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.
Sunday, May 16, 2010
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.
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