Intellectual Property Rights: What’s in a name?

The beginning of this year has seen major developments in the IP Sector. From the Cinematograph (Amendment) Bill, 2019, which has introduced penal provisions for unauthorised camcording and duplication of films, to some noteworthy rulings to further strengthen protection of IP rights; This newsletter aims to bring to you the latest updates in the IP segment.

Cinematograph (Amendment) Bill, 2019

The amendment to the Cinematograph Act, 1952 which has been approved by the Union Cabinet has been referred by the Rajya Sabha to the Standing Committee for its report. In order to tackle the menace of film piracy, the amendments provide for insertion of a new Section 6AA for prohibition of unauthorized recording. In section 7 of the principal act, after subsection 1 the following subsection (1A) has been inserted which includes that “if any person contravenes the provisions of section 6AA, he shall be punishable with an imprisonment for a term which may extend to 3 years or with a fine which may extend to 10 lakh rupees or with both.”

Copyright irrelevant for proving use as trademark

In M/s Khushi Ram Behari Lal v. M/s Jaswant Singh Balwant Singh, a petition was filed before the Delhi High Court challenging an order passed by Intellectual Property Appellate Board (IPAB). IPAB had relied upon a copyright registration relating to the opposing mark to establish its usage by the opponent. The Delhi High Court overturning the decision of IPAB held that copyright registration of the art work is ‘extraneous’ for the purpose of proving the use of the subject trademark. The Court noted that the subject matter trademark under registration has been in use for almost 22 years without any interruption and there has been no confusion and deception reported by the respondent. It therefore held that the IPAB ought to have appreciated the special circumstances existing in favour of the petitioner for exercise of their discretion under Section 12 of the Trademark Act, 1999 (TM Act), which provides that in the case of honest concurrent use of a mark or any other special circumstances, the Registrar may permit the registration of two trademarks which are identical or nearly resemble each other in connection with the same goods. Thus, the application for registration of the subject trademark was directed to be processed.

Delhi High Court awards punitive damages to UK Firm for continued trademark infringement.

The Delhi High Court in Whatman International Limited v. P. Mehta & Ors granted a permanent injunction and punitive damages to the plaintiff, a UK based multi-national company Whatman International Ltd, for infringement of its trademark WHATMAN by the defendants. Plaintiff had contended that though the registered mark WHATMAN is a surname, it has acquired secondary meaning in trade owing to it being used for more than 250 years and that the defendants were habitual infringers with a long history of manufacturing and selling counterfeit Whatman filter paper, beginning from 1992. The plaintiff further stated that the defendants had previously given undertakings in previous complaint cases taken out by the plaintiff to the effect that they would not indulge in such activities. In their defence, the defendants said that the plaintiff company does not have any goodwill in India and that the letter ‘W’ cannot be monopolised by the plaintiff company. They also claimed that they had not violated the injunction order dated 23rd May 2014 and only old stock, which was lying in the premises, was seized by the police. The Court taking into consideration the illegalities, repeated violations and disobedience by the defendants found them guilty of infringement and passing off and directed them to pay US$ 5,50,000 as punitive damages to the plaintiff.

Use of a similar mark even if done innocently does not confer any rights upon it.

The Delhi High Court in a recent case, M/s Millenium Automation & Systems v. M/s Celkon Impex Private Ltd. & Ors., reiterated the principle that ‘disclaimer in a trademark registration does not affect the common law rights in the mark. The plaintiff had filed the suit seeking permanent injunction for infringement and passing off against the defendants. Plaintiff’s trademark MILLENNIUM is registered in class 9. While the defendants were using the marks MILLENNIUM VOGUE and CELKON MILLENNIUM in respect of mobile phones which also fall under class 9. The defendants claimed rights in the mark CELKON and stated that the mark MILLENNIUM is generic in nature. The Court observed that the defendants had no justification for adoption of the mark MILLENNIUM and even if the adoption of the mark MILLENNIUM was done innocently, it did not confer any protection in respect of violation of the rights of the plaintiff who is the prior user of an identical mark. The Court concluded that use by the defendants in respect of cognate and allied products would result in not only infringement but also in passing off the defendants’ product as that of the plaintiff.

‘BOOKMY’ is an ordinary English word, descriptive of the services and has no exclusive meaning.

In Bigtree Entertainment Pvt. Ltd. v. D Sharma, the dispute between the parties arose on the defendant’s use of the prefix ‘BOOKMY’ in its domain name and corporate name. In the instant case the plaintiff claimed exclusive proprietary rights over the prefix ‘BOOKMY’ in their trademark ‘BOOKMYSHOW’ and thereby prayed for an injunction in its favour. The Delhi High Court held that the word ‘BOOKMY’ has not attained exclusive meaning with respect to the plaintiff’s ‘BOOKMYSHOW’, and that the term BOOK MY is descriptive and is a common English term. The Court was of the view that the visual effects of the trademark of plaintiff and defendant was not the same in the buyers’ minds and that the colour scheme and font of both the trademarks were different. It was held that people are unlikely to be misguided or confused by the said trade names and looks of the defendant’s trade mark and that the plaintiff had failed to make a prima facie case for an injunction.

‘TIGER’ v. ‘The TICER’: A case of ‘chunking’

In Mallcom (India) Ltd. v. Rakesh Kumar, plaintiff had filed a suit for permanent injunction to restrain infringement of trademark, copyright, design and passing off by the defendant and for ancillary reliefs. The plaintiff is in business since 2010 and are using the mark ‘TIGER’, while defendants commenced business in 2015 under the mark ‘THE TICER’. The product of the plaintiff and the defendant was the same i.e. safety shoes meant for industrial use. The Delhi High Court while granting permanent injunction held that not only are the plaintiffs the prior user of the mark but the mark adopted by the defendant is identical and deceptively similar to the mark of the plaintiff. It was further observed that people generally presume words without reading each alphabet, as human mind is capable of recognising words with few clues. Defendant’s mark ‘The TICER’ as opposed to plaintiff’s ‘TIGER’ is a case of ‘chunking’ or ‘word superiority effect’.

Delhi High Court refuses interim design protection to Crocs Inc. USA

Recently, in Crocs Inc. USA v. Bata India Ltd, the Delhi High Court upheld the interim decision of the single Judge dismissing plaintiff (Crocs Inc) temporary injunction applications. In the instant case, the defendants had alleged prior publication of the plaintiff’s design based on web-shots from Wayback machine, containing internet archive of the web pages. The plaintiff argued that there was no guarantee to the correctness of the contents of the archived web pages. Dismissing plaintiff’s contention the Court held that at the stage of considering the prima facie merits of any given case, the court cannot carry out a mini-trial. The Court noted that the petitioner’s registration was cancelled in the European Union on considering previous publication. On the question of novelty, the Court observed that footwear and sandals usually have a design constraint, and that footwear manufacturers have little ‘play’ in creating new designs. Further, observing that mere trade variation of an existing design does not entitle the originator of the design to protection through registration, it stated that the designs, over which plaintiff claimed novelty and originality, were repetitions of age-old designs, with some variations – in strap, etc

Calcutta High Court rules that Geographical Indication Rights applicable only to goods and not services.

In Tea Board, India v. ITC Limited, the Calcutta High Court dismissed an infringement suit by Tea Board, India (Board), against Indian Tobacco Company (ITC).The issue before the Court was whether the use of name ‘Darjeeling’ for the lounge of Sonar, a five star hotel run by ITC in Kolkata, will amount to infringement of Geographical Indication rights of Darjeeling tea held by the Board under the Geographical Indication of Goods Act, 1999. The Court held that the law related to Geographical Indication is limited only to goods and the defendant’s lounge does not fall within the category of ‘goods’. The Board further claimed infringement of its rights under TM Act by the use of name ‘Darjeeling’ for the lounge to which Court noted that the Board only had certification trademark within the meaning of Section 2(e) of the TM Act, which does not amount to a registered trademark and gives only the authority to certify that the concerned tea is connected with the Darjeeling region.

HBO’s Game of Thrones loses battle of trademarks

US TV network Home Box Office, Inc (HBO) was unsuccessful in its opposition to a trademark for ‘Game of Stones’ before the UK Intellectual Property Office (IPO). Wadworth and Company Limited applied to register the mark ‘Game of Stones’, a device of a stone circle (reminiscent of Stonehenge), in class 32 i.e. for alcoholic beverages. HBO has registration of trademark ‘GAME OF THRONES’ in classes 32 and 41. HBO opposed the application contending that the contested marks are similar, the applicant’s goods were identical to the opponent’s Class 32 goods and as such there existed a strong likelihood of confusion. The UK IPO rejecting the opposition held that concept of a stone circle created by the device and the word STONES present in the applicant’s mark creates a strong difference to the opponent’s mark and the respective marks share a low level of visual and conceptual similarity. The differences were such that the consumer is unlikely to consider that the respective goods originate from the same or linked undertaking and there is no likelihood of confusion, either direct or indirect.