Under the (Indian) Copyright Act, 1957 following "work" are protected:
Artistic work including
a painting or a sculpture,
a drawing including a diagram, map, chart or plan,
an engraving,
a photograph,
A work of architecture or artistic craftsmanship,
Dramatic work,
Literary work including
computer programmes,
tables,
compilations
and computer databases,
Musical work (including music as well as graphical notation),
Sound recording and
Cinematograph film.
The judiciary has also been active about the protection of copyright of foreign authors/ owners, which includes software and their source code, motion pictures including screen play of motion pictures and database maintained by Professional firms and business organizations.
Sunday, June 6, 2010
Sunday, May 16, 2010
Composit Mark shall be seen as a whole : Delhi HC
The High Court of Delhi overturned the decision of the Intellectual Property Appellate Board (IPAB) and granted registration in respect of the mark “T-SERIES” to Super Cassettes Industries Ltd. The original opposition was filed by Tata Motors Ltd. (TELCO) in June 1991 before the Deputy Registrar of Trademarks (DR). In his order, the DR rejected TELCO’s opposition and directed that Super Cassettes’ application for registration be accepted. TELCO appealed this decision and the matter was transferred to the IPAB. Although it affirmed the grant of registration in respect of the mark “T-SERIES,” the IPAB qualified the order of the DR by directing Super Cassettes to remove the circle around the letter “T”. It was Super Cassettes’ appeal from the order of the IPAB which was heard and decided favourably by the Delhi High Court.
In its opposition, TELCO claimed fundamental proprietorship of the letter “T”. It asserted that the letter “T” in a circle was the house mark of TELCO and there was likelihood of deception and confusion if the Super Cassettes’ application was sanctioned registration. Super Cassettes, in its counter, asserted that it has been using the trademark “T-SERIES” extensively and continuously since 1979 in respect of audio cassettes and subsequently for a variety of electronic goods. It stated that the mark has acquired an immense reputation and the members of the public associate the mark “T-SERIES” solely with Super Cassettes.
The cardinal issue before the Delhi High Court was whether there was a similarity between the competing marks of Super Cassettes and TELCO. According to Section 2 (1) (h) of the TM Act, 1999 a trade mark is deemed to be “deceptively similar” to an earlier mark if it “so nearly resembles that other mark as to be likely to deceive or cause confusion.” On a close comparison of marks, the Court opined that they were structurally, stylistically and substantially different. The Court concluded that, “there is no similarity in the two marks much less a deceptive similarity which is likely to cause confusion.”
The High Court further observed that Super Cassettes and TELCO were using the marks for different kinds of goods. Therefore, the average consumer is unlikely to be either confused or deceived into mistakenly associating the mark “T-SERIES” with TELCO (Tata Motors Ltd.) or its products which are primarily trucks and automobiles.
The core consequence of this judgment rests in the Court’s interpretation of Section 17 of the Trade Marks Act, 1999. Section 17 provides that the registration of a composite mark confers on its proprietor the exclusive right to use it only as a whole. Consequently, the registration granted to the TELCO of its composite mark did not give it any right to the exclusive use over the letter “T” or over the letter “T” within a circle. It cannot claim monopoly over letter “T” since the letter, per se, is not distinctive of any goods. The trademark registration granted to TELCO was not for “T” simpliciter, but the letter in combination with “TATA ENGINEERING” and the device of 2 twigs.
In its opposition, TELCO claimed fundamental proprietorship of the letter “T”. It asserted that the letter “T” in a circle was the house mark of TELCO and there was likelihood of deception and confusion if the Super Cassettes’ application was sanctioned registration. Super Cassettes, in its counter, asserted that it has been using the trademark “T-SERIES” extensively and continuously since 1979 in respect of audio cassettes and subsequently for a variety of electronic goods. It stated that the mark has acquired an immense reputation and the members of the public associate the mark “T-SERIES” solely with Super Cassettes.
The cardinal issue before the Delhi High Court was whether there was a similarity between the competing marks of Super Cassettes and TELCO. According to Section 2 (1) (h) of the TM Act, 1999 a trade mark is deemed to be “deceptively similar” to an earlier mark if it “so nearly resembles that other mark as to be likely to deceive or cause confusion.” On a close comparison of marks, the Court opined that they were structurally, stylistically and substantially different. The Court concluded that, “there is no similarity in the two marks much less a deceptive similarity which is likely to cause confusion.”
The High Court further observed that Super Cassettes and TELCO were using the marks for different kinds of goods. Therefore, the average consumer is unlikely to be either confused or deceived into mistakenly associating the mark “T-SERIES” with TELCO (Tata Motors Ltd.) or its products which are primarily trucks and automobiles.
The core consequence of this judgment rests in the Court’s interpretation of Section 17 of the Trade Marks Act, 1999. Section 17 provides that the registration of a composite mark confers on its proprietor the exclusive right to use it only as a whole. Consequently, the registration granted to the TELCO of its composite mark did not give it any right to the exclusive use over the letter “T” or over the letter “T” within a circle. It cannot claim monopoly over letter “T” since the letter, per se, is not distinctive of any goods. The trademark registration granted to TELCO was not for “T” simpliciter, but the letter in combination with “TATA ENGINEERING” and the device of 2 twigs.
Wednesday, May 12, 2010
Software Piracy in India : Commissioner for Search & Seizure
Over the years the software companies in India have faced innumerable instances of software piracy. Statistics reveal that the prevalent piracy rate in India is close to 69%. To further the enforcement of one's rights, the law provides for the appointment of Local Commissioners upon establishment of a strong prima facie case. The landmark case of Autodesk Inc. & Mr. A.V.T Shankardass & Anr. {2008 (37) PTC 581 (Del.)}, witnessed the the Delhi High Court laying down broad guidelines for the conduct of raids in relation to instances of software piracy.
Microsoft filed four suits against four different parties on the suspicion that they were using pirated software at their workplace, based on the findings of an independent investigator engaged by them. . Investigations were made by asking employees of the defendants for information about the number of computers installed and thereby matching the license numbers of the software. Based on a verification of findings against Microsoft's database a suit was instituted for the violation of copyright before the High Court of Delhi (Microsoft Corporation & Anr. Vs. Dhiren Gopal {2010 (42) PTC 1 (Del)}. In this pursuance, Microsoft prayed for an injunction arguing the possibility of tampering of computers by Dhiren Gopal. They also prayed for appointment of a Local Commissioner so that the defendant could not get any opportunity to delete the pirated software.
The Court opining on the appointment of the Local Comissioner under Order 26 Rule 9 of the Civil Procedure Code noted that the purpose of the appointment of a Local Commissioner is to further the sealing and seizure of the CPU's and hard discs. The Court noted that there have been controversies existent regarding the procedure to carry out the seizure and that the law does allow making of backup copies before the Local Commissioner executes the sealing. The Court stated that this was in view of avoiding any pressure or misuse by the right holders to blackmail or use the alleged infringer's database for any other purpose. The Court stated that the proper procedure would be to get mirror images of the hard disc and get them sealed on the spot.
Further, examining the rationale behind Anton Piller orders, the Judge observed that in various cases, the element of surprise in conducting raids has been heeded thus allowing the same to be conducted without any notice. This was opined to be especially true of software cases, since the software may be deleted easily from the system
Concluding the hearing the single Judge gave directions for deposit of Costs and allowed an injunction. Microsoft was ordered to deposit Rs. 2 Lakh as security, payable to the alleged infringers in case the allegations made against them were proved false. The Judge went on to point out that the Court cannot act as an investigating agency for a party and if the a investigative suits are filed by a party on mere suspicion, he should be asked to deposit costs so that he can be burdened with costs if a false suit has been instituted An ex-parte injunction was allowed with the direction that the Local Commissioner along with a technical expert of Microsoft be allowed to carry out the raid and prepare mirror images of hard discs to be sealed by the Local Commissioner and deposited in the Court.
However, an appeal (Microsoft Corporation and Anr. V. Dhiren Gopal and Ors {2010 (42) PTC (339) (Del) DB}) was filed against the order of the Single judge in view of the possibility of misuse of databases procured during the seizure by Microsoft. And the consequent deposit ordered to be made. Altering this order, the Division Bench allowed three experts to accompany the Local Commissioner and waived off the security deposit ordered to be made earlier.
Microsoft filed four suits against four different parties on the suspicion that they were using pirated software at their workplace, based on the findings of an independent investigator engaged by them. . Investigations were made by asking employees of the defendants for information about the number of computers installed and thereby matching the license numbers of the software. Based on a verification of findings against Microsoft's database a suit was instituted for the violation of copyright before the High Court of Delhi (Microsoft Corporation & Anr. Vs. Dhiren Gopal {2010 (42) PTC 1 (Del)}. In this pursuance, Microsoft prayed for an injunction arguing the possibility of tampering of computers by Dhiren Gopal. They also prayed for appointment of a Local Commissioner so that the defendant could not get any opportunity to delete the pirated software.
The Court opining on the appointment of the Local Comissioner under Order 26 Rule 9 of the Civil Procedure Code noted that the purpose of the appointment of a Local Commissioner is to further the sealing and seizure of the CPU's and hard discs. The Court noted that there have been controversies existent regarding the procedure to carry out the seizure and that the law does allow making of backup copies before the Local Commissioner executes the sealing. The Court stated that this was in view of avoiding any pressure or misuse by the right holders to blackmail or use the alleged infringer's database for any other purpose. The Court stated that the proper procedure would be to get mirror images of the hard disc and get them sealed on the spot.
Further, examining the rationale behind Anton Piller orders, the Judge observed that in various cases, the element of surprise in conducting raids has been heeded thus allowing the same to be conducted without any notice. This was opined to be especially true of software cases, since the software may be deleted easily from the system
Concluding the hearing the single Judge gave directions for deposit of Costs and allowed an injunction. Microsoft was ordered to deposit Rs. 2 Lakh as security, payable to the alleged infringers in case the allegations made against them were proved false. The Judge went on to point out that the Court cannot act as an investigating agency for a party and if the a investigative suits are filed by a party on mere suspicion, he should be asked to deposit costs so that he can be burdened with costs if a false suit has been instituted An ex-parte injunction was allowed with the direction that the Local Commissioner along with a technical expert of Microsoft be allowed to carry out the raid and prepare mirror images of hard discs to be sealed by the Local Commissioner and deposited in the Court.
However, an appeal (Microsoft Corporation and Anr. V. Dhiren Gopal and Ors {2010 (42) PTC (339) (Del) DB}) was filed against the order of the Single judge in view of the possibility of misuse of databases procured during the seizure by Microsoft. And the consequent deposit ordered to be made. Altering this order, the Division Bench allowed three experts to accompany the Local Commissioner and waived off the security deposit ordered to be made earlier.
Registration of TM is as important as it's Use in Market
Section 11 of the Trademarks Act, 1999 entails refusal of registration of trademark if it is found to be identical with or similar to an earlier registered trademark. The law prohibits the registration of an identical or phonetically similar mark, even though the same may have been registered in respect of goods or services, that are dissimilar. In such a scenario, the aggrieved party may move to Court and seek an order of interim injunction under Order 39 Rules 1 & 2 of the Civil Procedure Code, 1908 to restrain the use of the mark in question during the pendency of his case . The recent case of Aveda Corporation v. Dabur India Ltd. {2010 (42) PTC 315 (Del.)} revisits the considerations to be taken into account while pronouncing an interim injunction in a trademark dispute.
"Aveda" and "Uveda" the two marks in contention were held by Aveda Corporation and Dabur India Ltd. respectively. Aveda had acquired registration for the mark in 1986 in respect of hair care, skin care and other beauty products. Dabur had adopted "Uveda", also for the purposes of skin care and beauty products in August 2009. In this pursuance, Aveda contended that the marks were phonetically similar and accused Dabur of making an attempt to take advantage of the reputation earned by Aveda . They stated that the prominent use of the word "Uveda" on its products caused confusion in the mind of an ordinary consumer with an imperfect recollection and thus resulting in a passing off offence being committed. Dabur submitted that Aveda was 'admittedly' supplying its beauty products in India to only one Spa in Rishikesh and that its products were not available in the market. Dabur also argued that Aveda catered to a very high end limited market since they sold 50 ml of a product at a price of over Rs. 300, as against Dabur's pricing of Rs. 95 for 30 ml. Dabur also contended the packaging to be dissimilar – Aveda's packaging being small in size and blue in colour, whereas, Dabur packaged its products in red and orange/ saffron colour and the same being bigger in size. The style of writing of the two marks was also asserted to be different, with "Dabur" prominently written over the word "Uveda".
In addition, Dabur contended that since the word "Veda" was in public domain and indicative of the product implying vedic/ ayurvedic knowledge, Aveda Corp. could not claim monopoly on it. Dabur India was also entitled to use the word "Veda" with variation sufficient to distinguish the product of Dabur from Aveda and hence no cause of action would arise.. In this respect a reference to the ruling in Three- N- Products Private Ltd. v. Emami Limited, 2008 (4) CHN 608. Further to this, Dabur submitted that the general rule entailed examining the composite word as a whole rather than examining it in isolation while determining the genericity of a composite word. Thus, both words "Aveda" and "Uveda" were contended to be mere distortions of the generic word "Veda
Dabur also submitted that the court should consider the miniscule presence of Aveda before granting an interim injunction so as to preclude any irreparable loss to Dabur, in view of the fact that the sale of Dabur's "Uveda" was already Rs. 75 lacs and products of Rs. 1 crore were in pipeline. To fortify this assertion, reliance was placed upon Wander Ltd. & Anr. v. Antox India (P) Ltd., 1990 (2) Arb.L.R. 399. Additionally, Dabur argued that mere registration of the trademark without its use in India would not entitle Aveda to stop others from using a mark that was different from that of Aveda 's. "Dabur" vouching it to be a well-known brand was a well-known brand and no body could buy their product confusing it to be as that of Aveda Corp.'s,
Aveda Corp. reverted to these stating that merely because the sale of its product was confined to one customer i.e. the spa, the same could not be a ground for refusing protection to their trademark - the quantum of sale not being a measure of protection of the trademark. Aveda also stated that reputation had been acquired throughout India with the help of internet, tv and other media and that, the word "Veda" being in the common domain was insufficient to prevent exclusive protection of their mark.
The court after examining the aforesaid arguments agreed that the question of confusion among the common customers did not arise as the product of Aveda Corp. was not available in the market and was supplied only to one spa at Rishikesh. Considering that Dabur's product clearly represented itself to be a Dabur product, the court rejected the contention. that Dabur India had attempted to pass off its products as that of Aveda's.
In this view, the court denied the grant of an interim injunction, on the count that Aveda having no market in India could not have claimed to be suffering irreparable loss. The Court opined that in a situation where Dabur India is restrained from marketing its product, a loss of around Rs. 1 crore in respect of the pipeline products would accrue to them. The Court reiterated that establishment of a mere prima facie case is insufficient to grant an interim injunction, but due consideration to balance of convenience and irreparable injury was also to be given. The court, in furtherance of the ends of justice, directed Dabur India to use the word "Dabur" in a font as large as "Uveda".
"Aveda" and "Uveda" the two marks in contention were held by Aveda Corporation and Dabur India Ltd. respectively. Aveda had acquired registration for the mark in 1986 in respect of hair care, skin care and other beauty products. Dabur had adopted "Uveda", also for the purposes of skin care and beauty products in August 2009. In this pursuance, Aveda contended that the marks were phonetically similar and accused Dabur of making an attempt to take advantage of the reputation earned by Aveda . They stated that the prominent use of the word "Uveda" on its products caused confusion in the mind of an ordinary consumer with an imperfect recollection and thus resulting in a passing off offence being committed. Dabur submitted that Aveda was 'admittedly' supplying its beauty products in India to only one Spa in Rishikesh and that its products were not available in the market. Dabur also argued that Aveda catered to a very high end limited market since they sold 50 ml of a product at a price of over Rs. 300, as against Dabur's pricing of Rs. 95 for 30 ml. Dabur also contended the packaging to be dissimilar – Aveda's packaging being small in size and blue in colour, whereas, Dabur packaged its products in red and orange/ saffron colour and the same being bigger in size. The style of writing of the two marks was also asserted to be different, with "Dabur" prominently written over the word "Uveda".
In addition, Dabur contended that since the word "Veda" was in public domain and indicative of the product implying vedic/ ayurvedic knowledge, Aveda Corp. could not claim monopoly on it. Dabur India was also entitled to use the word "Veda" with variation sufficient to distinguish the product of Dabur from Aveda and hence no cause of action would arise.. In this respect a reference to the ruling in Three- N- Products Private Ltd. v. Emami Limited, 2008 (4) CHN 608. Further to this, Dabur submitted that the general rule entailed examining the composite word as a whole rather than examining it in isolation while determining the genericity of a composite word. Thus, both words "Aveda" and "Uveda" were contended to be mere distortions of the generic word "Veda
Dabur also submitted that the court should consider the miniscule presence of Aveda before granting an interim injunction so as to preclude any irreparable loss to Dabur, in view of the fact that the sale of Dabur's "Uveda" was already Rs. 75 lacs and products of Rs. 1 crore were in pipeline. To fortify this assertion, reliance was placed upon Wander Ltd. & Anr. v. Antox India (P) Ltd., 1990 (2) Arb.L.R. 399. Additionally, Dabur argued that mere registration of the trademark without its use in India would not entitle Aveda to stop others from using a mark that was different from that of Aveda 's. "Dabur" vouching it to be a well-known brand was a well-known brand and no body could buy their product confusing it to be as that of Aveda Corp.'s,
Aveda Corp. reverted to these stating that merely because the sale of its product was confined to one customer i.e. the spa, the same could not be a ground for refusing protection to their trademark - the quantum of sale not being a measure of protection of the trademark. Aveda also stated that reputation had been acquired throughout India with the help of internet, tv and other media and that, the word "Veda" being in the common domain was insufficient to prevent exclusive protection of their mark.
The court after examining the aforesaid arguments agreed that the question of confusion among the common customers did not arise as the product of Aveda Corp. was not available in the market and was supplied only to one spa at Rishikesh. Considering that Dabur's product clearly represented itself to be a Dabur product, the court rejected the contention. that Dabur India had attempted to pass off its products as that of Aveda's.
In this view, the court denied the grant of an interim injunction, on the count that Aveda having no market in India could not have claimed to be suffering irreparable loss. The Court opined that in a situation where Dabur India is restrained from marketing its product, a loss of around Rs. 1 crore in respect of the pipeline products would accrue to them. The Court reiterated that establishment of a mere prima facie case is insufficient to grant an interim injunction, but due consideration to balance of convenience and irreparable injury was also to be given. The court, in furtherance of the ends of justice, directed Dabur India to use the word "Dabur" in a font as large as "Uveda".
No Copyright for 'Common Sense'
Bharat Matrimony Com. P. Ltd., a pioneer in providing matrimonial services, created a system; "Assured Contact Phone Verification Service", and was the owner and proprietor of the copyright in the system, inbuilt in their website. They spent several lakhs developing and implementing the unique feature which has became synonymous with their website bharatmatrimony.com.
People Interactive (I) Pvt. Ltd., proprietors of the website. "My Contact Details", is a direct competitor of Bharat Matrimony, offering identical features to customers. Bharat Matrimony alleged People Interactive to have lavishly copied the features of the applicant, which was conceptualized by them, and the implementation of the same by People Interactive mislead the public. In this pursuance, Bharat Matrimony filed a suit for temporary injunction. The counsel for Bharat Matrimony in the course of proceedings submitted that the People Interactive had hijacked the core concept of the system development using the Interactive Voice Response (IVR) with minute cosmetic changes to the "Assured Contact Phone Verification Service". They asserted that this action had resulted in huge losses being accrued to the business of Bharat Matrimony, and hence it amounted to copyright infringement.
In response. the counsel for People Interactive contended that the "Assured Contact Phone Verification Service" provided by Bharat Matrimony did s not fall within the ambit of subject matter protected under the Copyright Act. They stated that copyright protection does not extend to any idea, procedure, process, system, method of operation, concept, principle, invention or discovery, regardless of the form in which it is described, illustrated or embodied.
The Court in response to the averments of the parties stated that Bharat Matrimony's claim made under Section 17 (a) failed, I since they were unable to identify the employee who purportedly created the "Assured Contact Phone Verification Service". The Court also noted that they had not produced any affidavit filed by the employee, claiming the invention as evidence. The Court noted that the IVR system was commonly being employed by corporates, banks, railways are broadly using the IVR system. The Court opined that there was nothing innovative regarding collection of personal information of prospective members of a website, but was in fact a matter of "common sense", being a standard practice of all website and online service providers. On these grounds, the Court pronounced the absence of any incidence of copyright infringement and accordingly pronounced the suit for temporary relief not maintainable.
People Interactive (I) Pvt. Ltd., proprietors of the website. "My Contact Details", is a direct competitor of Bharat Matrimony, offering identical features to customers. Bharat Matrimony alleged People Interactive to have lavishly copied the features of the applicant, which was conceptualized by them, and the implementation of the same by People Interactive mislead the public. In this pursuance, Bharat Matrimony filed a suit for temporary injunction. The counsel for Bharat Matrimony in the course of proceedings submitted that the People Interactive had hijacked the core concept of the system development using the Interactive Voice Response (IVR) with minute cosmetic changes to the "Assured Contact Phone Verification Service". They asserted that this action had resulted in huge losses being accrued to the business of Bharat Matrimony, and hence it amounted to copyright infringement.
In response. the counsel for People Interactive contended that the "Assured Contact Phone Verification Service" provided by Bharat Matrimony did s not fall within the ambit of subject matter protected under the Copyright Act. They stated that copyright protection does not extend to any idea, procedure, process, system, method of operation, concept, principle, invention or discovery, regardless of the form in which it is described, illustrated or embodied.
The Court in response to the averments of the parties stated that Bharat Matrimony's claim made under Section 17 (a) failed, I since they were unable to identify the employee who purportedly created the "Assured Contact Phone Verification Service". The Court also noted that they had not produced any affidavit filed by the employee, claiming the invention as evidence. The Court noted that the IVR system was commonly being employed by corporates, banks, railways are broadly using the IVR system. The Court opined that there was nothing innovative regarding collection of personal information of prospective members of a website, but was in fact a matter of "common sense", being a standard practice of all website and online service providers. On these grounds, the Court pronounced the absence of any incidence of copyright infringement and accordingly pronounced the suit for temporary relief not maintainable.
Tuesday, May 11, 2010
Caution While Using (R) Symbol on Product for Export
Trademarks are applied on goods to distinguish them from goods of the competitors. To protect trademarks, proprietors register their trademark and use the mark with the symbol ®. A difficulty arises in this case because trademark registration is territorial in nature i.e. it must be registered in each country separately. When good are meant for export, the trademark owner, generally supplies the goods with the trademark as it appears in the home country and when the mark is registered this includes the symbol ®. Issues can arise when such products are exported to countries where the trademark is not registered.
In a recent case, the German Federal Supreme Court held that the use of ® symbol could be misleading, if the mark is not registered in Germany. This particular judgment can be applied uniformly to all countries in Europe. If, for example, an Indian exporter has products, which are branded with the trademark that is registered in India and bears the ®symbol, unless the mark is registered in the specific country in which it is exported or as a community trademark in Europe, it may be held that the use of the ®.symbol may be considered misleading and a competitor may obtain injunctive relief against such use.
Exporters exporting goods outside India must, therefore, be cautious on two counts:
Ensure that the trademark, applied on the goods meant for the country to which it is exported, is registered in that country and
Ensure that unless this is done they should not use the ®on either the goods themselves or in advertising of the goods in the country of export.
In any event exporters must take note that before exporting their products to a particular country, the trademark used by them must be at least applied for registration in that country. Then, it is advisable to use the more innocuous symbol TM.
It is, in fact, wiser to make this application before the initial talks of export or appointing of importers occurs.
In a recent case, the German Federal Supreme Court held that the use of ® symbol could be misleading, if the mark is not registered in Germany. This particular judgment can be applied uniformly to all countries in Europe. If, for example, an Indian exporter has products, which are branded with the trademark that is registered in India and bears the ®symbol, unless the mark is registered in the specific country in which it is exported or as a community trademark in Europe, it may be held that the use of the ®.symbol may be considered misleading and a competitor may obtain injunctive relief against such use.
Exporters exporting goods outside India must, therefore, be cautious on two counts:
Ensure that the trademark, applied on the goods meant for the country to which it is exported, is registered in that country and
Ensure that unless this is done they should not use the ®on either the goods themselves or in advertising of the goods in the country of export.
In any event exporters must take note that before exporting their products to a particular country, the trademark used by them must be at least applied for registration in that country. Then, it is advisable to use the more innocuous symbol TM.
It is, in fact, wiser to make this application before the initial talks of export or appointing of importers occurs.
Tuesday, April 13, 2010
Injunction Denied to (Generic) Trademark in the field of Education: SC of India
In Law, once a trademark becomes generic it is open to public domain.
Being significantly applied in law, it is understood that a generic
mark never receives any trademark protection and they are free for
everybody to use. This principle has found place in the recent
trademark dispute of [Skyline Education Institute (I) Private Ltd v.
S.L Vaswani and Anr. Civil Appeal no 1362 of 2005]. Skyline Education
Institution in a move against S.L Vaswani and Anr alleged them for
breach of Trademark before the Supreme Court of India. Skyline
Education Institution, the appellant is a company incorporated under
companies Act whose main object is to impart and train in all fields
of education. Satilila Charitable society, the respondent No: 1 is
registered under the Societies Registration Act whose aim meets with
that of Skyline Education Institution. An appeal was filed before the
division bench of High Court against order passed by the single judge
of High Court who refused to restrain Satilila Charitable Society and
S.L.Vaswani from using the term 'Skyline' as a part of their trade
name. The division bench expressed its agreement with the learned
single judge that the word 'Skyline' is generic and is adoptive. Hence
an appeal lies to the Supreme Court.
Skyline Education Institution submitted that Satilila Charitable
Society established an institution with the name Skyline Institute of
Engineering and Technology and the usage of the word 'Skyline' as a
prefix in the name of Institution would amount to confusion in the
mind of the general public and prospective students. In this respect
Skyline Education Institution proceeded with suit for grant of
permanent injunction and further prayed for award of damages and to
give details of the profits earned by Satilila Charitable Society.
Satilia Charitable Society contented that Skyline Education
Institution can't monopolize the word Skyline since it is used
worldwide. Further claimed that as per the present law no trademark
can be granted in respect of educational services. The court in this
regard took the view that Skyline Education Institution cannot
establish exclusive rights over a generic word. However, the court
concluded partly in favour of Skyline Education Institution stating
that Satilila Charitable Society is restricted from introducing
similar course to that of Skyline Education Institution and further
added that they must include a disclaimer in their advertisement that
Skyline Institute of Engineering and Technology is not related to
Skyline Education Institution. The court in this regard took note that
the division bench independently considered the entire matter and had
expressed its agreement with the learned single judge recording that
Skyline Education Institution has failed to make out a prima facie
case for grant of injunction. Satilila Charitable Society further went
on to aver that the decision by the learned single judge followed by
division bench in directing them to attach a disclaimer was not
justified.
The Supreme Court acknowledging the nature of the case noted that the
appeal is allowed and Satilila and S.L Vaswani need not publish a
disclaimer along with the advertisement of their education
institutions thus the modified injunction granted by the single judge
is vacated and Skyline Education Institution was ordered to bear the
cost of groundless litigation upon S.L Vaswani and Anr.
Being significantly applied in law, it is understood that a generic
mark never receives any trademark protection and they are free for
everybody to use. This principle has found place in the recent
trademark dispute of [Skyline Education Institute (I) Private Ltd v.
S.L Vaswani and Anr. Civil Appeal no 1362 of 2005]. Skyline Education
Institution in a move against S.L Vaswani and Anr alleged them for
breach of Trademark before the Supreme Court of India. Skyline
Education Institution, the appellant is a company incorporated under
companies Act whose main object is to impart and train in all fields
of education. Satilila Charitable society, the respondent No: 1 is
registered under the Societies Registration Act whose aim meets with
that of Skyline Education Institution. An appeal was filed before the
division bench of High Court against order passed by the single judge
of High Court who refused to restrain Satilila Charitable Society and
S.L.Vaswani from using the term 'Skyline' as a part of their trade
name. The division bench expressed its agreement with the learned
single judge that the word 'Skyline' is generic and is adoptive. Hence
an appeal lies to the Supreme Court.
Skyline Education Institution submitted that Satilila Charitable
Society established an institution with the name Skyline Institute of
Engineering and Technology and the usage of the word 'Skyline' as a
prefix in the name of Institution would amount to confusion in the
mind of the general public and prospective students. In this respect
Skyline Education Institution proceeded with suit for grant of
permanent injunction and further prayed for award of damages and to
give details of the profits earned by Satilila Charitable Society.
Satilia Charitable Society contented that Skyline Education
Institution can't monopolize the word Skyline since it is used
worldwide. Further claimed that as per the present law no trademark
can be granted in respect of educational services. The court in this
regard took the view that Skyline Education Institution cannot
establish exclusive rights over a generic word. However, the court
concluded partly in favour of Skyline Education Institution stating
that Satilila Charitable Society is restricted from introducing
similar course to that of Skyline Education Institution and further
added that they must include a disclaimer in their advertisement that
Skyline Institute of Engineering and Technology is not related to
Skyline Education Institution. The court in this regard took note that
the division bench independently considered the entire matter and had
expressed its agreement with the learned single judge recording that
Skyline Education Institution has failed to make out a prima facie
case for grant of injunction. Satilila Charitable Society further went
on to aver that the decision by the learned single judge followed by
division bench in directing them to attach a disclaimer was not
justified.
The Supreme Court acknowledging the nature of the case noted that the
appeal is allowed and Satilila and S.L Vaswani need not publish a
disclaimer along with the advertisement of their education
institutions thus the modified injunction granted by the single judge
is vacated and Skyline Education Institution was ordered to bear the
cost of groundless litigation upon S.L Vaswani and Anr.
Trademark Infringement case went against TOYOTA in Delhi HC
In a recent decision of the Delhi High Court, available here, the
Japanese automobile magnet Toyota suffered a setback, when the
petition that it had filed seeking exclusive rights over the trademark
“PRIUS” for its hybrid cars was dismissed by the court. The matter,
titled Toyota Jidosha Kabushiki Kaisha v. Deepak Mangal & Others,
comprised of I.A.Nos.16776/2009, 110/2010, 1156/2010 & Crl.M.A.No.
1032/2010 in CS(OS) No.2490/2009 and the judgement was delivered on
March 19, 2010 by Indermeet Kaur, J.
The petitioner had sought to prevent the defendants from using the
trademark/trading style TOYOTA, the toyota device, INNOVA and PRIUS
regarding automobile parts and accessories or any other related goods
or to perform a passing-off action with respect to the defendant’s
goods in the name of the petitioner.
This suit was actually based on a two-fold cause of action. The first
was regarding the infringement of the 3 registered trademarks of the
petitioner by the defendants, viz. TOYOTA, the toyota device and
INNOVA. The second was with respect of the defendants seeking to pass
off the trademark PRIUS as their own. The petitioner had claimed to be
the prior user of that trademark, although it had not been registered
before in India in the petitioner’s name.
According to the petitioner, in 1994, it had designed a concept
vehicle with a hybrid engine, named it “PRIUS” after the Latin word
“prior” or “before”. The first model was sold in December, 1997 in
Japan and the vehicle was officially launched in 2001. Petitioner has
also been the registered proprietor of the trademark PRIUS in as many
as 28 countries from 1990 onwards. In order to back its position, the
petitioner put on record the sales figures of the car in foreign
counties as well as extensive advertisements of the vehicle both in
national and international publications. Newspaper reports and other
online media coverage of the petitioner’s promotion of the PRIUS brand
had also been cited along with. The defendants, on the other hand,
were alleged to have been using the same mark as an essential and
leading portion of their trading name and the same appears on the
defendants’ products. Nor have the defendants sought any authorization
from the petitioner for such use and hence such action on the
defendants’ part allegedly amounted to passing off and dilution of the
plaintiff’s trademark, thereby adversely affecting the plaintiff’s
goodwill.
Given the wide media coverage that the vehicle and the petitioner’s
actions to promote the same along with the new hybrid system received
even in prominent Indian newspapers and automotive journals, the
petitioner contended that it was not possible to believe that the
defendants were unaware of the prior usage of the mark PRIUS and the
petitioner company’s association with the same and that their
subsequent efforts to use the mark had not been aimed to pass off the
petitioner company’s huge goodwill and brand value as their own.
In this context, the petitioner relied upon the decision of the
Supreme Court in N.R. Dongre v. Whirlpool Corporation [(1996) 5 SCC
714]. The relevant part of the judgement that had been cited is as
follows:
“The concept and principle on which passing off action is grounded is
that a man is not to sell his own goods under the pretence that they
are the goods of another man. A trader needs protection of his right
of prior user of a trade mark as the benefit of the name and
reputation earned by him cannot be taken advantage of by another
trader by copying the mark and getting it registered before he could
get the same registered in his favour. We see no reason why a
registered owner of a trade mark should be allowed to deceive
purchasers into the belief that they are getting the goods of another
while they would be buying the goods of the former which they never
intended to do. In an action for passing off if should not matter
whether misrepresentation or deception has proceeded from a registered
or an unregistered user of a trademark. He cannot represent his own
goods as the goods of somebody else.”
According to the petitioner, as per this judgement, although the
defendants might have registered the trademark PRIUS under their
names, but the same did not constitute a defence for their action
seeking to pass-off the petitioner’s goods as their own. To
substantiate this allegation, the decision in Jolen Inc. v. Doctor and
Company [(2002)2 C.T.M.R. 6] was also cited.
The petitioner also referred to Pfizer Ireland Pharmaceuticals v.
Intas Pharmaceuticals and Anr. [2004(28) PTC 456(Del)] to support the
submission that the worldwide reputation of the trademark PRIUS has
been established by his sale turnover. Regarding the defendants’ plea
of the plaintiff not having any presence/business in India when the
defendant had adopted the mark, it was contended that the plaintiff
was naturally affected when it sought to establish such business in
India and found the defendant to be trespassing, as was the case in
Ford Motor Company of Canada Limited & Anr. v. Ford Services Centre
[MANU/DE/1774/2008], where plaintiff was found entitled to the interim
relief.
The defendants pleaded that the petitioner has delayed for long before
approaching the court, in response to which, the latter cited the case
of Daimler Benz Aktiegesellschaft and Anr. v Hybo Hindustan [AIR 1994
Delhi 239] to contend that the delay in approaching the Court could
not justify the use of the trademark which was a worldwide famous
name. The petitioner had further drawn the court’s attention to the
packaging of the defendants’ products, showing use of the trademark
TOYOTA, the toyota device, INNOVA and PRIUS along with the invoices,
brochures and price list. It had further been submitted that the
extensive use of the said marks on these documents of the defendant
prima facie evidence his malafide intent; i.e. of the infringement of
the petitioner’s trademarks and passing off his goods to the innocent
purchaser as that of his own. The defendants pleaded that such use for
the purpose of character identification of goods, which was
categorically denied by the petitioner.
Defendants in this case had put up a defence of delay, waiver and
acquiescence on the part of the petitioner. According to them, the
petitioner had neither applied for registration of the trademark PRIUS
itself nor objected to the defendants’ registration of the same in
2002. By allowing use of said mark by defendants for such a long time
from 2002 to 2009, the petitioner was alleged to have given up all
claims, if any, on that mark. Defendants further submitted that
certain advertisements, as produced by the defendants in evidence
clearly exhibit that the defendant is the supplier of garnish covers
and auto accessories for various vehicles including that of the Toyota
group. The usage of marks ‘toyota device’ had only thus been for the
purpose of the identification of the item and its suitability to the
wide range of vehicles mentioned thereunder and not with the intent to
deceive the purchaser or to confuse him into believing that defendants
had been selling auto accessories of ‘TOYOTA’. In fact, petitioner
itself had relied on the same published advertisements.
Nor had the petitioner provided any explanation regarding the delay
that it indulged into before bringing the matter to court, which
indicated acquiescence of defendants’ claim by the petitioner, if not
a waiver of rights. In this context, reliance had been placed on the
cases Amritdhara Pharmacy v. Satyadeo Gutpa [AIR 1963 SC 449] and
Khoday Distilleries Limited(Now known as Khoday India Limited) v. The
Scotch Whisky Association and Ors. [AIR 2008 SC 2737] were delay in
filing application alleging infringement had been held as fatal to the
accusation.
"PRIUS" being contained in the English dictionaries, it was argued
that petitioner could not claim a monopoly over the word, which was
not an invented one and Sections 30(1)(b), (2)(d) and Section 35 of
the Trademark Act were relied upon to argue that ‘Toyota’, ‘toyota
device’ and ‘INNOVA’ had been used by the defendants only to
demonstrate the compatibility of the auto accessories in the use of
these vehicles, along with several others. For this, defendants had
relied upon Hawkins Cooker Ltd v. M/s Murugan Enterprises [2008(36)
PTC 290(Del)].
Petitioner, in return argued that mere existence of the aforesaid
advertisements on the defendants’ part did not necessarily imply that
petitioner had prior knowledge of the infringement. A distinction was
sought to be drawn between constructive knowledge and actual knowledge
in this context and the cases of Automatic Electric Limited v.
R.K.Dhawan & Anr. [1999 PTC (19) 81] and M/s Hidesign v. M/s Hidesign
Creations [AIR 1991 Delhi 243] were cited in support. It was further
contended tha the cumulative sales figure of the defendants during
this 7 year-delay consisted of a miniscule figure only and hence could
not be regarded as proceeds from a well-established business. To
establish the legality of the petitioner having proprietary word PRIUS
and to quash the defendants objections regarding the same, the matters
of Ciba Ltd. Basle Switzerland v. M.Ramalingam and S.Subramaniam
Trading in the name of Sought Indian Manufacturing Co., Madura and
Another [AIR 1958 Bombay 56 (V 25 C 21 )], Altiebolaget Volvo v. Volvo
Steels Limited [1998 PTC (18) (DB)], Satyam Infoway Ltd. v. Siffynet
Solutions (P) Ltd. [(2004) 6 SCC 145] were relied upon. To drive home
defendants’ dishonest usage of the marks from the beginning, the
petitioner cited the cases of L.D.Malhotra Industries v. Ropi
Industries [ILR 1976 Delhi 278] and Beiersdorf A.G. v. Ajay Sukhwani
and Another [2009 (39) PTC 38 (Del.)].
The petitioner also contended that high safety measures adopted by the
petitioner compared to the defendant also needed to be borne in mind
and the purchaser could not be exposed willingly to a risk given the
nature of the goods involved, viz. automobile parts.
The court held that the journals publicizing petitioner’s usage of
PRIUS were not easily available to the common Indian public. Even the
Indian magazine publications relied upon by the petitioner had been
irregular at best. It had only been in 2009 that the Auto Indian
Magazines had published detailed information on the Toyota vehicle.
The court referred to the case of Gillette Company vs. A.K. Stationery
[2001 PTC 573 (Del)]. In that matter, judiciary had recognized the
principle of a trans-border reputation and the spill over of its
international reputation from foreign lands to the Indian boundaries.
It had been held that its application would depend on case-to-case
basis. In the present case, the court believed that there was not
sufficient material on record to hold that an Indian purchaser of
chrome plated auto accessories had become aware Toyota’s association
with the PRIUS mark. The case of Sakalain Meghjee v. B.M.House (India)
Ltd. [2002 (24) PTC 207 (Del)] was also referred to in this relation.
On the other hand, the registration of the mark by the defendants in
2001 and the subsequent sales figures indicated that the exclusive use
of the said mark by them as per Section 28(2) of the Trademarks Act
and continuing business regarding the same. The court refused to
accept the petitioner’s argument of it having only a constructive
knowledge of the defendants’ usage of the mark. The defendants’
reliance on the Amritdhara Case and the Khode distilleries case was
also approved of.
The court opined that acquiescence was one facet of delay and if the
petitioner had stood by knowingly and let the defendants build up an
important trade until it had become necessary to crush it, then the
petitioner would be stopped by his acquiescence. Thus if the
acquiescence in the infringement amounted to consent, it would be a
complete defence and the acquiescence must be such as to lead to the
inference of a license sufficient to create a new right in the
defendant. The court in this context also referred to cases such as
Ramdev Food Products(P) Ltd. v. Arvindbhai Rambhai Patel and Ors.[2006
(33) PTC 281] and other legal authorities like Halsbury’s Laws of
England, Fourth Edition, Vol. 16, paragraph 1505 to emphasize this
point.
The court then went on to say that petitioner’s delay in filing the
case by 7 years without having a reasonable explanation allowed the
defendant to establish a substantial business and at that point, such
delay might be prejudicial to the petitioner being granted any relief.
Reference was made to cases such as Allied Blenders and Distillers P.
Ltd. v. Paul P.John and Ors. [2008 (38) PTC 568 (Del)] and Procter &
Gamble Company v. Satish Patel and Ors. [1997 (1) ARBLR 158 (Del)] and
also Standard Electricals Limited v. Rocket Electricals and Anr. [2004
(72) DRJ 794]. The court also dubbed the petitioner’s submission of it
having learnt about the defendant only in 2009 on a stray web search
as patently false and chastised the petitioner for not having
disclosed to the court the date of registration of the mark by the
defendants as far back as March, 2002. Had it done so, then that would
have been taken into consideration before the court had granted
interim relief to the petitioner. Mention was made of Old Navy (ITM)
Inc. and Ors., GAP (ITM) Inc. and Ors. and Banana Republic (Itm) Inc.
and Ors. [2007(99) DRJ 571], wherein it was held that non-disclosure
of material facts would work to the prejudice of such a non-disclosing
party disentitling him to a relief in equity.
The status of PRIUS as not being an invented word was also established
and the defendants were held to be honest user of the same. The court
also took note of the dissimilarity between the trade dress of the
petitioner and the defendants, including the packaging, shape of
material, all visual impressions and their getup including its colour
scheme, description of the words i.e. their font, size and
alphabetical array etc. as also the variation in price. Moreover,
according to the court, the purchaser of those auto accessories being
usually one from a high income group, he was likely to be an educated
person aware of the identity of the seller who was unlikely to mistake
the defendant for the petitioner. The defendant on the use of the
registered marks Toyota, the toyota device and the INNOVA was held to
be protected under the saving clause of Section 30 of the Trademarks
Act, which protects a honest user of a registered trade mark for the
purpose of identification of the goods. Mention was also made of the
European Court decision in Gillette Company vs. L.A.Laboratory
[2005(37) FSR 808] in this context. In that case, the conditions of an
honest use within the meaning of Article 1(1)(c) of the Directive
89/104 was held to be in substance the expression of a duty to act
fairly in relation to the legitimate interests of the trade mark
owner. The use is dishonest only if: “It is done in such a manner as
to give the impression that there is a commercial connection between
the third party and the trade mark owner; ii. It affects the value of
the trade mark by taking unfair advantage of its distinctive character
or repute; iii. It entails the discrediting or denigration of that
mark.”
The petitioner had failed to establish such dishonest use by the
defendant, who in turn had proven that his use of the mark PRIUS was
in accordance with the honest practices in industrial and commercial
matters. Since he had not been taking any unfair advantage and his use
was not detrimental to the distinctive character or the repute of such
a trademark, therefore it did not amount to an infringement/passing
off. As per Section 29 of the Trademark Act, the onus to prove that
the mark of the petitioner had been infringed lied upon the plaintiff
and so did the responsibility of proving that the alleged infringement
fell beyond the purview of the exceptions laid down in Section 30. The
court also accepted defendant’s argument under Section 30(2)(d) of the
use of the other marks like TOYOTA, toyota device and INNOVA as
reasonably necessary to indicate that the goods are adaptable and
suited to the vehicles mentioned therein
The balance of convenience also lied in favour of the defendant, since
if after business growth of more than seven years the defendant is
prevented from using his trade name, he would suffer huge business
loss and his legitimate financial expectations would be harmed
irreparably. On the other hand, given that petitioner had not even
launched the vehicle PRIUS on the Indian roads, no similar injury
would be suffered by him if defendant was allowed to continue the
usage.
Thus, given the aforesaid reasoning, the court dismissed the
petitioner’s allegations of trademark infringement against the
defendants.
Japanese automobile magnet Toyota suffered a setback, when the
petition that it had filed seeking exclusive rights over the trademark
“PRIUS” for its hybrid cars was dismissed by the court. The matter,
titled Toyota Jidosha Kabushiki Kaisha v. Deepak Mangal & Others,
comprised of I.A.Nos.16776/2009, 110/2010, 1156/2010 & Crl.M.A.No.
1032/2010 in CS(OS) No.2490/2009 and the judgement was delivered on
March 19, 2010 by Indermeet Kaur, J.
The petitioner had sought to prevent the defendants from using the
trademark/trading style TOYOTA, the toyota device, INNOVA and PRIUS
regarding automobile parts and accessories or any other related goods
or to perform a passing-off action with respect to the defendant’s
goods in the name of the petitioner.
This suit was actually based on a two-fold cause of action. The first
was regarding the infringement of the 3 registered trademarks of the
petitioner by the defendants, viz. TOYOTA, the toyota device and
INNOVA. The second was with respect of the defendants seeking to pass
off the trademark PRIUS as their own. The petitioner had claimed to be
the prior user of that trademark, although it had not been registered
before in India in the petitioner’s name.
According to the petitioner, in 1994, it had designed a concept
vehicle with a hybrid engine, named it “PRIUS” after the Latin word
“prior” or “before”. The first model was sold in December, 1997 in
Japan and the vehicle was officially launched in 2001. Petitioner has
also been the registered proprietor of the trademark PRIUS in as many
as 28 countries from 1990 onwards. In order to back its position, the
petitioner put on record the sales figures of the car in foreign
counties as well as extensive advertisements of the vehicle both in
national and international publications. Newspaper reports and other
online media coverage of the petitioner’s promotion of the PRIUS brand
had also been cited along with. The defendants, on the other hand,
were alleged to have been using the same mark as an essential and
leading portion of their trading name and the same appears on the
defendants’ products. Nor have the defendants sought any authorization
from the petitioner for such use and hence such action on the
defendants’ part allegedly amounted to passing off and dilution of the
plaintiff’s trademark, thereby adversely affecting the plaintiff’s
goodwill.
Given the wide media coverage that the vehicle and the petitioner’s
actions to promote the same along with the new hybrid system received
even in prominent Indian newspapers and automotive journals, the
petitioner contended that it was not possible to believe that the
defendants were unaware of the prior usage of the mark PRIUS and the
petitioner company’s association with the same and that their
subsequent efforts to use the mark had not been aimed to pass off the
petitioner company’s huge goodwill and brand value as their own.
In this context, the petitioner relied upon the decision of the
Supreme Court in N.R. Dongre v. Whirlpool Corporation [(1996) 5 SCC
714]. The relevant part of the judgement that had been cited is as
follows:
“The concept and principle on which passing off action is grounded is
that a man is not to sell his own goods under the pretence that they
are the goods of another man. A trader needs protection of his right
of prior user of a trade mark as the benefit of the name and
reputation earned by him cannot be taken advantage of by another
trader by copying the mark and getting it registered before he could
get the same registered in his favour. We see no reason why a
registered owner of a trade mark should be allowed to deceive
purchasers into the belief that they are getting the goods of another
while they would be buying the goods of the former which they never
intended to do. In an action for passing off if should not matter
whether misrepresentation or deception has proceeded from a registered
or an unregistered user of a trademark. He cannot represent his own
goods as the goods of somebody else.”
According to the petitioner, as per this judgement, although the
defendants might have registered the trademark PRIUS under their
names, but the same did not constitute a defence for their action
seeking to pass-off the petitioner’s goods as their own. To
substantiate this allegation, the decision in Jolen Inc. v. Doctor and
Company [(2002)2 C.T.M.R. 6] was also cited.
The petitioner also referred to Pfizer Ireland Pharmaceuticals v.
Intas Pharmaceuticals and Anr. [2004(28) PTC 456(Del)] to support the
submission that the worldwide reputation of the trademark PRIUS has
been established by his sale turnover. Regarding the defendants’ plea
of the plaintiff not having any presence/business in India when the
defendant had adopted the mark, it was contended that the plaintiff
was naturally affected when it sought to establish such business in
India and found the defendant to be trespassing, as was the case in
Ford Motor Company of Canada Limited & Anr. v. Ford Services Centre
[MANU/DE/1774/2008], where plaintiff was found entitled to the interim
relief.
The defendants pleaded that the petitioner has delayed for long before
approaching the court, in response to which, the latter cited the case
of Daimler Benz Aktiegesellschaft and Anr. v Hybo Hindustan [AIR 1994
Delhi 239] to contend that the delay in approaching the Court could
not justify the use of the trademark which was a worldwide famous
name. The petitioner had further drawn the court’s attention to the
packaging of the defendants’ products, showing use of the trademark
TOYOTA, the toyota device, INNOVA and PRIUS along with the invoices,
brochures and price list. It had further been submitted that the
extensive use of the said marks on these documents of the defendant
prima facie evidence his malafide intent; i.e. of the infringement of
the petitioner’s trademarks and passing off his goods to the innocent
purchaser as that of his own. The defendants pleaded that such use for
the purpose of character identification of goods, which was
categorically denied by the petitioner.
Defendants in this case had put up a defence of delay, waiver and
acquiescence on the part of the petitioner. According to them, the
petitioner had neither applied for registration of the trademark PRIUS
itself nor objected to the defendants’ registration of the same in
2002. By allowing use of said mark by defendants for such a long time
from 2002 to 2009, the petitioner was alleged to have given up all
claims, if any, on that mark. Defendants further submitted that
certain advertisements, as produced by the defendants in evidence
clearly exhibit that the defendant is the supplier of garnish covers
and auto accessories for various vehicles including that of the Toyota
group. The usage of marks ‘toyota device’ had only thus been for the
purpose of the identification of the item and its suitability to the
wide range of vehicles mentioned thereunder and not with the intent to
deceive the purchaser or to confuse him into believing that defendants
had been selling auto accessories of ‘TOYOTA’. In fact, petitioner
itself had relied on the same published advertisements.
Nor had the petitioner provided any explanation regarding the delay
that it indulged into before bringing the matter to court, which
indicated acquiescence of defendants’ claim by the petitioner, if not
a waiver of rights. In this context, reliance had been placed on the
cases Amritdhara Pharmacy v. Satyadeo Gutpa [AIR 1963 SC 449] and
Khoday Distilleries Limited(Now known as Khoday India Limited) v. The
Scotch Whisky Association and Ors. [AIR 2008 SC 2737] were delay in
filing application alleging infringement had been held as fatal to the
accusation.
"PRIUS" being contained in the English dictionaries, it was argued
that petitioner could not claim a monopoly over the word, which was
not an invented one and Sections 30(1)(b), (2)(d) and Section 35 of
the Trademark Act were relied upon to argue that ‘Toyota’, ‘toyota
device’ and ‘INNOVA’ had been used by the defendants only to
demonstrate the compatibility of the auto accessories in the use of
these vehicles, along with several others. For this, defendants had
relied upon Hawkins Cooker Ltd v. M/s Murugan Enterprises [2008(36)
PTC 290(Del)].
Petitioner, in return argued that mere existence of the aforesaid
advertisements on the defendants’ part did not necessarily imply that
petitioner had prior knowledge of the infringement. A distinction was
sought to be drawn between constructive knowledge and actual knowledge
in this context and the cases of Automatic Electric Limited v.
R.K.Dhawan & Anr. [1999 PTC (19) 81] and M/s Hidesign v. M/s Hidesign
Creations [AIR 1991 Delhi 243] were cited in support. It was further
contended tha the cumulative sales figure of the defendants during
this 7 year-delay consisted of a miniscule figure only and hence could
not be regarded as proceeds from a well-established business. To
establish the legality of the petitioner having proprietary word PRIUS
and to quash the defendants objections regarding the same, the matters
of Ciba Ltd. Basle Switzerland v. M.Ramalingam and S.Subramaniam
Trading in the name of Sought Indian Manufacturing Co., Madura and
Another [AIR 1958 Bombay 56 (V 25 C 21 )], Altiebolaget Volvo v. Volvo
Steels Limited [1998 PTC (18) (DB)], Satyam Infoway Ltd. v. Siffynet
Solutions (P) Ltd. [(2004) 6 SCC 145] were relied upon. To drive home
defendants’ dishonest usage of the marks from the beginning, the
petitioner cited the cases of L.D.Malhotra Industries v. Ropi
Industries [ILR 1976 Delhi 278] and Beiersdorf A.G. v. Ajay Sukhwani
and Another [2009 (39) PTC 38 (Del.)].
The petitioner also contended that high safety measures adopted by the
petitioner compared to the defendant also needed to be borne in mind
and the purchaser could not be exposed willingly to a risk given the
nature of the goods involved, viz. automobile parts.
The court held that the journals publicizing petitioner’s usage of
PRIUS were not easily available to the common Indian public. Even the
Indian magazine publications relied upon by the petitioner had been
irregular at best. It had only been in 2009 that the Auto Indian
Magazines had published detailed information on the Toyota vehicle.
The court referred to the case of Gillette Company vs. A.K. Stationery
[2001 PTC 573 (Del)]. In that matter, judiciary had recognized the
principle of a trans-border reputation and the spill over of its
international reputation from foreign lands to the Indian boundaries.
It had been held that its application would depend on case-to-case
basis. In the present case, the court believed that there was not
sufficient material on record to hold that an Indian purchaser of
chrome plated auto accessories had become aware Toyota’s association
with the PRIUS mark. The case of Sakalain Meghjee v. B.M.House (India)
Ltd. [2002 (24) PTC 207 (Del)] was also referred to in this relation.
On the other hand, the registration of the mark by the defendants in
2001 and the subsequent sales figures indicated that the exclusive use
of the said mark by them as per Section 28(2) of the Trademarks Act
and continuing business regarding the same. The court refused to
accept the petitioner’s argument of it having only a constructive
knowledge of the defendants’ usage of the mark. The defendants’
reliance on the Amritdhara Case and the Khode distilleries case was
also approved of.
The court opined that acquiescence was one facet of delay and if the
petitioner had stood by knowingly and let the defendants build up an
important trade until it had become necessary to crush it, then the
petitioner would be stopped by his acquiescence. Thus if the
acquiescence in the infringement amounted to consent, it would be a
complete defence and the acquiescence must be such as to lead to the
inference of a license sufficient to create a new right in the
defendant. The court in this context also referred to cases such as
Ramdev Food Products(P) Ltd. v. Arvindbhai Rambhai Patel and Ors.[2006
(33) PTC 281] and other legal authorities like Halsbury’s Laws of
England, Fourth Edition, Vol. 16, paragraph 1505 to emphasize this
point.
The court then went on to say that petitioner’s delay in filing the
case by 7 years without having a reasonable explanation allowed the
defendant to establish a substantial business and at that point, such
delay might be prejudicial to the petitioner being granted any relief.
Reference was made to cases such as Allied Blenders and Distillers P.
Ltd. v. Paul P.John and Ors. [2008 (38) PTC 568 (Del)] and Procter &
Gamble Company v. Satish Patel and Ors. [1997 (1) ARBLR 158 (Del)] and
also Standard Electricals Limited v. Rocket Electricals and Anr. [2004
(72) DRJ 794]. The court also dubbed the petitioner’s submission of it
having learnt about the defendant only in 2009 on a stray web search
as patently false and chastised the petitioner for not having
disclosed to the court the date of registration of the mark by the
defendants as far back as March, 2002. Had it done so, then that would
have been taken into consideration before the court had granted
interim relief to the petitioner. Mention was made of Old Navy (ITM)
Inc. and Ors., GAP (ITM) Inc. and Ors. and Banana Republic (Itm) Inc.
and Ors. [2007(99) DRJ 571], wherein it was held that non-disclosure
of material facts would work to the prejudice of such a non-disclosing
party disentitling him to a relief in equity.
The status of PRIUS as not being an invented word was also established
and the defendants were held to be honest user of the same. The court
also took note of the dissimilarity between the trade dress of the
petitioner and the defendants, including the packaging, shape of
material, all visual impressions and their getup including its colour
scheme, description of the words i.e. their font, size and
alphabetical array etc. as also the variation in price. Moreover,
according to the court, the purchaser of those auto accessories being
usually one from a high income group, he was likely to be an educated
person aware of the identity of the seller who was unlikely to mistake
the defendant for the petitioner. The defendant on the use of the
registered marks Toyota, the toyota device and the INNOVA was held to
be protected under the saving clause of Section 30 of the Trademarks
Act, which protects a honest user of a registered trade mark for the
purpose of identification of the goods. Mention was also made of the
European Court decision in Gillette Company vs. L.A.Laboratory
[2005(37) FSR 808] in this context. In that case, the conditions of an
honest use within the meaning of Article 1(1)(c) of the Directive
89/104 was held to be in substance the expression of a duty to act
fairly in relation to the legitimate interests of the trade mark
owner. The use is dishonest only if: “It is done in such a manner as
to give the impression that there is a commercial connection between
the third party and the trade mark owner; ii. It affects the value of
the trade mark by taking unfair advantage of its distinctive character
or repute; iii. It entails the discrediting or denigration of that
mark.”
The petitioner had failed to establish such dishonest use by the
defendant, who in turn had proven that his use of the mark PRIUS was
in accordance with the honest practices in industrial and commercial
matters. Since he had not been taking any unfair advantage and his use
was not detrimental to the distinctive character or the repute of such
a trademark, therefore it did not amount to an infringement/passing
off. As per Section 29 of the Trademark Act, the onus to prove that
the mark of the petitioner had been infringed lied upon the plaintiff
and so did the responsibility of proving that the alleged infringement
fell beyond the purview of the exceptions laid down in Section 30. The
court also accepted defendant’s argument under Section 30(2)(d) of the
use of the other marks like TOYOTA, toyota device and INNOVA as
reasonably necessary to indicate that the goods are adaptable and
suited to the vehicles mentioned therein
The balance of convenience also lied in favour of the defendant, since
if after business growth of more than seven years the defendant is
prevented from using his trade name, he would suffer huge business
loss and his legitimate financial expectations would be harmed
irreparably. On the other hand, given that petitioner had not even
launched the vehicle PRIUS on the Indian roads, no similar injury
would be suffered by him if defendant was allowed to continue the
usage.
Thus, given the aforesaid reasoning, the court dismissed the
petitioner’s allegations of trademark infringement against the
defendants.
Deceptive Similarity Revisited (Madras HC)
In Law, Deceptive similarity indicates confusion caused either
deliberately or inadvertently over two similar products enough to
mislead an ordinary prudent man that he is likely to choose the
deceptive product over the original product. The significance of the
decision in this case lies in the approach of the Court looking at and
interpreting the deceptive similarity and Section12 of Trademarks Act.
V.Pichandi Sole Proprietor, in a move against G.Charapani Match Works
[V.Pichandi Sole Proprietor & Ors Versus G.Chakrapani Match Works &
Ors,2010 (42) PTC29(Bom)] alleged them for breach of trademark before
the Madras High Court. V.Pichandi Sole Proprietor, the plaintiff is
conducting business in the sale of safety matches under the trademark
PLUS2 particularly in the district of Beed, Aurangabad, Ahmednagar.
G.Chakrapani Match Works, Defendant No1 is manufacturer of safety
matches bearing offending trademark PLUS5. Both are similar and
chances for administration of PLUS5 by consumers in place of PLUS2 is
higher. The customers are purchasing safety matches with trademark
PLUS5 under the belief that they are purchasing safety matches with
trademark PLUS2 and this has put V. Pichandi Sole Propritor into
irreparable loss. It's not only a case of trademark infringement but
also passing off. Thus it was asserted that a perpetual injunction be
granted to avoid such dangerous consequence.
The G.Chakrapani Match Works, averred to be the registered proprietors
of trademark PLUS2. According to him a logo of his personal
photograph, distinguishes it from the trademark of V.Pichandi Sole
Proprietor and contended that the V.Pichandi Sole Proprietor have been
using different designs than the registered trademark. Thus V.Pichandi
Sole Proprietors were not entitled to equitable relief and question
regarding passing off and infringement of trademark doesn't arise. It
was submitted that during the pendency of the case G.Chakrapani Match
Works, successfully registered the trademark PLUS5 with the registrar
of trademark. They further submitted that the Intellectual Property
Appellate Board and Trial Court had dismissed the suit before it on
the ground that no confusion or deception has been substantiated by
the grant of trademark to G.Chakrapani Match Works, of PLUS5 and thus
the writ petition by V.Pichandi Sole Proprietor is pending before
Madras high court.
Further Section 12 of the Act was observed while opining about the
judgement passed by the Appellate Board produced before the Trial
Court. Section 12 of Trademark Act 1999 defines honest concurrent use
of trademark. As per Section 12 in case of honest concurrent use or of
other special circumstances which, in the opinion of the Registrar,
make it proper so to do, he may permit the registration by more than
one proprietor of trade marks which are identical or nearly resemble
each other, whether any such trade mark is already registered or not,
in respect of the same goods or description of goods, subject to such
conditions and limitations, if any, as the Registrar may think fit to
impose.
The Trial Court had concluded on basis of Section 12 that there was no
evidence of infringement of trademark or passing of and this was not a
case to issue temporary injunction. The Trial Court opinioned that
granting temporary injunction in this appeal would be upsetting since
writ petition was pending before the Madras High Court. So if any
interim order has to be sought it should be sought in writ petition
pending before the Madras High Court.
On comparison of claims the Madras High Court held that, this civil
application pending doesn't survive. In this view the Court disposed
of the civil application and the parties were to bear their own cost.
deliberately or inadvertently over two similar products enough to
mislead an ordinary prudent man that he is likely to choose the
deceptive product over the original product. The significance of the
decision in this case lies in the approach of the Court looking at and
interpreting the deceptive similarity and Section12 of Trademarks Act.
V.Pichandi Sole Proprietor, in a move against G.Charapani Match Works
[V.Pichandi Sole Proprietor & Ors Versus G.Chakrapani Match Works &
Ors,2010 (42) PTC29(Bom)] alleged them for breach of trademark before
the Madras High Court. V.Pichandi Sole Proprietor, the plaintiff is
conducting business in the sale of safety matches under the trademark
PLUS2 particularly in the district of Beed, Aurangabad, Ahmednagar.
G.Chakrapani Match Works, Defendant No1 is manufacturer of safety
matches bearing offending trademark PLUS5. Both are similar and
chances for administration of PLUS5 by consumers in place of PLUS2 is
higher. The customers are purchasing safety matches with trademark
PLUS5 under the belief that they are purchasing safety matches with
trademark PLUS2 and this has put V. Pichandi Sole Propritor into
irreparable loss. It's not only a case of trademark infringement but
also passing off. Thus it was asserted that a perpetual injunction be
granted to avoid such dangerous consequence.
The G.Chakrapani Match Works, averred to be the registered proprietors
of trademark PLUS2. According to him a logo of his personal
photograph, distinguishes it from the trademark of V.Pichandi Sole
Proprietor and contended that the V.Pichandi Sole Proprietor have been
using different designs than the registered trademark. Thus V.Pichandi
Sole Proprietors were not entitled to equitable relief and question
regarding passing off and infringement of trademark doesn't arise. It
was submitted that during the pendency of the case G.Chakrapani Match
Works, successfully registered the trademark PLUS5 with the registrar
of trademark. They further submitted that the Intellectual Property
Appellate Board and Trial Court had dismissed the suit before it on
the ground that no confusion or deception has been substantiated by
the grant of trademark to G.Chakrapani Match Works, of PLUS5 and thus
the writ petition by V.Pichandi Sole Proprietor is pending before
Madras high court.
Further Section 12 of the Act was observed while opining about the
judgement passed by the Appellate Board produced before the Trial
Court. Section 12 of Trademark Act 1999 defines honest concurrent use
of trademark. As per Section 12 in case of honest concurrent use or of
other special circumstances which, in the opinion of the Registrar,
make it proper so to do, he may permit the registration by more than
one proprietor of trade marks which are identical or nearly resemble
each other, whether any such trade mark is already registered or not,
in respect of the same goods or description of goods, subject to such
conditions and limitations, if any, as the Registrar may think fit to
impose.
The Trial Court had concluded on basis of Section 12 that there was no
evidence of infringement of trademark or passing of and this was not a
case to issue temporary injunction. The Trial Court opinioned that
granting temporary injunction in this appeal would be upsetting since
writ petition was pending before the Madras High Court. So if any
interim order has to be sought it should be sought in writ petition
pending before the Madras High Court.
On comparison of claims the Madras High Court held that, this civil
application pending doesn't survive. In this view the Court disposed
of the civil application and the parties were to bear their own cost.
Wednesday, March 10, 2010
Pharma Trademark Infringement in India
The pharma major Cadila Healthcare, was recently issued a notice by the Supreme Court of India in a matter involving Passing Off of a trademark. The notice is a result of a petition filed before the Supreme Court by Ahmedabad based pharma firm Unichem Laboratories against the decision of Karnataka High Court. The matter relates to violation of the trademark of Cadila for a drug called ‘Losacar’, used in treatment of Hypertension. Unichem marketed its drug as ‘Losar’, which was alleged by Cadila as passing off because of deceptive and phonetic similarity. The drugs come from a compound ‘Losartan Potasium’, used widely for treatment of hypertension and related aliments.
The Karnataka High Court approving the prior use of the trademark by Cadila, held that it could pursue its civil suit in the Bangalore civil court as there was passing off due to similar sounding names. A passing off action is available against an unregistered mark, and any mark similar to such a mark is not registrable by virtue of Section 11(3)(a) of the Trade Marks Act, 1999. The High Court turned down Unichem’s plea and directed that it had the jurisdiction to decide the trademark violation between the two companies. Cadila had filed a suit in the city civil court against Unichem, against the use of the trademark, ‘Losar’.
The Supreme Court bench headed by Chief Justice KG Balakrishnan, took into consideration the arguments presented by Unichem, that the HC had not heeded the grounds for refusal of registration of a trademark under Section 9 of the Act and merely considered ‘prior use’ as a factor for allowing the civil suit. Section 9(a) prescribes that a mark cannot be registered if it is devoid of any distinctive character, that is to say, not capable of distinguishing goods or services of one person from those of another person. The law requires the trademark to be distinctive, and not being descriptive of the goods in trade, so as to be registrable. In the present case, the trademark is derived from the generic name of the salt, ‘Losartan Potasium’, hence no acquired distinctiveness or secondary significance could be proved in relation to the mark.
It was alleged that the HC had presumed that mere prior use of the mark was a sufficient ground for passing off action, even if no goodwill or reputation ensued from such use. It was also averred that both the existence of goodwill and reputation as well as distinctiveness was an essential criteria in determining passing off.
The determination of the Supreme Court in respect of descriptive marks now remains to be seen.
The Karnataka High Court approving the prior use of the trademark by Cadila, held that it could pursue its civil suit in the Bangalore civil court as there was passing off due to similar sounding names. A passing off action is available against an unregistered mark, and any mark similar to such a mark is not registrable by virtue of Section 11(3)(a) of the Trade Marks Act, 1999. The High Court turned down Unichem’s plea and directed that it had the jurisdiction to decide the trademark violation between the two companies. Cadila had filed a suit in the city civil court against Unichem, against the use of the trademark, ‘Losar’.
The Supreme Court bench headed by Chief Justice KG Balakrishnan, took into consideration the arguments presented by Unichem, that the HC had not heeded the grounds for refusal of registration of a trademark under Section 9 of the Act and merely considered ‘prior use’ as a factor for allowing the civil suit. Section 9(a) prescribes that a mark cannot be registered if it is devoid of any distinctive character, that is to say, not capable of distinguishing goods or services of one person from those of another person. The law requires the trademark to be distinctive, and not being descriptive of the goods in trade, so as to be registrable. In the present case, the trademark is derived from the generic name of the salt, ‘Losartan Potasium’, hence no acquired distinctiveness or secondary significance could be proved in relation to the mark.
It was alleged that the HC had presumed that mere prior use of the mark was a sufficient ground for passing off action, even if no goodwill or reputation ensued from such use. It was also averred that both the existence of goodwill and reputation as well as distinctiveness was an essential criteria in determining passing off.
The determination of the Supreme Court in respect of descriptive marks now remains to be seen.
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