal proceeding related to the same. Therefore, to obtain protection for this kind of well-known marks, strong arguments should be submitted as to the degree of the relevance of the relevant goods, the degree of recognition of the well-known mark and the intention of the Applicant to file the petition for declaration of the trademark as a well-known.

Author: Aishani Singh, Associate at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at  aishani@khuranaandkhurana.com.

References:

[1] section 2 (1) (zg) of Trademark Act, 1999

[2] AIR 1994 Del 2369

[3] 2009 (41) PTC 284 (Del.)

[4] 2014 (57) PTC

[5] Section 11(6) & 11(7) of Trademark Act 1999

[6] http://www.ipindia.nic.in/writereaddata/Portal/News/333_1_Well-known_public-Not

Hennes & Mauritz Ab & Anr v. HM Megabrands Pvt. Ltd. & Ors

The case H&M; Hennes & Mauritz Ab & Anr v. HM Megabrands Pvt. Ltd. & Ors is based on the point of having a similar trademark to that of another brand. The harm it causes to the reputation of one brand which another brand has adopted is one of reputation. The Plaintiff, in this case in a well-known trademark, and would have lost its reputation at the hands of the Defendant, due to having a similar trademark in the same business circle which would cause the consumers to be misled. This is an unhealthy and unethical means of earning goodwill and reputation at the hands of another brand. Hence, when a trademark is imitated then it is a must to grant and injunction, which is what, was held. The Ld. Single Judge after hearing both the parties, accepts the interim application of the Plaintiffs and rules in favour of the Plaintiff, stating that the Defendants discontinue the business as they were earning goodwill wrongfully, and restrained the defendant from using their trademark in any manner.

Analysis of H&M Hennes & Mauritz AB & ANR v. HM Megabrands Pvt. Ltd. & Ors

Found in almost every shopping mall are the low-cost, trend-specific clothes and accessories of H&M. The Swedish company quickly made its place in India and became popular and successful, especially with the young girls. H&M is the plaintiff in the present case. The Plaintiff owns a trademark, H&M which was first registered in the United Kingdom in the year 1985. In the year 2005, the plaintiff registered the trademark in India as well and it is a well-known trademark. However, the defendants in the present case, HM Megabrands started marketing apparels under this name in the year 2011 and on April 11^th, 2014, applied for registration of the trademark in India.

When the plaintiffs came across the trademark of the defendants, they realised that the trademark was astonishingly similar, and it could confuse and mislead people. The website of the defendants, http://www.hmmegabrands was found to be offering similar services and goods as the plaintiffs. Hence, the Plaintiffs filed a suit for trademark infringement and passing off.

The plaintiffs submitted that theirs was a well-known trademark and their products were extensively marketed and promoted on the internet and could be easily found by a simple Google search. Hence, it is the contention of the plaintiffs that the plaintiffs had knowingly and intentionally incorporated the alphabets H and M into their corporate name, and had purposely designed the alphabets H and M in such a manner that they looked similar to the trademark of the plaintiffs. The plaintiffs also believe that since the plaintiff and defendant were in the same line of business i.e., selling garments, they did not have the defence of having no knowledge of the plaintiffs’ trademark.

On the other hand, the defendants took a stand that the letters H and M were the initials of the defendants, Hashim Merchant and Hamza Merchant, and not any other reason as stated by the plaintiffs. The second and more important contention of the defendants was that the plaitiffs’ trademark did not have any recognition in India in 2011, when the defendants had first started selling garments under this name. Further, the plaintiffs had formally established themselves in India only towards the end of 2013 and the first store of the plaintiffs’ had opened in India only in the year 2015. It also contended that since there was no store of H&M in Delhi, the Delhi High Court did not have jurisdiction to decide the suit. The defendants further argued that even though the alphabets H and M were the same, the word Megabrands added made a clear distinction between the theirs and the plaintiffs’ trademark.

The two main issues that are raised in this case are:

1. Whether the defendant had intentionally made a trademark similar to the trademark belonging to the plaintiffs?
2. Whether the Delhi High Court had jurisdiction to decide the suit?
3. Whether the plaintiffs’ suit would survive despite not establishing themselves in India when the Defendants had adopted their trademark?

The first issue decided by the Learned Single Judge was the issue of jurisdiction. The Judge as long as the effect of infringement or passing off, if any, by the defendants, of the trademark of the plaintiffs and/or of the goods of the defendants as the goods of the plaintiffs, can be felt in Delhi, the Hon’ble High Court of Delhi would have the jurisdiction to entertain the suit.

The Ld. Single Judge also rejected the argument of the defendants and said that adding a suffix or a prefix to the alphabets H&M would create distinctiveness between both the trademarks, and Megabrands being a generic word could be solely associated with the defendants. The way the alphabets H and M were written was similar to that of the Plaintiffs and considering that both the companies were in the same trade circle, the customers would be similar and it would cause some confusion. Further, the Ld. Judge also referred to Christopher Waldow’s Law of Passing off[1], which says that when a trademark is adopted by a party which is imitating another’s trademark, then an injunction needs to be granted. The Ld. Judge also referred to Mahendra and Mahendra Paper Mills v. Mahindra and Mahindra Limited[2] , wherein the Plaintiff had been using the word ‘Mahindra’ which had become so well-known and had acquired distinctiveness over the years, and it was held that the word ‘Mahendra’ used by the defendants would create an impression that there was some connection or relation to the plaintiff.

Deciding the issue of not being established when the defendants had adopted their mark, the Ld. Judge stated that the Plaintiff had sales in India since 2015, which was prior to the institution of the suit. Also, the Judge followed the principle of “first in the market” as established in the Neon Laboratories Limited v. Medical Technologies Limited[3]. The Ld. Single Judge also referred to the N.R. Dongre v Whirlpool Corpn.[4], which stated that wordwide prior user is given preference over the registered trademark in India.

The Ld. Single Judge ruled in favour of the Plaintiffs and upheld the interim application and restrained the defendants from using their trademark in any manner.

Conclusion

Having similar trademarks, especially to that of a well-known trademark is an unhealthy way of acquiring good reputation and misleading the consumers, who would innocently buy garments from the wrong company by mistaking it to be another brand. In order to avoid chaos and unhealthy competition, it is important that there be distinctive and independent trademarks. There are many cases around the world for using similar trademarks just to gain good reputation and goodwill falsely, which not only harms the reputation of the other company but also brings down the sales of that company. Hence, differentiated trademarks are a must.

Author: Vandya Nallamothu, a 5th Year BA LL.B (Hons.) student of Symbiosis Law School and intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

References:

[1] 1995 Edition

[2] (2002) 2 SCC 147

[3] (2016) 2 SCC 672

[4] (1996) 5 SCC 714

Cultural Appropriation and Trademark Law

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

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

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

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

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

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

The Trademark Test

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

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

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

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

Trademarks and Cultural Appropriation

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

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

Conclusion

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

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

References:

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

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

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

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

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

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

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

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

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

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

Intellectual Property Rights in Movie / Comic Characters

Introduction

From being created in comics to being incorporated in television and movies, characters like Iron Man, Hulk, Mickey Mouse, ChottaBheem, Shaktiman, Wonder Woman, Harry Potter, Ben 10 have become a part of our daily lives. With these fictional characters gaining immense popularity among the public, the owners and creators of the characters have various ways of deriving profits and goodwill out of it.

The creator of these characters use their imagination, skill and intellect while creating them and providing them with their unique identity and hence, such characters needprotection from being infringed, misappropriated or copied by any unauthorised person. With characters like ChachaChoudhary and Sabu being popular even today within the age group of 25-30 years[1] and particularly ChottaBheem merchandising has totalled its revenue to more than Rs.300 Crores, with more than 40 million Indian viewers and huge markets abroad[2].

IP Rights

Ownership rights over characters do not rest with an individual person or organisation. It varies with respect to its subject matter. Hence, it is not possible for a single act or law to cover all the rights associated with the fictional character and  therefore it needs following  cluster of laws.

1. Copyrights

Copyright protection is given original work of an author or an artist generally till the lifetime of the creator, extends up to 60 years after his demise, and then creation falls in public domain. However, the party commissioning the creation of the character holds the copyright of the character, if the said character is a work for hire. Moreover, in case of movies or television series having a fictional character as its part, the copyright for such character rests with the producer of the movie or the series.

A fictional character is entitled to be protected by copyright only if it is distinctively recognised by the public and not merely by the work it was featured in.

Tests to grant Copyright

Eligibility of a character to be granted a copyright was discussed in Star IndiaPvt. Ltd. v. Leo Burnett [2003 (2) BomCR 655], wherein the court opined that the character must have public recognition in independent life [3]. Precedents have laid down tests to determine if the character is eligible to be granted a copyright protection.

• Story-being-told Test

Laid down in Warner Brothers Pictures Inc. v. Columbia Broadcasting System,216 F.2d 945 (9th Cir. 1954), wherein it was stated that if the character is the protagonist of the story and the story revolves around him, then the copyright can be granted to such character and not when character in question is merely a chessman in the plot.

In DC Comics v. Towle [802 F.3d 1012, 1021–22 (9th Cir. 2015)], the test was interpreted in a way that granted copyright to the “bat-mobile” from the Batman comics. The court opined that the bat-mobile has unique qualities that gives it a different identity and provides for a special element, making it eligible for being granted with copyright.

• Character Delineation Test

Laid down in Nichols v. Universal Pictures Corporation,45 F.2d 119 (2d Cir. 1930), the test states that if a character is developed in a manner that it can be distinctively depicted and delineated from the story it can be granted copyright protection.

In Arbaaz Khan v. Northstar Entertainment Pvt. Ltd. (Suit (L) No. 301 of 2016), Bombay High Court granted copyright to the character named Chulbul Pandey from the movie Dabangg having the opinion that the character in question is unique with his own style and makes it one of a kind and unique and distinctively recognisable from the entire movie.

2. Trademarks

IP in these characters are no more limited only to their artistic work but also extends to the associated goods and services which gains immense profit because of the popularity of the “character”. (Character Merchandising). For the reason that the goodwill of the character aids in source-identification and promotional function, the characters are often protected with trademarks.

Trademark can be granted on the name of the character provided that such name is also the title of the book, movie or series. The owner of the character Munna Bhai, from the movie Munna Bhai MBBS and its sequel , has got the character registered as their trademark. Further, trademarks may also be granted on verbal expressions of the character, for example, Lone Ranger’s ‘Hi-yo! Silver Away.’[4]

3. Personality Rights

Many-a-times, an actor’s image is built around the character he plays. In such scenario, it is difficult to separate the character from the actor and this results in producers not having complete rights on the character to make full use of it as personality rights of the actor comes into picture. This leads to a conflict between the copyright of the producer and the personality rights of the actor. A little while back, there was a clash between an actor and the television channel over a similar situation.  Popular comedian Sunil Grover played “Gutthi” in (Comedy Nights with Kapil) a popular Indian television program telecasted by Colours which was also the producer of the program. Due to this tussle, the Sunil left the program and started his own show on Star. Colours issued a statement stating that copyright over “Gutthi” rests with them being producer of the show which created the character. Sunil then proclaimed another statement that people associate him as “Gutthi” and he has received recognition through that character, thus he has personality rights over the character. Because of this rival over rights, none of the parties could use “Gutthi” as the character in their respective shows till the time such clash persists.

IP Rights and Infringements

Copyright protection of a character from any comic or movie can be infringed by ways like plagiarism and unauthorized character merchandize. When a person sells goods on the merchandise of a fictional character having commercial value and popularity with an intent to gain profit out of the popularity of the character is eligible to be booked for copyright infringement.

In Sholay Media & Entertainment Pvt. Ltd. v. RGV Production Pvt. Ltd., Delhi High Court held that intentional and deliberate act of creating a remake of the block buster movie Sholay of 1975, whose exclusive copyright vested with Sholay Media & Entertainment Pvt. Ltd. makes RGV Production guilty of infringement and for misusing the characters Jai, Veeru and Gabbar Singh.[5]

Further, for a character been granted a trademark protection, a claim of trademark infringement can be made if it is contended and shown that use of such character or its attributed element, if not prevented, is likely to cause confusion in the minds of the people, resulting in dilution of brand equity and commercial value of the trademark in question.

In Twentieth Century Fox Film Corporation v. South Australian Brewing Co. Ltd. [(1996) AIPC 91-258] , producer of “Simpsons” filed an application to restrict certain breweries from using the word “Duff” which was name of the drink drank by the protagonist in the show. Moreover, license for merchandizing was granted by the producer of the show for duff beer. It was held that use of the name, hence, amounts to being misleading and the conduct to be deceptive. The defendant was held guilty of committing passing off.

Conclusion

India has emerged as a market for character merchandizing that can fetch a great revenue, especially in the kids section. Characters like Iron Man, Hulk, ChottaBheem, Ben 10  have a great attachment and owners have expanded their ways into character merchandizing bringing them a major part of their revenue. Considering such a global and vast market, chances of infringement and violation of trade and other rights are likely, and thus need protection with respect to the same. With various precedents and judgments discussed above, it can be concluded that any character which is unique and can be distinctively delineated from the plot of the movie is eligible to get protection under copyright laws. Further, it can also be concluded that trademarks do subsists in the characters and in case of unlawful use of such marks, claims for trademark infringement and passing off can be raised.

However, it is also to be noted that the ownership rights of the fictional characters does not rest with a particular individual alone, and that complexity in determining the owner makes it important for enactment of a legislation that governs the IP Rights of the characters.  Present IP regime in India neither have any express provision for copyrighting movie characters nor is there any specific category under which such characters can be granted copyrights. Thus, there’s a need to have a specific category under which such characters shall be granted copyright and other IP protection.

Being regulated with several laws, determination of the IP Rights of a fictional character has become complex and complicated. Having a vital importance to the creators and the producers, with respect to revenue generation, goodwill, promotion and merchandizing, it is essential to safeguard these rights and prevent them from being misused. For keeping up with the interests of the artists and creators, it is highly recommended that a special legislation or a category that deals with the rights of these characters is enacted.

Author: Mr. Shubham Borkar, Senior Associate – Litigation and Business Development  and Co-Author- Sonal Sodhani , at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at shubham@khuranaandkhurana.com or at www.linkedin.com/in/shubhamborkar.

References:

[1]http://www.mondaq.com/india/x/361128/Trademark/Chacha+Chaudhary+And+Character+Merchandising

[2] https://www.licenseindia.com/archives/article/how-chhota-bheem-has-scaled-upon-brand-licensing

[3]http://www.mondaq.com/india/x/521864/Trademark/Protection+Of+Literary+Characters

[4] https://corporate.findlaw.com/intellectual-property/protection-of-fictional-characters.html

[5] https://www.altacit.com/publication/copyrightability-of-movie-characters/#i_11