Intellectual Property

Over the years, stringent IPR protection laws have encouraged tremendous foreign investments and efforts in the areas of applied science whereby we overcome numerous challenges in various fields. In the world economy it is imperative that a universal protection is accorded for which we have robust international system of treaty instruments and enforcement organizations. This newsletter aims to proffer the latest updates in the IP segment and recent statutory developments for creating awareness about the economic, social and cultural benefits of IPR. The protection of such property can only be provided through well-defined laws which balance the interests of the public with those of owners. This would commercialize the scope of such brands through digitization of government filings thereby reducing the process of registration. The system provides adequate incentives for entrepreneurs to innovate but there is requirement of strict implementation which would help in innovation of strengthened economy. The judiciary in this regard has made robust progress for safeguarding the rights of innovators and bringing this regime in consonance to the international standards which would be highlighted in the following segment:

Arbitrability of IP Issues: Changing Horizons

In the case of Lifestyle Equities CV vs. QDS Designs Pvt. Lyd. & Ors., the division bench of Madras High Court held that the IP issues could be subject to arbitration. The fundamental point of dispute was whether and to what extent are the IP related rights arbitrable provided that they tend to have effect in rem. The case concerned a commercial agreement between the parties where the Quintessential Designs were engaged by Lifestyle Equities for certain creative services relating to apparel and garments. The agreement contained an arbitration clause, whereby certain dispute arose between the parties to which Lifestyle Equities invoked the clause and QDS opposed the same on the ground that the disputes involve the IP issues and thus non-arbitrable and wanted the Court to permit the filing of a civil suit. The Court analyzed as to whether the issues being raised would result in a judgment/ award in rem which means a judgment against a thing, right or status or condition of property; or in personam which means judgment against a person. In this regard Court held that the patent license issuance may be arbitrable but the validity of the underlying patent may not be. The Division Bench further agreed with the opinion of the Learned Single Judge that the fundamental dispute between the parties related to who had the better right of usage as compared to other which was an issue in personam. In conclusion held that even though the High Court concluded that dispute between the parties was arbitrable, the Tribunal had the jurisdiction to decide its own competence, thus final decision on the issue would be that of the Arbitral Tribunal.

Artificial Intelligence: Modifying Trade Mark laws

AI has reduced the role of human in the product suggestion and purchasing process which implies that the principles of trademark law will no longer be made applicable. The AI discussions have centered around the patent law and protection for AI software applications and its impact on trademark as to whether the present law is fit for the purpose or needs to be overlooked. The retail market as predicted would no longer be reactive but predictive and the absence of human touch from purchasing process would be evident. The trademark law consists common tenets of the average consumer, phonetic aural and conceptual similarity, imperfect recollection and blurring of trade marks. The average consumer’s level of attention varies according to the category of goods or services which are considered as faults built into trademark law. The concept of confusion in the trademark as to whether the marks are considered similar is unlikely to apply to AI, as if a program has a perfect recollection, it will not be confused as to the brand name of a product. Though there are unresolved issues as to when the AI program suggests a product that infringes a registered trade mark or is a counterfeit, would AI be deemed as secondary infringer? The case of Cosmetic Warriors vs. Amazon dealt with the interaction between AI and trademark law wherein Amazon was not held liable for infringing Lush’s trademarks when advertisement did not incorporate and was linked to the Amazon product suggestion system. With respect to the issue of liability of the AI applications, we expect that the courts will interpret the involvement of AI in trademarks and purchasing decisions. Further, guidance could be taken from the WIPO Overview with regard to the UDRP disputes. The automatically generated pay-per-links, where the automatic service is a form of AI, the panelists have held that a respondent cannot disclaim responsibility for the content appearing on the website associated with its domain name. The assessment of the average consumer and the issues pertaining to the confusion will be transferred to the world of AI and the trade marks law by the courts assessing the algorithms behind the operation of the applications in trade mark cases. This raises the issue of confidentiality and commercially sensitive information, but if the infringement occurs this would be the only alternative to assess it.

Verizon :Permanent Injunction granted for the Infringement of Goodwill: However Failed to Prove Damages

In the Verizon mark case, The Delhi High Court granted permanent injunction against the defendants namely Parth Solanki & Anr from infringing or in any manner using Verizon’s mark. Though the punitive damages were not awarded because the Plaintiffs failed to prove the damages. The Court in the present case has observed that the mark Verizon although satisfies the criteria of a well known trademark as prescribed under Section 2(1)(zg) of the Trademark Act, 1999 read with Sections 11(6), (7) and (8) of the Trademark Act but no order can be passed on this point as the proceeding was not contested by the Defendants . The Court opined that Defendants were using the mark without the explicit permission or authorization, based on the evidence on record, which is bound to cause incalculable losses, harm and injury to the Plaintiffs’ business, goodwill, and trademarkcausing immense public harm. Further, the court considered the judgment in the case of Super Cassettes Industries Pvt. Ltd. vs. HRCN, that the Court was not satisfied on the evidence led in the present case that the compensation awarded is inadequate in the circumstances. The Court came to the conclusion that any damages would not be awarded to the Plaintiff as they have not lead to any evidence with respect to the quantum of damages suffered by them. Further, the Court agreed with the claim of the Plaintiff and stated that ‘due to extensive use over substantial period of time, the Plaintiffs’ Verizon trademarks have acquired reputation and goodwill in the marks globally as well in India.

BookMyShow: No Trademark protection for Lacking Distinctiveness

The High Court of Delhi refused to grant interim injunction restraining the use of prefix ‘BookMy’ in the application made by the trademark owner, Bigtree Entertainment Pvt. Ltd. of the popular online portal www.bookmyshow.com, for e-ticket booking of movies, entertainment shows and events. In the year 2015 another such online portal was launched under the name and style of www.bookmysport.com providing e-booking facility for the sports event. The Plaintiff/applicant alleged that the mark was deceptively similar to their trademark and that the defendant was in an attempt to exploit the goodwill and reputation of their portal. The Court in this regard determined the issue as to whether the defendant’s use of the prefix common to both the trademarks ‘bookmy’ amounted to infringement or passing off of the Plaintiff’s mark. The Court previously has decided upon the issue that exclusivity or monopoly cannot be claimed over a term which is descriptive of the activity in a trade or industry. Also the words which are descriptive of a particular industry cannot be deemed to be invented. In the case of Reliance Industries Ltd. vs. Reliance Polycrete Ltd. where the Supreme Court has considered the question of whether goodwill attached to a complete trademark carries over to part of that trademark. In the present case it was held that existence of many other companies using the term Reliance means that the corporation Reliance industry could not claim monopoly over the use of the term “Reliance” to the exclusion of other. The Court opined that the defendant placed on record list of companies that operate with the same domain prefix and that the Plaintiff has not proved that the mark is only associated in the minds of the public with the plaintiff’s business and no one else, thus has acquired secondary meaning and distinctiveness. The Court thereby considering that the mark being only descriptive in nature and not distinctive rejected the plea of interim injunction made by the plaintiff in the application.

Registered Proprietor of Trademark: Injunction Granted for Wrongly Obtaining Registration

The High Court in the recent issue granted injunction against the registered proprietor of trademark as the registration of the impugned mark was wrongly obtained. The Plaintiff M/s. Ishar Dass Amir was continuously using the mark AMIR’S for its products since 1996 contending that the color combination, trade dress of the label of their product constituted an ‘original artistic work’ under the provision 2(c) of the Copyright Act, 1957. Further, contended that the defendants had wrongly obtained a registration of the impugned mark AMIR under class 3 to which the Plaintiff had even filed rectification and cancellation applications. Despite the order passed by the Food and Drugs Administration cancelling the license of the Defendant, they continued the illegal manufacture, sell and export of their products under the impugned trade mark. The Court in this manner granted temporary injunction against the Defendants for a period of two months to make compliances of the order. Further, the court was of the view that the color combination, trade dress and get-up of the label/packaging of the Plaintiff’s product constitutes an ‘original artistic work’ and the Plaintiff has the exclusive right to use and produce the same under Section 14 of the Copyright Act. That even though the trademarks are registered, the Plaintiff is the prior adopter and extensive user of the trade mark AMIR’S along with its label and has been using exclusively since 1996. The use and export of the impugned trade mark AMIR/AMIR’s and its packaging by the Defendants constitute the acts of misrepresentation, misappropriation and passing off. Thus considering the mandate of the law and the persistent conduct of the Defendants in selling products bearing the mark, the suit is decreed in favor of the Plaintiff, by recording an entitlement of costs including monies spent on the Court fees, Local Commissioner’s Fees and other expenses.

GOT Memes: AIB’s Defence of Satire

The popular television show, Game of Thrones became cultural phenomenon as it gains popularity and entered the public consciousness through amusing memes created by the comedy group All India Bakchod, popularly referred to as AIB. The issue which raised concerns were pertaining to the infringement of HBO’s copyright in the show. The defence mechanism in situations of derivative fan works are that they are in the nature of tributes to their source material and that such work is harmless and not for earning profits. But the series of memes from the comedy group was used for the promotional purpose of their YouTube videos for which they could be liable for the international copyright infringement. The landmark judgment upholding freedom of speech and expression over criticism over IP rights was in the case of Tata Sons Ltd. vs. Greenpeace International & Anr. wherein the dispute was revolving around the satirical game, Pac-Man which showed the endangered Olive Ridley Turtles being hunted by the ‘Tata demons’ in form of their trademark. This game was designed by Greenpeace as an innovative form of protest against Tata’s construction of the Dharma port in an ecologically sensitive area of Orissa. The Tata group retaliated such use of their famous device mark as it was claimed to be affecting their considerable reputation built around the trademark. Though the Hon’ble judge delivered the judgment in favor of Greenpeace, proving that the satire may be taken as a valid defence against an allegation of trademark infringement. The Channel also had not proceeded against this comedy group as neither the show’s already devoted fan base is effected nor such attempt is causing the network any financial harm. Instead, such third party involvements are propagating the popularity of the series even further. Further, subject to the wide array of similar material spread throughout the web, it is unlikely that the show’s right holders will even be inclined to take such steps. The copyright infringement cannot exist unless the copyright holder is intent on enforcing exclusive rights.

Infringement of mark ‘Nokia’: Court granted damages

The Delhi High Court in the case of Nokia Corporation & Ors. vs. Movie Express & Ors., awarded damages amounting to Rs. 5 Lakhs to Nokia, payable jointly by latter for trying to obtain wrongful advantage of the Plaintiffs’ trademark. The plaintiff was the registered proprietor of the said mark Nokia in Class 41 which extends to entertainment services. The Defendant was an advertising agency involved in the promotion, sponsorship of mass media communications where they titled their movie as ‘Mr. Nokia, Connecting People’. The movie was slated to be released in February 2012, even the songs were aired. The cease and desist notice was sent to defendant who then offered to change the title of the movie to Mr. Nav-kia, but suit was filed against defendants and an ex parte injunction was granted by the Court. It was contended that Nokia is a term coined by Plaintiffs and was a well known mark and that the use of this trademark by the Defendants’ amounts to infringement. The Court in this regard opined that the trademark of Plaintiff has earned goodwill and reputation and therefore the mark falls under the category of well known trademark. It stated that the test is whether the totality of the proposed trademark is such that it is likely to cause deception or confusion in the minds of person accustomed to the existing trade. Further analyzed that the infringement doesn’t require confusion in the minds of the consumers with regard to the trade origin. It is enough to show that the impugned marks are deceptively similar to the registered marks of the Plaintiff and that there are added matters to show a different trade origin. In this case, Plaintiff being the registered proprietor of mark Nokia in class 41 in relation to entertainment services, the use by the Defendant in relation to such services amounts to infringement under Section 29(1) of the Trade Marks Act, 1999. The case brought about difference between trademark infringement and passing off. It observed that for infringement it is enough to show that impugned marks are deceptively similar to the registered marks. The defendant stayed away from the proceedings of the Court for which a decree of permanent injunction restraining the defendants from publishing or airing the movie or content carrying expression which is deceptively similar to mark Nokia was passed and sum amounting to Rs. 5 lakh as monetary damages were awarded to the Plaintiff.

Travel Plans! : Log in to MakeMyTrip or GetMyTrip?

The Delhi High Court recently decided the case filed by Make My Trip (India) Pvt. Ltd. against the Orbit Corporate Leisure Travels Pvt. Ltd., wherein decree of permanent injunction was prayed restraining the defendants, their franchisees, subsidiaries and licensees in any manner using the trademark GetMyTrip amounting to passing off the defendant’s goods and services as that of plaintiff besides damages. The mark was deceptively and phonetically similar to the plaintiff’s logo and brand name. The order dealt with the contention that plaintiff had not impleaded Hermes, one of the agent of Defendant, in this suit who the Plaintiff permitted to use the impugned mark. The court found that the plaintiff had suppressed such a material fact when they had sought reliefs against all the agents of the defendants and implied that no case for an interim injunction was made out. The Plaintiff claims the copyright in the stylized manner of writing ‘MY’ in their trademark and that defendant doesn’t use it in the same or similar stylized manner. Defendant placed on record material to show that even after defendant acquired business of Hermes, the plaintiff continued dealing with the trademark GetMyTrip. In the cause of the action, the grievance of the plaintiff was being qua use of the infringing mark and not the party using it, the plaintiff’s claim of injunction being not only against the defendant but also agents, franchisees etc. The Court finds that no case for grant of interim injunction in favor of plaintiff pending the suit was made out and the interim order earlier granted against the defendant was also vacated.

Desi or Videsi: Trademark Dispute for ‘A+’ Mark

The local manufacturer of the dairy products, Amul sued the international brand Nestle for the trademark violation of its brand A+, as latter launched its new dairy brand in the market. The Gujarat Cooperative Milk Marketing Federation (GCMMF) sent legal notice to Nestle India alleging that it has infringed Amul’s trademark by passing off its similar products, on the basis of prior use of the mark. The claims made by Amul was included in the notice that it has been selling the fortified cheese under the brand A+ since a year and high calcium milk under the label Amul Cacli+ since four years. While Nestle claimed that it has the right to use ‘a+’ trademark as it has purchased it. The sale agreement document mentioned the intellectual property rights which are given only for milk and milk products to Nestle. The damages amounting to Rs. 10 crore were claimed from Nestle for attempting to unjustly enrich from the goodwill earned for these years. The notice also demanded that Nestle should refrain from using the mark a+ as a part of its trademark label and to give undertaking that it shall not manufacture, sell or advertise products using this mark. The claims were based on the grounds that the consumers are likely to get confused between the two products as they are deceptively similar. The largest milk producer in India, Amul has a substantial market share over dairy products and is the preferred brand by the consumers. The companies are in the talks of settlement and neither has moved court for a legal solution.