Op EdsOP. ED.

Background

As things stand, embroiled in a tug of war are two States—Kerala and Karnataka over the right to use an acronym/abbreviation “KSRTC” trade mark, its emblem and nickname “Aanavandi”, which means an elephant vehicle, for their respective road transportation corporations providing services to the general public for decades now. The Kerala State Road Transport Corporation started using the abbreviation “KSRTC” when they started the services in 1965, while Karnataka State Road Transport Corporation commenced services in 1974 and started using the abbreviation since then. Apparently, they have been using the same area for parking purposes, operations and management and booking counters.

The case got reignited recently when a press release[1] was issued by Kerala that the Trade Marks Registry had given a final verdict to use the abbreviation “KSRTC” in its favour. However, subsequently, Karnataka SRTC issued a statement, saying the reports are factually incorrect as we have not received any such notice or order from the Central Trade Mark Registry as claimed until today”. To my mind, there is no such order granting any exclusive rights over the trade mark “KSRTC” to one State over the other as on date.

The trade mark public search report by the Controller General of Patents, Designs and Trade Marks under the Ministry of Commerce and Industry, which clearly mentions that Kerala and Karnataka have the rights to use “KSRTC”. Furthermore, the rectifications filed by Kerala SRTC against Karnataka SRTC’s registrations are pending before the IPAB (Intellectual Property Appellate Board)(now the Madras High Court, after abolition of the IPAB) without determination. Consequently, till the determination of the same, there is no bar against the use of the acronym by either of the States.[2]

Law of the land 

(i) Abbreviations of descriptive words/trade name

14. McCarthy on Trademarks and Unfair Competition (3rd Edn., Vol. 2) states that:

The names of a product or service itself what it is ― is the very antithesis of a mark. In short, a generic name of a product can never function as a trade mark to indicate origin. The terms “generic” and “trade mark” are mutually exclusive…. The concept of “generic name” and “trade name” are mutually exclusive. Thus, if in fact a given term is “generic”, it can never function as a mark to identify and distinguish the products of only one seller (Para 12.01).

An abbreviation of a generic name which still conveys to the buyer the original generic connotation of the abbreviated name, is still, generic”.

“Acronyms of generic names are often used interchangeably with the full generic name and recognised as equivalent ….”

“If the abbreviation is not recognisable as that original generic term, then the abbreviation is like a fanciful mark and protectable. [Para 12.12(1)]”

“As with misspelling of descriptive terms, a misspelling of a generic name which does not change the generic significance to the buyer, is still ‘generic’. [Para 12.12(2)]”[3]

(ii) Prior use

As both entities have been using the abbreviation KSRTC for a very long time and both have valid and subsisting registrations over the said mark, one of the most important facts of such cases would be priority of use. It has been reported that Kerala trumps Karnataka in this respect, as the use of the abbreviation by Kerala dates back to 1965 whereas Karnataka can establish its use from the mid-1970s only.

In a recent case, namely, Peps Industries (P) Ltd. v. Kurlon Ltd.[4], the Delhi High Court states that:

  1.  … (i) Rights of registered owner of the trade mark though exclusive, are subject to various provisions and thus not absolute.

(ii) The rights of a person alleging passing off the goods of the other party as that of its own, emanate from the common law and not from the provisions of the Trade Marks Act and thus, independent from the rights conferred by the Act.

(iii) The right of the registered owner of the trade mark is not higher in order to right of the person using an identical trade mark or resembling thereto in relation to the similar goods and services if the other party has been continuously using the said trade mark prior to the user of the trade mark by the registered owner. The user by other party has to be continuous, distinct from the user which is separate, isolated or disjointed and requires the commercially continuous use of mark in relation to the same goods or services. A defendant seeking to set up a defence of prior use under Section 34 of the Trade Marks Act has also to prove the volume of sales. Mere issuance of an advertisement would not constitute user of the mark.

Kerala mainly relied on the “first user” principle elaborated in Section 34[5] of the Trade Marks Act. According to the principle, the proprietor of a registered trade mark cannot prevent the use of a similar or identical mark by another party which had commenced the use of the same prior registration.

(iii) Honest concurrent use

Given the emotive regard both States have towards the abbreviation, a reasonable compromise could perhaps be found in Section 12 of the Trade Marks Act, which provides for the Registrar to allow for the coexistence of both trade marks for honest and concurrent use. It has been well explained as below:

  1. Registration in the case of honest concurrent use, etc. In the 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 the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.

In London Rubber Co. Ltd. v. Durex Products Incorporated[6], it was stated that:

  1. … (2) 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 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.

(3) Where separate implications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other, in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by a competent court.

In Kores (India) Ltd. v. Khoday Eshwarsa & Son[7], the Court laid down in para 11 the following tests for determining the honest concurrent user:

(1) The honesty of the concurrent use.

(2) The quantum of concurrent use shown by the petitioners having regard to the duration, area and volume of trade and to goods concerned.

(3) The degree of confusion likely to follow from the resemblance of the applicant’s mark and the opponent’s marks.

(4) Whether any instance of confusion have in fact been proved.

(5) The relative inconvenience which would be caused to the parties and the amount of inconvenience which would result to the public if the applicant’s mark is registered.

Conclusion

As of today, both States forge ahead using the abbreviation with their respective logos. In the current state of affairs, Karnataka and Kerala could not be more in antipodal directions. While the former is a saffron State, the latter has voted in the communist red. However, despite some ideological differences, the two neighbours share a right neighbourly relationship and tend to resolve their dispute through amicable talks. Therefore, battles over intellectual property rights that bear great historical and cultural significance have the potential to be resolved through the principle of coexistence. This will enable the institutional heirlooms of the past to thrive and prosper for the generations to come.


Intellectual Property Lawyer, Member, FICCI IP Forum; Editor, The Trade Mark Reporter, International Trademark Association (INTA), LLM in Intellectual Property Law, Queen Mary University of London (QMUL). Author can be reached at yash0843@gmail.com.

[1] <https://indianexpress.com/article/explained/how-kerala-won-battle-for-ksrtc-trademark-7344760/>.                  

[2]<https://www.newindianexpress.com/states/kerala/2021/jun/06/ksrtc-not-exclusive-to-kerala-says-union-ministry-report-2312357.html>.      

[3] SBL Ltd. v. Himalaya Drug Co., 1997 SCC OnLine Del 571, para 14.        

[4] 2020 SCC OnLine Del 1882.          

[5] Section 34, Trade Marks Act. <http://www.scconline.com/DocumentLink/X9bqcPzT>.

[6] (1964) 2 SCR 211.

[7] 1984 SCC OnLine Bom 65.      

Case BriefsForeign Courts

Federal Court of Ontario (Canada): In an Intellectual Property battle the Bench of Alan S. Diner,  J., had granted major win to India’s giant dairy producer, Kaira District Co-operative Milk Producers’ Union Ltd. (Kaira), i.e. AMUL Dairy and Gujarat Cooperative Milk Marketing Federation Ltd. The Bench held that,

“The Defendants’ conduct had exceeded the usual case of confusion caused by slight alterations of the mark, similar description of copyrighted material, or modification of a design, rather, they were using, without any colour of right, an exact duplicate of the Plaintiffs’ mark, and an exact copy of their copyrighted material.”

Plaintiff alleged that Defendant-AMUL Canada had been advertising, marketing, offering for sale, selling, and providing goods identical to the Plaintiffs’ goods in Canada with the trademarks and trade names AMUL and Amul Canada Ltd. through LinkedIn. Further, it was alleged that the Defendants, namely AMUL Canada, Mr Mohit Rana, Mr Akash Ghosh, Mr Chandu Das, and Mr Patel were not only using the exact marks and designs belonging to the Plaintiffs, but they were claiming to be the Plaintiffs, through copying the information available on the AMUL websites regarding the Plaintiffs’ background and activities. Defendant also purported to have employees in Canada even though the Plaintiffs had never licensed nor provided consent for either Amul Canada or any of the four individual Defendants to use the Plaintiffs’ trademarks and copyrights in any manner.

The Kaira was established in India in 1946, in the business of the manufacture and marketing of milk products. Its trademark AMUL is India’s largest food brand and a “well-known trademark” in India. The Plaintiffs deposed that Gujarat and Kaira had offered for sale, advertised, sold, and distributed certain AMUL trademarked goods in Canada since 2010. Specifically, Kaira was the registered owner of the Canadian Trademark “AMUL” since 2014, which had been used in Canada since 30-06-2020. Plaintiff also owned the Canadian trademark design having the expression “Amul the Taste of India”, which had been used in Canada, in association with the goods “coffee, tea, cocoa, coffee substitutes, sugar, milk etc. Similarly, Kaira also owned the mark and design having the expression “Amul Pasturized Butter utterly butterly delicious”, used in association with the dairy products, edible oils and fats. Finally, the Plaintiffs owned copyright in the designs associated with these trademarks.

Motion for Default Judgment

Noticing the evasive conduct of the Defendants and that the Plaintiffs had exhausted all reasonable attempts to had the Defendants cease and desist their conduct both prior to and through the commencement of these proceedings, the Bench held that the Plaintiffs had every right to bring the Motion for Default Judgment in ex parte manner to stop the blatant abuse of their intellectual property.

Passing Off under section 7(b) of the Trademarks Act

Passing off has been statutorily codified in section 7(b) of the Trademarks Act, RSC 1985, c T-13 [Trademarks Act]. The elements for establishing passing off are:

  • the existence of goodwill;
  • the deception of the public due to misrepresentations; and
  • actual or potential damages to the plaintiff [Ciba-Geigy Canada Ltd v Apotex Inc, 1992 SCC OnLine Can SC 85]

Holding that the Defendants had engaged in deliberate deceitful conduct and had directed public attention to its business in such a way as to cause confusion in Canada between the goods and business of the Defendants, and those of the Plaintiffs, the Bench stated that there was clearly potential damages that could have related, whether through sales, marketing, distribution, and/or recruiting employees, through the unauthorized guise of Amul Canada. Hence, opining that each of the three elements was met in the instant case, the Bench stated,

Not only has the Amul brand existed for well over 50 years and is advertised globally through online and other channels – and thus acquired distinctiveness over time – and the volumes of milk and cheese distribution illustrate that Amul products have a reputation within at least a certain segment of consumers of its dairy products in Canada.”

Trademark Infringements

The act of falsely advertising their desire to increase butter sales in Canada, so that the Defendants may attract further interest in the company, potentially hoping to attract more purported employees, distributors and/or consumers through social media pages was held by the Court to be unauthorized use of the Amul mark sufficient to infringe right to exclusivity contrary to Sections 19 and 20(1)(a) of the Trademarks Act. Similarly, the Defendants had directed public attention to their business in such a way as to cause or be likely to cause confusion in Canada, at the time they commenced so to direct public attention to them, between their business and the goods and business of the Plaintiffs, contrary to Section 7(b) of the Trademarks Act.

Copyright Infringement

In reproducing the copyrighted Amul design and corporate information, the Defendants had copied not only the mark, but also the Plaintiffs’ literature as prominently displayed on their websites (www.amul.com and www.amuldairy.com). The image and wording used was not simply strikingly similar, as had been found to establish copyright infringement in many other cases. Here, the image and wording used was an exact copy of that owned by the Plaintiffs. Hence, it was held that the Defendants had reproduced the Plaintiffs’ copyrighted material without their consent and infringed the Plaintiffs’ rights to exclusive use of its copyright contrary to Section 27 of the Copyright Act.

Verdict

In the backdrop of the above, the Bench reached the following conclusions:

  1. To permanently enjoin from infringing the trademark and copyright of the Plaintiffs, and directing public attention to the Defendants’ goods, or business in such a way as to cause or be likely to cause confusion in Canada.
  2. To transfer to the Plaintiffs within thirty (30) days, ownership and all rights access, administration, and control for and over the LinkedIn pages/accounts used by them, together with any other LinkedIn pages/accounts, domain names and social media pages registered to or controlled by the Defendants displaying the Plaintiffs’ trademark or copyright.
  3. To provide a listing and contact information for all entities that contacted the Defendants about the Defendants’ business through the LinkedIn pages.
  4. The Plaintiffs were awarded damages in the amount of $10,000 for actions contrary to the Trademarks Act, $5,000 for actions contrary to the Copyright Act and the costs in lump sum of $17,733.

[Kaira District Co-Operative Milk Producers’ Union Limited (Amul) v. Amul Canada, 2021 Fc 636, Decided On 22-06-2021]


Kamini Sharma, Editorial Assistant has reported this brief.

Case BriefsHigh Courts

Telangana High Court: Abhinand Kumar Shavili, J., addressed a matter wherein the name and logo of a company were in dispute.

Instant petition was filed to seek a writ of mandamus.

Petitioner’s contention was that it is a registered company under the Companies Act, 1956. Respondent 3 approached the 2nd respondent under Section 22 of the Companies Act (now Section 16 of the new Companies Act, 2013) disputing the name and logo of the petitioner as the same was resembling with the 3rd respondents’ name and logo.

Analysis and Decision 

GSK – Widely Known

Bench stated that 2nd respondent had rightly passed orders directing the petitioner to change the name suitably by deleting the word ‘GSK’ from its existing name as it was similar to that of 3rd respondent and was widely known as GSK even prior to the incorporation of the petitioner-company.

What had 2nd respondent Ordered?

2nd respondent had ordered the name of the petitioner’s company be changed suitably by deleting the word ‘GSK’ from its existing name within a period of 3 months from the date of that order.

Contention of ‘Limitation’ – Rejected

With regard to the contention of limitation raised by the petitioner that the application filed by respondent 3 before 2nd respondent was barred by limitation, Court noted that the said application was filed under the old Act where the period of limitation was 5 years and the petitioner’s company was incorporated in 2008, whereas the 3rd respondent had filed an application before the 2nd respondent in 2012 which would mean that 3rd respondent has filed well within the period of limitation

Contention with respect to –Orders passed by 2nd respondent contrary to Trade Marks Act, 1999

Petitioner failed to show how Section 35 of the Trade Marks Act, 1999 was being violated, more so, petitioner itself was not registered under the Trade Marks Act, 1999. Hence the said contention was also rejected.

Therefore, in view of the above, Court did not find it appropriate to interfere with the case of the petitioner and the petition was dismissed. [G.S.K. Life Sciences (P) Ltd. v. Union of  India, 2021 SCC OnLine TS 634, decided on 20-04-2021]


Also, Read what Section 35 Trademarks Act, 1999 is?

Section 35:

Saving for use of name, address or description of goods or services, – Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in  business, or the use by any person of any bona fide description of the character or quality of his goods or services.”

Case BriefsHigh Courts

Kerala High Court: N. Nagresh, J., heard the instant petition wherein the petitioner had approached this Court seeking to set aside rejection letter and to direct the respondent-Asst. Registrar of Companies to process his application for incorporation of LLP without raising any dispute on the proposed name “Reef Wellness and Excellence LLP”.

The petitioner submitted that he had proposed to incorporate a Limited Liability Partnership (LLP) for doing business in Recreation and Wellness Centres, in the name and style “Reef Wellness and Excellence LLP”. Though, he had applied for reserving the proposed name and the name was reserved for the petitioner for three months, he could not make an application for registration of LLP within three months. However, the petitioner submitted an application for incorporation of LLP in the said name on 23-01-2020. Defects in the application were noted by the respondents in installments and the petitioner was made to file fresh applications time and again. However, in none of the mails, the respondent did point out that the proposed name of the LLP was not available. Furthermore, in mail pointing out certain defects, the respondents even stated that the proposed name can be given to the petitioner. Thereafter, the respondent pointed out only one defect relating to Subscribers Sheet.

However, in the end the respondent rejected the application stating that the proposed name of LLP could not be allowed as it is an existing trade mark.

It is evident that an LLP with identical or resembling name is not permitted in view of the regulations made in the Trade Marks Act, 1999. Section 28 of the Act grants an exclusive right to use a trade mark to a registered proprietor of a trade mark only in relation to the goods or services in respect of which the trade mark is registered. Noticeably, the word REEF is now included in the names of entities dealing in Class 05 goods in Fourth Schedule to Trade Marks Rules, 2002. The petitioner had proposed to deal in services and his activity may fall under Classes 44, 35 or 41 which was evident from communication of the respondents.

The Supreme Court had considered the issue of registering similar trade name by different entities for difference classes of products, in Nandhini Delux v. Karnataka Co-operative Milk Producers Federation Limited, AIR 2018 SC 3516, wherein it had held that as the products of the appellant and respondents fall in different classes, there is no question of confusion or deception in the matter of Trade Mark. The Supreme Court stated that,

If a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or  manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under the broad classification and by that process preclude the other traders or manufacturers from getting registration of separate and distinct goods which may also be grouped under the broad classification.”

The registration of word mark already granted by the respondents were “REEFLEC’, REEF”, “REEFIT FORTE”, “REEFER (HEMATANIC)” which were all for products falling under Class 05. While the petitioner sought the name “Reef Wellness and Excellence LLP”, not for any product but for a service, and that too which did not fall under Class 05.

Hence, the name proposed by the petitioner could not be said to be identical or deceptively similar. The respondents were not justified in rejecting the application of the petitioner for the reason that the proposed name include the work “REEF” which was existing trade mark under Class 05. Accordingly, the writ petition was allowed and the order of the respondent was set aside. The respondent was directed to incorporate the LLP without raising any dispute on the name proposed by the petitioner.

[Kunhi Muhammed Etayattil v. Registrar of Companies, WP(C). No.3057 of 2021, decided on 07-04-2021]


Kamini Sharma, Editorial Assistant has put this report together 

Appearance before the Court by:

For the Petitioner: Adv. M.P.Shameem Ahamed and Adv. Cyriac Tom

For the Respondents: Adv. P.Vijayakumar and Adv. P. R. Ajith Kumar

Op EdsOP. ED.

I. Background

Recently, a Single Judge Bench of the Delhi High Court comprising of  Mr Justice C. Hari Shankar, dismissed a plea filed by biscuit manufacturer Britannia Industries Limited[1] seeking directions against ITC Limited[2] claiming that the defendants i.e. M/s ITC Ltd. and ors. are manufacturing and selling “Sunfeast Farmlite 5-Seed Digestive[3]” biscuits in adopting a confusingly similar packing which is, according to the plaintiff, deceptively similar to the packing in which the plaintiff sells its “Nutri Choice Digestive[4]” biscuits.

Britannia brought an action for infringement and passing off and had sought an interim injunction[5], restraining the defendants from manufacturing or selling biscuits in the impugned packing, pending disposal of the present suit. Their products in question are depicted as below:

It is pertinent to note here that the plaintiff’s trade mark was registered on 11-9-2020, and has been in use since the year 2014 for its digestive biscuits. However, the plaintiff does not have any registration for the colour combinations “red and yellow” as part of the packaging. While on the other hand, the defendants do not have any registered trade mark, in respect of the impugned pack. The defendants’ “SUNFEAST”, “SUNFEAST FARMLITE” and “5-SEED DIGESTIVE” biscuits were launched, under the impugned pack on 28-9-2020.

II. Arguments

On behalf of the plaintiff

 

1. The overall trade dress, colour combinations, colour scheme, arrangement of features, get-up and layout of the impugned pack of the defendants were deceptively similar to that of the plaintiff. They have highlighted the following similarities:

(i) use of the colour scheme of red and yellow, with yellow on the left side of the pack and red on the right; (ii) depiction of the image of the biscuit on the right side; (iii) embossing of the brand name of the company and of the biscuit on the body of the biscuit in similar font and style; (iv) use of the word “Hi-Fibre”, below the name of the biscuit; (v) depiction of the words “NUTRI CHOICE” in the case of the plaintiff’s pack, and of the words “5-SEED DIGESTIVE” in the defendants’ pack, on a white background; (vi) depiction of two sheaves of wheat below the picture of the biscuit on the right side of the pack along with scattered grains of wheat; (vii) an orange shading at the intersection of the yellow and the red colour on the pack; and (viii) depiction of the word “digestive” in red lettering on the pack.

 

2. Defendants had copied the essential elements of distinction in the plaintiff’s trade mark without any valid reason.

3. Biscuits are normally stocked together in stores — so much so that there is also a clear aspect of “initial interest confusion” which should be taken into consideration.

4. Plaintiff’s and the defendants’ biscuits are both digestive biscuits, the constituents or ingredients of the biscuits are immaterial.

5. Considerable reliance was placed by the plaintiff on the following passage from Parle Products (P) Ltd. v. J.P. & Co.[6]:

 

  1. It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other.

 

III. On behalf of the defendant

 

1. There are any number of distinctive features on the pack of the defendants’ products which make the two packs so dissimilar as to obviate any possibility of confusion or deception — (i) the plaintiff’s pack contained two colours i.e. red and yellow, whereas the defendants’ pack contained red, yellow and saffron; (ii) yellow is the predominant colour in the plaintiff’s pack whereas red is the predominant colour in the defendants’ pack; (iii) the plaintiff’s pack predominantly displays the brand name of the plaintiff’s pack “NUTRI CHOICE” in large green letters, whereas the defendants’ brand name is “FARMLITE” printed in brown letters on the defendants’ pack; (iv) the defendants’ pack contains a vertical curved band towards the centre of the pack, in which the seeds contained in the defendants’ biscuits are reflected from top to bottom under the head “Power Seeds”, with a picture of each seed, indicating, from top to bottom, flax seeds, chia seeds, watermelon seeds, sunflower seeds and pumpkin seeds; and (v) the brand name of the defendants’, “SUNFEAST FARMLITE DIGESTIVE” is predominantly displayed on the impugned package of the biscuits.

2. Etching of the brand name on the body of the biscuits was a common industry practice and that, in fact, this feature would serve to discredit the plaintiff’s allegation of deceptive similarity, as the brand name of the defendant company as well as of defendants’ biscuits are completely different from those of the plaintiff and are quite well known in the Indian market — as also agreed by the Judge.

3. Representing wheat and grains on the pack of digestive biscuits, is also a matter of common practice.

4. Use of the word “Hi Fibre” was, again, a matter of common industry practice the lettering and the colour of the word “Hi Fibre” as contained on the impugned pack of the defendants, is different from that of the plaintiff.

5. A person who is prone to having digestive biscuits and who has bought “NUTRI CHOICE”, would normally recollect the brand name of the biscuit which he has bought. It is unlikely, therefore, that he would confuse another package, which does not contain the brand name “NUTRI CHOICE”, as being the biscuit which he had consumed on an earlier occasion — putting emphasis on the class of consumers that would buy the product.

6. There is no other manufacturer of biscuits, digestive or otherwise, making biscuits containing the 5 seeds which are to be found in the defendants’ biscuits.

 

IV. Settled law

 

1. Infringement is a statutory tort, whereas passing off is a tort relatable to common law.

2. The circumstances in which infringement takes place are to be found in sub-sections (1) to (4) of Section 29[7]. Infringement occurs, under these provisions:

where the defendant’s mark is identical with, or deceptively similar to, the plaintiff’s trade mark and is used in relation to goods or services in respect of which the trade mark is registered;

where the defendant’s trade mark is identical to the plaintiff’s trade mark, and the goods or services of the defendant are so similar to those of the plaintiff, as is likely to cause confusion, or association with the registered trade mark [Section 29(2)(a)];

where the impugned trade mark is similar to the registered trade mark and the goods or services of the defendant are identical to those of the plaintiff, or so similar as is likely to cause confusion, or have an association with the plaintiff’s trade mark [Section 29(2)(b)];

where the registered trade mark and the goods or services of the defendant are identical to those of the plaintiff, as is likely to cause confusion or have an association with the plaintiff’s trade mark [Section 29(2)(c)] [in which case Section 29(3) creates a presumptive fiction of likelihood to cause confusion on the part of the public]; and

where the defendant’s mark, though identical with or similar to the registered trade mark of the plaintiff, is used in relation to goods or services not similar to those of the plaintiff, if the registered trade mark has a reputation in India and use of the defendant’s mark, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the plaintiff’s registered trade mark.

3. “Confusion” refers to the state of mind of the customer who, on seeing the mark, thinks that it differs from the mark on the goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. The question is one of first impression.

4. In assessing deceptive similarity, the class of the customer who would purchase the product is relevant. The look/appearance, and the sound, of the trade marks, as well as the nature of the goods, are all relevant considerations. Surrounding circumstances are also relevant.

5. It has to be examined whether the totality of the trade mark of the defendant is likely to cause deception/confusion or mistake in the minds of the persons accustomed to the existing trade mark of the plaintiff.

6. The matter has to be examined from the point of view of a person of average intelligence and imperfect recollection. It has to be seen as to how such a purchaser would react to the trade mark, the association which he would form and how he would connect the trade marks with the goods he would be purchasing.

 

IV. Key observations of the Court

 

1. The approach should be one of emphasising the similarities, rather than the dissimilarities, between the marks.

2. The perception, whether in the case of infringement or passing off, is to be that of a person of average intelligence and imperfect recollection — not of an idiot, or an amnesiac. The average human mind has not been particularly conditioned to observe only similarities, and overlook dissimilarities.

3. When comparing the rival marks, the points of dissimilarity are so stark that they shade or overweigh the points of similarity, that, irrespective of the points of similarity, no possibility of confusion or deception exists.

4. The most important distinction between the two packs is the brand. The plaintiff’s pack contains the brand “NUTRI CHOICE” in large green prominent letters, on a white background. As against this, the defendants’ pack represents the brand name “FARMLITE” in much more muted brown letters, on a yellow background.

5. The different brands of the biscuit and the different companies manufacturing the biscuits are, therefore, prominently displayed on the pack of both of the plaintiff as well as of the defendants. It is only, therefore, if the mythical gentleman of average intelligence and imperfect recollection does not recollect either the brand of the biscuit or the name of the company manufacturing the biscuit, or even the prominent features. Hence, the allegation of copying of essential features and of possibility of confusion or deception on that score, would not sustain.

6. The defendants have also consciously underscored this aspect of their biscuits by prominently displaying, on the package, the words “5-SEED DIGESTIVE”, apart from a clear pictorial representation of the five seeds contained in the biscuits. The words “5 SEED” are absent on the plaintiff’s pack.

7. The fact that the words “5 SEED”, are in bright red letters on a white background, confers the words additional prominence and render them even more capable of being recollected by the average consumer.

8. In case of passing off, the fact that the “SUNFEAST” logo of the defendant and the “BRITANNIA” logo of the plaintiffs are clearly visible on the face of the rival packs, would also minimise the possibility of a consumer mistakenly purchasing the product of the defendant, assuming it to be that of the plaintiff.

9. The only similarity between that case, and this, is that, to some extent, the colour combination on the packs of the plaintiff and the defendants is the same.

10. The Court, vide the same order, also refused to pass any interim order of injunction with respect to the box packaging of defendant’s “VEDA DIGESTIVE” biscuits in another interim application clubbed in this suit, namely, IA No. 12125 of 2020 in CS (COMM) 554 of 2020[8]. Laying rest to the issue of packaging, the Court opined that:

  1. 50. … in designing the impugned pack of “VEDA DIGESTIVE” biscuits, the defendant may have made a conscious attempt to “copy” the plaintiff’s packing. A conscious attempt at copying, however, by itself does not constitute either infringement or passing off. The matter has, in either case, to be examined from the point of view of the customer of average intelligence and imperfect recollection. Unless such a consumer is liable to get confused or deceived, howsoever, questionable the intentions of the defendants may be, no case of infringement or passing off can be said to exist.

†Yashvardhan Rana, Intellectual Property Lawyer, Esteemed Member, FICCI IP Forum. He can be contacted at  yash0843@gmail.com.

[1] <http://britannia.co.in>.

[2] <https://www.itcportal.com>.

[3]<https://www.bigbasket.com/pd/40201411/sunfeast-farmlite-5-seed-digestive-biscuit-100-g-pouch/>.

[4] <http://britannia.co.in/products/nutri-choice/nutrichoice-digestive>.

[5] Britannia Industries Ltd. v. ITC Ltd., 2021 SCC OnLine Del 1489.

[6] (1972) 1 SCC 618, 622.

[7] <http://www.scconline.com/DocumentLink/3Eu1KDo7>.

[8] Britannia Industries Ltd. v. ITC Ltd., 2021 SCC OnLine Del 1489.

Op EdsOP. ED.

I. Background

Recently, India’s largest online grocery portal BigBasket served a “cease and desist” notice to a Coimbatore-based online grocery delivery startup Daily Basket[1], alleging trade mark infringement and brand name violation over the use of the term “basket”. The said notice dated 17-2-2021[2] (the original notice bears a wrong date 17-2-2020) sent by BigBasket lawyers claims that Daily Basket infringes on its trade mark and brand and in turn alleged that Daily Basket has adopted a name and a mark which is deceptively and/or confusingly similar to BigBasket name and mark and is carrying out an e-commerce business that offers similar products and services through a similar domain name — BigBasket.com.

As per the legal notice, BigBasket had given the other entity 15 days to comply with the legal notice and to intimate BigBasket regarding the request within the next seven days. In addition, BigBasket had also asked the e-commerce company to shell out Rs 2 lakh towards the cost of the legal notice. The notice from BigBasket comes at a time when Tata Group is in talks with the grocery unicorn for a 68% stake for $1.3 billion[3].

II. Cease and desist

A cease and desist letter is a cautionary letter sent to an alleged wrongdoer describing the alleged misconduct and demanding that the alleged misconduct be stopped. A cease and desist letter provides notice that legal action may and will be taken if the conduct in question continues. Such letters are usually written by attorneys and are often sent to stop alleged or actual infringement of intellectual property rights, such as copyrights, trade marks, and patents.[4]

After setting forth the background, I shall throw some light upon the various contentions made on behalf of BigBasket as part of their “cease and desist” letter. They are enlisted below:

  1. Offering identical products and services through the conflicting similar domain name “dailybasket.com“.
  2. Unauthorised and violative use and dishonest adoption of a deceptively and/or confusingly similar name and mark “dailybasket” and related logo.
  3. Mere mention or reference of a name containing “basket” in word or logo form for any e-commerce business and related products conjure in the minds of relevant class of consumers and members of trade as that of being associated with our client.
  4. Deliberately copying the layout and get-up of the website BigBasket.com.
  5. Creation of a similar mobile application for offering services with mala fide intention.
  6. Promotion and advertisement on social media websites referencing the mark dailybasket which is deceptively and/or confusingly similar.
  7. Prior adopter and user of the brand name BigBasket/bigbasket.com in relation to the online sale of all kinds of household products including organic food, fruits, vegetables and other grocery items, meat, dairy products, bakery products, personal care and grooming products, farming and gardening products, kitchenware and appliances and pet products.
  8. Violating and diluting trade mark rights in its trade dress, trade name and mark BigBasket/bigbasket.com and thus, constituting trade mark infringement.
  9. Unauthorised acts are detrimental to the distinctive character and reputation.

In response to the said notice, Daily Basket made the feud with Big Basket public by launching a website, namely, <https://bbisabully.com/>, wherein it attempts to debunk their claims. The said website delineates a point-by-point rebuttal to BigBasket’s cease and desist notice. Some of them are highlighted as below:

  • Comparison of logos— Except the word “basket”, there are no similarities or trade mark violations in the brand logo. Colors are different, font is different, graphics is different and the name itself is different.

  • Comparison of the websites— Overall get-up not copied; entirely different UI — user interface (graphical user interface).
  • Comparison of mobile application screen— Everything is different from features to functionality.

However, in an attempt to resolve the issue amicably, BigBasket issued a clarification through a tweet dated 24-2-2021[5].

III. Definition of trade mark bullying

The United States Patent and Trademark Office (USPTO) defined the amorphous term trade mark bullying or trade mark trolling as the vexatious practice of a “trade mark owner that uses its trade mark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow”. Mirroring the modus operandi exhibited by patent assertion entities and copyright bullies, several creative mark owners have adopted and modified this sue-to-settle paradigm and applied it in the trade mark context. In short, trade mark trolls—businesses both large and small—aggressively assert rights beyond the scope of trade mark protection afforded by the statutes through the issuance of threatening cease and desist letters.[6]

Section 142 of the Trade Marks Act, 1999Groundless threats of legal proceedings (1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trade mark which is registered, or alleged by the first mentioned person to be registered, or with some other like proceeding a person aggrieved may, whether the person making the threats is or is not the registered proprietor or the registered user of the trade mark, bring a suit against the first mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats and may recover such damages (if any) as he has sustained, unless the first mentioned person satisfies the court that the trade mark is registered and that the acts in respect of which the proceedings were threatened, constitute, or, if done would constitute, an infringement of the trade mark.

In a case, namely, Bata India Ltd. v. Vitaflex Mauch GmbH[7], the plaintiff had instituted a case against the defendant for restraining them from making baseless groundless threats of initiating legal proceedings. The main conundrum before the court was to deal with the issue that whether the legal notice sent by the defendant amounted to a legal threat and whether the plaintiff was entitled to an injunction and monetary compensation and damages. The Delhi High Court held that the legal notice amounted to threat and the same was unjustifiable, therefore, the defendants were ordered to restrain themselves from issuing any further baseless threats.

  

IV. Spectrum of distinctiveness

In United States trade mark law[8], Abercrombie & Fitch Co. v. Hunting World Inc. 537 F.2d 4 (2nd Cir. 1976),[9] established the spectrum of trade mark distinctiveness in the US, breaking trade marks into classes which are accorded differing degrees of protection. Courts often speak of marks falling along the following “spectrum of distinctiveness”[10].

V. Law of the land

  • Consumer confusion: As per Section 29(2)(c)[11] of the Trade Marks Act, a registered trade mark is considered to be infringed by a person who uses a mark which is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. In F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. (P) Ltd.[12], it was held as follows:

It is also important that the marks must be compared as a whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of the person accustomed to the existing trade mark.

Thus, in Lavroma case (Tokalon Ltd. v. Davidson & Co.[13]) Lord Johnston said:

… we are not bound to scan the words as we would in a question of comparatioliterarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop.

VI. Deceptive similarity

In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.[14], the Supreme Court observed that in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity, the following factors are to be considered:

    1.  … (a) the nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works;

(b) the degree of [resemblance] between the marks, phonetically similar and hence similar in idea;

(c) the nature of the goods in respect of which they are used as trade marks;

(d) the similarity in the nature, character and performance of the goods of the rival traders;

(e) the class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods;

(f) the mode of purchasing the goods or placing orders for the goods; and

(g) any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

VII. My take

  1. Well, we all can agree that “basket” is a term that is common to trade i.e. publici juris and no person or entity can claim monopoly or exclusive rights in the said term whatsoever and therefore, it is incapable of being monopolised by any trader. Thus, there is no visual or ocular similarity between the two device marks.
  2. Alternatively, the colour scheme, layout, style and overall get-up of the two device marks bearing the terms BigBasket and Daily Basket are different. There is no scope for confusion —logos, websites as well as mobile application user interfaces.
  3. It is pertinent to note here that BigBasket in its reply filed to examination report has overcome Section 11 objection raised by the Registry against a cited mark, for e.g. “Apna Big Basket” by stating that “a mark should be considered and compared as a whole and should not be compared in parts in order to determine a conflict with another mark”. Subsequently, it has also submitted that the cited mark is visually, structurally and phonetically, very different from the subject mark i.e. BigBasket. By this very logic, Daily Basket can also claim their marks to be different when compared as a whole and disclaim their exclusive rights over the term “Basket” as and when directed by the Registry — if the situation arises in the future.
  1. On the other hand, if Big Basket can prove that it has acquired distinctiveness/secondary meaning through long and uninterrupted commercial use and prove that the consumer may associate their brand over others with the goods in question and none other, they can make a strong case during the course of trial, if any. However, in doing so, another closely similar mark i.e. “Godrej Nature’s Basket” may cause an impediment in their pursuit to exclusive use/monopoly over the term “basket”. It is to be noted here that Godrej is the prior user and adopter and is using the mark Nature’s Basket in conjunction with their well-known brand “Godrej” such as since long, hence, the very sole reason it could not oppose their mark in the first place.
  1. Bullying? I do not think so. It has become the modus operandi for intellectual property firms and well-known companies to serve “cease and desist” letters to new entrants/start-ups/small companies/entrepreneurs in India to ward off any potential threat or dilution of one’s brand in order to claim exclusivity in the market. This is a standard protocol adopted by firms by regularly checking trade mark journals every once in a week to check whether there is any similar and/or identical mark in the records of the Trade Marks Registry. However, upon a preliminary internet search it could have missed out to oppose another online grocery store named “Your Daily Basket”[15], which seems to be based in Noida, Uttar Pradesh and other companies/firms alike. The website claims a copyright dating 2017.
  1. It is worth mentioning here that every startup these days are in a hurry to launch their products/company in the market without doing a proper survey and/or consulting a trade mark attorney or conducing a clearance search before adopting a brand and ultimately, cutting on costs. It is imperative these days that one should adopt these methods or one should be ready to bear the brunt.
  1. It is a good strategy on part of Daily Basket that it has launched a dedicated website to debunk various claims made by BigBasket in turn making it public and gaining sympathy and garnering support, however, what one cannot understand is why would you adopt a closely similar and/or identical name of your brand that may become a cause for concern. It is highly improbable/unlikely that they will be able to register their trade mark without any opposition from third parties. There are various “Big” formative marks, marks containing with the suffix “Basket” already existing in the market within the same segment of goods and services.

VIII. Advise to startups

  1. Invest your time in creating a distinctive trade mark before you launch your company — Think Big, Get Creative rather than simply launching your brand hurriedly with no impact or making tweaks to an already existing product in the market, be innovative.
  2. Consult a trade mark attorney or a specialist before you launch a product and conduct a trade mark clearance search.
  3. If you are bootstrapped, there are many organisations providing free legal assistance and pro bono advice. Do a simple online search.
  4. Conduct a due diligence exercise such as this becomes although more necessary when you operate in a competitive market wherein a company is able to foresee any lacunae or legal dispute that may arise in the future.

 

†Yashvardhan Rana, Intellectual Property Lawyer, Esteemed Member, FICCI IP Forum. He can be contacted at  yash0843@gmail.com.

[1] <https://dailybasket.com>.

[2]https://www.scribd.com/document/495188261/Cease-and-Desist-Notice? secret_password=tHnV6KHZHCJvzkRMXXtM#download&from_embed

[3].https://economictimes.indiatimes.com/tech/startups/tata-group-to-take-1-3-billion-stake-in-bigbasket- report/articleshow/80982050.cms .

[4]https://www.law.cornell.edu/wex/cease_and_desist_letter .

[5] https://twitter.com/bigbasket_com/status/1364445472811675652.

[6]https://www.ipwatchdog.com/2015/07/16/trademark-bullying-defending-your-brand-or-vexatious-business-tactics/id=59155/.

[7] 2015 SCC OnLine Del 11505.

[8] https://www.wikiwand.com/en/United_States_trademark_law.

[9] https://cyber.harvard.edu/people/tfisher/IP/1976_Abercrombie_Abridged.pdf

[10] https://www.wikiwand.com/en/Trademark_distinctiveness.

[11] Section 29(2) in The Trade Marks Act, 1999.

[12] (1969) 2 SCC 716.

[13] 32 RPC 133 at 136

[14] (2001) 5 SCC 73

[15] yourdailybasket.com/ .

Case BriefsHigh Courts

Delhi High Court: C. Hari Shankar, J., expressed while addressing a dispute that:

“Where a valid arbitration agreement exists, the decision also underscores the position that, ordinarily, the disputes between the parties ought to be referred to arbitration, and it is only where a clear “chalk and cheese” case of non- arbitrability is found to exist, that the court would refrain from permitting invocation of the arbitration clause.”

The present suit has sought a decree of permanent injunction, restraining the defendants from dealing in electric bikes having a throttle, using “Hero” or any mark deceptively similar as a trademark, brand name or tradename as it infringes the said mark, or result in passing off the defendant’s electric bikes having a throttle as those of the plaintiffs.

Defendants had filed IA 3381/2020 under Section 8 of the Arbitration and Conciliation Act, 1996, seeking reference of the disputes, forming the subject matter of the suit, to arbitration.

Controversy  

Plaintiff 2 claimed to have started its business of electric vehicles and to have launched battery fitted electric cycles and scooters under the well-known trademarks “Hero” and “Hero Electric”.

The said marks were registered under the Trade Marks Rules, 2002. Hero Exports used to be a partnership firm of all the members of the Munjal Group and vide a Family Settlement Agreement, the businesses of the group were divided among 4 family groups designated as – F-1, F-2, F-3 and F-4.

As per the plaintiff Hero Exports along with its business was transferred to F-1 group.

Plaintiffs belong to F-1 Group and defendants to F-4 Group.

Further, it has been submitted that parallelly with the Family Settlement Agreement, a “Trade Mark and Name Agreement” (TMNA), was executed, which assigned the right to use the trademark “Hero”, and its variants, among the Family Groups, in relation to the products and services to which the business of each group catered, to the exclusion of other groups. The plaintiff asserts that the TMNA conferred, on the F-1 group, the exclusive right to use the trademarks “Hero” and “Hero Electric”, and its variants, on all-electric vehicles, including electric bikes.

Partners of Hero Exports incorporated Hero Electric Vehicles (P) Ltd. –Plaintiff 1 to conduct the business of electric vehicles and further it was asserted that Hero Exports gave a license to HEVPL to use the trademarks of Hero Exports in respect of electric vehicles and further to proceed against third parties who sought to infringe the said trademark.

HEVPL has become the single source identifier of electric vehicles sold under the marks “Hero” and “Hero Electric”, and has exclusive statutory and common law rights over the “Hero” and “Hero Electric” trademarks in relation to electric vehicles, which include electric bikes.

Plaint alleged that Lectro was manufacturing and selling electric bikes through Hero Electric under the brand “Hero”.

The plaintiffs espied Lectro selling and promoting throttle assisted electric bikes under the brand name “Hero”. This, according to the plaint, was completely mala fide, as the defendants were aware that the exclusive right to use the trademark “Hero” and “Hero Electric”, for electric vehicles, vested in the plaintiffs, who had built up a reputation in that regard.

Defendants with the above act encroached upon the exclusive contractual statutory and common law rights of the plaintiffs in the trademarks “Hero” and “Hero Electric”.

Analysis

In the Supreme Court decision of Vidya Drolia v. Durga Trading Corpn., (2021) 2 SCC 1,  Court authoritatively expounded on the scope of the jurisdiction of a Court, examining and application under Section 8 of the 1996 Act.

Bench observed that the decision in Vidya Drolia has been followed by this Court as well as by other High Courts.

Further while discussing the principles that emerged from the above decision, Court stressed upon criterion (viii), which as follows:

(viii) The scope of examination by the Court exercising jurisdiction under Section 8 or under Section 11, is prima facie in nature. The Court is not to enter into the merits of the case between the parties. It is only to examine whether the dispute is prima facie arbitrable under a valid arbitration agreement. This prima facie examination is intended to weed out manifestly and ex facie non-existent or invalid arbitration agreements or non-arbitrable disputes, thereby cutting the deadwood and trimming off the side branches, in cases where the litigation cannot be permitted to proceed. The proceedings are preliminary and summary in nature and should not result in a mini-trial. Unless there is a clear case of non-existence of a valid arbitration agreement, or of the dispute being ex facie non-arbitrable, tested on the above parameters, the court should leave these aspects to be decided by a competently constituted arbitral tribunal. Relegation to arbitration should be regarded as a rule, and resolution by the civil court, where a valid arbitration agreement exists and is sought to be invoked by one of the parties, as an exception. The expression “chalk and cheese situation”, as used by this Court has, in this background, been approved by the Supreme Court. “When in doubt,” says Ramana, J., in his concurring opinion, “refer”. (Having said that, the “doubt”, in my view, has to be real and substantial, and not merely an escape route to avoid examining the issue in perspective.) 

Adding to the above, Bench stated that while examining the aspect of arbitrability of the dispute, or the existence of a valid arbitration agreement binding the parties, in exercise of Section 8, Court has to always remain alive to the fact that it is exercising the very same jurisdiction which the Arbitral Tribunal is empowered to exercise.

“…where the Court finds the case to be “chalk and cheese”, and where referring the matter to the arbitral process would be opposed to public interest or public policy, and a futility ex facie, that the Court should nip the request for referring the dispute to arbitration in the bud.”

Bench agreeing with Mr Akhil Sibal stated that the dispute between the plaintiffs and the defendants required a holistic appreciation of the FSA and the TMNA, their various covenants and the interplay, in order to adjudicate on the rights conferred on the various family groups.

Adding to the above, court stated that the disputes between parties are ex-facie arbitrable in nature, seen in the light of the provisions of the FSA and TMNA.

The controversy, in the present case, does not relate to grant, or registration, of trademarks. The trademarks already stood granted, and registered, prior to the FSA and TMNA.

The dispute is regarding the Family Group to which the rights to use the said trademarks, in connection with electric cycles and e-cycles had been assigned, by the FSA and TMNA.

Bench in view of the above stated that the dispute does not fall under any of the categories of disputes excepted by the Supreme Court, from the arbitral umbrella.

The right that the plaintiffs seek to assert, in the plaint, is clearly against the F-4 group, and the F-4 group alone, and not against the whole world.

The dispute is clearly inter-se amongst two Family Groups, pillowed on the rights emanating from the Family Settlement Agreement and Trade Mark and Name Agreement and essentially alleged infraction of the terms of the FSA and TMNA, not of the provisions of the Trade Marks Act.

The right asserted by the plaintiffs is not a right that emanates from the Trade Marks Act, but a right that emanates from the FSA and the TMNA, and is not asserted vis-à-vis the whole world, but is asserted specifically vis-à-vis the F-4 Family Group.

In view of the above discussion, Court decided that it would be more appropriate if the petitioner were to present the present plaint before the Arbitrator and seek any interim or interlocutory relief as it may choose under Section 17 of the 1996 Act.

Hence, the suit shall be referred to Arbitration, parties would be at liberty to appoint the arbitrator/arbitrators in accordance with the covenants of the FSA and TMNA and or approach the Court.[Hero Electric Vehicles (P) Ltd. v. Lectro E-Mobility (P) Ltd., 2021 SCC OnLine Del 1058, decided on 02-03-2021]


Advocates before the Court:

For the plaintiffs: Mr Sudhir Chandra, Sr. Adv. with Mr Ankur Sangal, Mr Sahil Narang, Ms. Pragya Mishra and Ms Richa Bhargava, Advs.

For the Defendants: Mr Akhil Sibal, Sr. Adv. with Mr Vikas Mishra, Ms Malini Sud, Mr Nikhil Chawla, Ms Shriya Mishra, Advs.

Op EdsOP. ED.

Background

Recently, a commercial court in Pune refused to pass an interim injunction order[1] to restrain the Serum Institute of India (SII) (defendant)[2] – the world’s largest vaccine manufacturer, from using the trade mark “COVISHIELD” for its vaccine for the coronavirus pandemic. Cutis Biotech[3] (plaintiff), a Nanded-based pharmaceutical and medicinal products company operating since 2010, had filed the suit in the civil court on 4-1-2021, seeking to restrain the SII from using the trade mark “COVISHIELD” or any other identical and/or similar name for its Covid-19 vaccine.

Some brief facts and the timeline on how the dispute unfolded when the world was grappling with the deadly coronavirus are enlisted below:

  • On 25-4-2020, the plaintiff coined the word “Covishieldand decided to use the same in respect of pharmaceutical and other related products.
  • Thereafter, the plaintiff conducted a trade mark search for “Covishield” in Class 5 category of goods in the trade marks register. Consequently, as there were no pre-existing marks found in the trade marks register, the plaintiff went ahead and applied for the registration of trade mark “Covishield on 29-4-2020, in respect of veterinary, ayurvedic, allopathic, medicinal and pharmaceutical preparations and vitamins and dietary food supplements for humans and animals” bearing Application No. 4493681 in Class 5 on a “proposed to be used basis” in the name of “Mrs Archana Ashish Kabra w/o Mr Ashish Nandkishor Kabra.”
  • The plaintiff also applied for registration of the mark ”COVID SHIELD bearing Application No. 4509144 in Class 5 on 24-5-2020, with regards to “medicinal and pharmaceutical preparations for human purpose” in Class 5 in the name of Mr Bandaru Srinivas.
  • The plaintiff started selling their products in the market from 30-5-2020, to which they submitted evidence in support of their claim of commercial use such as invoices, photographs, e-mails, etc.
  • On 6-6-2020, the defendant applied for the trade mark “Covishieldin the same Class 5 bearing Application No. 4522244 for the product i.e. vaccine for human use.
  • On 20-6-2020, the plaintiff filed another application for the mark “COVID SHIELDbearing Application No. 4538555 in Class 5 covering “hand sanitizers being goods included in Class 5” in the name of Mr Bandaru Srinivas.
  • On 15-8-2020, one of the trade partners of plaintiff i.e. Indo Rama Engineers[4] denied to supply multivitamin injection to the plaintiff under the brand name ”Covishield” as there was a possibility of confusion — as claimed by the plaintiff.
  • On 7-12-2020, the plaintiff came to know through news media channels that the defendant has applied for an identical/similar mark before the Drugs Controller General of India for the approval of a vaccine used for preventing the disease Covid-19, under the brand/trade mark, namely, “Covishield.
  • Thereafter, on 11-12-2020, the plaintiff filed a suit against the defendant before the District Court at Nanded, to which the defendant raised an objection on the ground of jurisdiction. That suit is still pending at Nanded Court. The suit sought the following prayer:

“Pass a decree for a perpetual injunction may kindly be issued restraining and prohibiting the defendants or any other persons claiming through them from passing off medicinal and pharmaceuticals, allopathic, veterinary, ayurvedic preparations or products for human use and animals as well as vitamins and dietary supplements for humans and animals under the trade name ‘COVI SHIELD’ as well as the trade mark ‘COVID SHIELD’ which is identical or similar to the plaintiff’s trade mark ‘COVI SHIELD’.”

  • Following which, the plaintiff applied for the mark “Covishield” on 12-12-2020, in the name of one “Mrs Archana Ashish Kabra w/o Mr Ashish Nandkishor Kabra”, claiming use since 30-5-2020.
  • The plaintiff contended that, a fresh cause of action to file present suit had arisen on 2-1-2021, when the plaintiff came to know through the website, that the Director of the defendant company Mr Poonawalla made an announcement to launch the vaccine to prevent Covid-19 under the brand name “Covishield.
  • The plaintiff approached this Court by filing the present suit on 4-1-2021.

The details of the marks[5] as filed by the plaintiff in the name of “Mrs Archana Ashish Kabra w/o Mr Ashish Nandkishor Kabra” and “Bandaru Srinivas” and the marks filed by the defendant are given below:

 

After setting forth the background and conceptual underpinnings, I shall throw some light upon the various contentions made by both the parties.

Arguments made on behalf of the plaintiff

  • Both the parties trade in a common field of activity i.e. same trade channels.
  • The defendant is using a similar and/or identical trade mark “Covishield”, which has been in use by the plaintiff prior to that of the defendant’s mark. Therefore, plaintiff is the prior user and has prior rights to the mark “Covishield”.
  • The act of the defendant is of misrepresentation and being deceitful to the customers/consumers in the market. Due to this fact, dealers/distributors are not ready to sell/procure their product; thereby plaintiff has suffered irreparable  losses.
  • The defendant has acted in a manner that has caused harm to the reputation and goodwill of the plaintiff; thereby passing off their trade mark “Covishield”.
  • The plaintiff has already manufactured and started using the trade mark ”Covishield” as opposed to the defendant.
  • The plaintiff has no objection with regard to selling of the vaccine by the defendant to provide a cure; but has an objection only as regards the usage of the trade mark “Covishield”.

Arguments made on behalf of the defendant

  • The plaintiff has no prima facie case, as it is not manufacturing any vaccine for human use, so much so that it does not provide a cure to prevent Covid-19.
  • The defendant is engaged in manufacturing a vaccine for preventing Covid-19 for human use and has applied for the registration of trade mark ”Covishield” for the said vaccine. While on the other hand, the products of plaintiff relate to “antiseptic, disinfectant liquid for first aid, medical and personal hygiene, hand and vegetable washing liquid, surface decontaminant, etc.” and has no connection with the “vaccine for human use”, in any manner whatsoever.
  • Though, the goods/items mentioned by the plaintiff and the defendant fall within the same category i.e. Class 5 goods, the visual appearance and the purpose/intent of the plaintiff’s product when compared with the defendant’s product is totally different, thereby, creating no possibility of any confusion in the minds of an ordinary person of average intelligence having imperfect recollection. Hence, there is no deception or misrepresentation on the part of the defendant.
  • The defendant intends to manufacture the vaccine for human use only in order to prevent Covid-19. Therefore, there exists no common nature of activity between the plaintiff and defendant company.
  • The plaintiff entered in the market back in May 2020 and has not achieved substantial goodwill or reputation of such nature as claimed by them that the defendant can take any undue advantage of.
  • The plaintiff concealed a very pertinent/material fact and document that it had applied to the Trade Marks Registry on 12-12-2020 for the registration of trade mark ”Covishield” bearing Application No. 4778455 for “vaccine for human use” as well in addition to other goods, thereby did not approach the court with clean hands amounting to fraud.
  • The defendant company has been in the process of manufacturing a cure to prevent a deadly disease i.e. Covid-19, and is presently in the process of supplying the human vaccine under the trade mark ”Covishield” to the Government of India and has commenced exporting it to many other countries around the world as well.
  • If the restraining order is passed by the Court against the defendant, it would cause immense hardship to the consumers in India and abroad.
  • The defendant strongly relied upon the following case laws wherein the Supreme Court has discussed about the test of deceptiveness and confusion.

(1) Nandhini Deluxe v. Karnataka Coop. Milk Producers Federation Ltd.[6]; and (2) Vishnudas v. Vazir Sultan Tobacco Co. Ltd. [7]

  • “Once a registration of trade mark is granted for a product in a class, it does not mean that, the proprietor of such trade mark gets the monopoly for the entire class.”
  • “When the visual appearance of the trade marks of plaintiff and defendant are different, when the products are for different purposes and it does not create any confusion in the mind of average man of ordinary intelligence, then it is not deception or misrepresentation.”
  • “Mere test of prior user is not sufficient, but since how long the product of the plaintiff is in market is also very important; whether there is injurious fraudulent intention or unfair trade on the part of defendant and whether there is intention to deceive the customer. If no such intention is there on the part of defendant, then merely plaintiff is prior user of the trade mark cannot be the sole basis for grant of injunction. R. Dongre v. Whirlpool Corpn.[8]

Key observations of the Court

  1. Prima facie, visual appearance when compared as a whole — the products are totally different.
  2. No prima facie intention seen on part of the defendant to create confusion or misrepresentation and further, there seems to be no likelihood to cause injury or divert business of the plaintiff, or harming the reputation and goodwill of the plaintiff. Hence, the defendant’s product does not cause confusion or misrepresentation.
  3. The ratio decided in the case laws cited e. Nandhini Deluxe[9] and Vishnudas[10] shall certainly prevail and be recognised as the law of the land as applicable to the facts and circumstances of the case in hand.
  4. The plaintiff cannot have monopoly over the trade mark “COVISHIELD” for the entire class of goods.
  5. Presently the Government of India is the buyer of the product of defendant, in India which indicates that it is being made available through government channels. Therefore, the class of consumers buying the products are totally different and as such the plaintiffs have no buyers or exporting their products abroad. On the contrary, the defendant is exporting the product in foreign countries as it is a vaccine to prevent Covid-19. Therefore, the question of misrepresentation or causing confusion in the minds of an ordinary person of average intelligence having imperfect recollection does not arise.
  6. It is a much desirable and awaited product by people all over the country and around the world. If, at this stage, defendant is restrained from using/distributing/manufacturing the vaccine under the said impugned trade mark “COVISHIELD”, it would cause great hardship to the people. Therefore, comparative hardship and balance of convenience certainly lies in favour of the defendant.
  7. The subsequent application dated 12-12-2020, filed by the plaintiff for registration of the trade mark ”Covishield” for vaccine for human use and other purposes, is of relevance and a fact that should have been pointed out by the plaintiff before this Court. Thus, the plaintiff has not approached this Court with clean hands.

My view

The Pune District Court has done an admirable job in dealing with the case in hand and has opined its view after scrutinising various facts, arguments, evidence, established precedents on the subject with aplomb in turn providing a roadmap with an increased awareness and understanding of the concepts of passing off and striking the right balance in examining the issue at hand which was much needed to reignite the trade mark law consciousness in the country in these troubling times and that too pertaining to the much awaited and talked about vaccine in India and around the world.

In simple words, Cutis Biotech has not gained much significance among the consumers at large or for that matter acquired any secondary meaning in the mark “COVISHIELD” i.e. acquired distinctiveness — when their product/brand name becomes synonymous in the public mind through long, continuous and uninterrupted commercial use in the market.

However, both the companies can co-exist in the trade marks register in Class 5 and attain registration only if they enter into a co-existence agreement, if the need arises, or register with different set of goods as claimed with actual use within the same Class 5 and/or battle it out in the court of law, if one party is adamant in enforcing their right to exclusive use/monopoly of the mark. Any which way, that will be time consuming and an inconsiderate view to take as greater public good is in question which shall always prevail. It is a reminder that we need to never lose sight of the big picture. In summary, the order is a worthy addition to the domain of trade mark law.

*Yashvardhan Rana, Intellectual Property Lawyer, Esteemed Member, FICCI IP Forum. He can be contacted at  yash0843@gmail.com.

[1]  <https://services.ecourts.gov.in/ecourtindia_v4_bilingual/cases/display_pdf.php?filename=/orders/2021/210100000012021_1.pdf&caseno=Commercial%20Suit/1/2021&cCode=1&appFlag=web&normal_v=1>.

[2] https://www.seruminstitute.com

[3] http://www.cutisbiotech.com

[4] https://www.indoramapharma.com

[5] https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx

[6] (2018) 9 SCC 183.

[7] (1997) 4 SCC 201.

[8] (1996) 5 SCC 714.

[9] (2018) 9 SCC 183.

[10] (1997) 4 SCC 201.

Case BriefsHigh Courts

Delhi High Court: Mukta Gupta, J., grants ad-interim injunction while restraining defendant from posting, publishing, sharing any content which is defamatory, derogatory or deprecatory in nature to the plaintiff, its management or employees.

The instant suit was filed by the plaintiff Whitehat Education Technology (P) Limited impleading Aniruddha Malpani as the defendant, inter alia, seeking permanent injunction restraining the defendant from defamation, infringement of trademark, dilution and tarnishing of trademarks, disparagement, damages, unfair competition etc.

Plaintiff claimed to be a start-up company teaching children the Coding, helping them build Games, Animation Apps. Further, the plaintiff submitted that it has developed a Proprietary Coding Curriculum focused on product creation and imparts lessons through live, interactive online classes.

According to the plaintiff, free classes are given to the students and on satisfaction, the students can then enrol themselves where there is no time-limit for the classes and even after availing few classes, if the students want to opt-out, the balance fee is refunded on the same day.

Plaintiff owns and operates a website under its domain name www. whitehatjr.com registered on 23-05-2018 and claims a strong presence on social media. Plaintiff has registered trademarks ‘WHITE HAT JR’ both as a wordmark and device marks.

Adding to the above, plaintiff submitted that in late September 2020, the plaintiff came across the defendant’s posts on Twitter referring to the registered trademarks of the plaintiff ‘WHITE HAT JR’ and issuing statements/posts amounting to defamation/disparagement/trademarks’ infringements, dilution and tarnishment of its trademarks.

Defendant submitted that the instant suit was not maintainable for want of territorial jurisdiction and added that it has not caused any defamation, derogation or its statements being deprecatory, for which the defendant needs to file his affidavit to present the correct facts.

Bench held that since some of the facts are alleged in the plaint are disputed and the same is required to be adjudicated, therefore at the present stage, a limited ad-interim injunction is required to be passed on plaintiff’s prima facie case resulting in an irreparable loss to the plaintiff as also keeping in view the balance of convenience lying in favour of the plaintiff.

Hence, the defendant is restrained from posting, publishing, sharing any content which is defamatory, derogatory or deprecatory in nature to the plaintiff, its management or employees.Defendant was also directed to take down the tweets.[Whitehat Education Technology (P) Ltd. v. Aniruddha Malpani, 2020 SCC OnLine Del 1616, decided on 24-11-2020]

Case BriefsTribunals/Commissions/Regulatory Bodies

Intellectual Property Appellate Board (IPAB): The Bench of Justice Manmohan Singh (Chairman) and Lakshmidevi Somanath (Technical Member, Trademarks) and Makyam Vijay Kumar (Technical Member, Trademarks), barred the registration of “N 95” as a trade mark under Section 9(1)(b) of the Trade Marks Act,1999.

The rectification application was filed under Section 57 of the Trademarks Act, 1999 for removal of “N95” in class 10 registered in favor of respondent 1. Along with the main rectification application the present miscellaneous petition for stay of operation of registration of Respondent 1 for impugned mark pending disposal for the main Rectification Application had been filed.

Instant petition was filed seeking stay of operation of registration until the Rectification Application finally decided. 

It was further stated that N 95 is prima facie generic term that is used to provide the quality of the masks hence it is hit by Section 9 of the Act.

Petitioner submitted that it is a company incorporated under Indian Companies Act, 1913 and was engaged in the business of manufacture and sale of a variety of goods including towels, bath linen, bed sheets, carpets, etc. ever since then under its well-known and well established trade mark SASSOON which was earlier adopted by  Surinder Prakash Gupta, earlier in 1998 for the said business under his proprietorship firm.

Later, the petitioner on expanding its business started using the well-known trade mark SASSOON in relation to several kinds of masks, thermometers, PPE Kits, etc.

For effective marketing of its respiratory masks, the petitioner bonafidely started to describe its respiratory masks with the established term to describe such masks i.e. N95 masks by mentioning the same on its packaging and the product for denoting the genus, and/or type of the products.

Further the petitioner submitted that the said generic term N95 is being used since then in relation to the respiratory mask under the trade mark SASSOON.

On 20-11-2020, the petitioner received an email from www.amazon.in informing that the petitioner’s listing of its N95 masks under ASIN No. B0898N72RN had been removed by the platform apparently on the complaint filed on behalf of Respondent 1.

In the said email it was mentioned that the trade mark no. 4487559 was being infringed.

Petitioner also submitted that on enquiry it was found that respondent 1 had frivolously and fraudulently obtained an unlawful registration of the generic term N95 in class 10.

On being contacted, respondent 1 claimed that he shall only allow those business houses to use N95 as a term on their products who share their profits with him. He further claimed that he was in the process to totally block the business of the Petitioner and other manufacturers/traders and threatened the petitioner’s representatives that they should advise the directors of the petitioner to contact him for a “business deal” within 2 days, else he will totally destroy the business of the petitioner.

Decision

Bench on perusal of the submissions and material placed on record stated that:

“It is the established principle that a generic expression can never be granted registration and/or protection as a trade mark under the trade mark laws.”

In Nestles’s Products (India) Ltd. v. P. Thankaraja, 1977 SCC OnLine Mad 72 , it was opined by the Madras High Court that “…”INSTEA” has the tendency to monopolise all manufactured tea which goes by the generic description of ‘instant tea’ or ‘instantaneous tea’. To grant registration to this word-mark, would therefore make its owner a monopolist of a part of the ordinary vocabulary in which traders transact business with themselves and their customers.”

In Cadilla Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd., 2009 (41) PTC 336 (Del.) (DB), it was discussed that generic term is only entitled to protection on the ground that it had acquired a distinctive character in the minds of customers and had acquired a well known status, same will be depending upon case to case. And thus in general the generic mark is not entitled to protection.

In Jain Riceland (P) Ltd. v. Sagar Overseas, CS(COMM) 796/2016, the Delhi High Court was clear when laying down the dictum that that the generic word cannot acquire distinctiveness.

In the decision of  ITC Ltd v. Nestle India Ltd., Madras High Court  stated that the mark ‘Magic Masala’ was not a descriptor of the product but rather a laudatory expression, and the same cannot be given monopoly or protection. Further the Court had observed that the terms ‘Magic’ and ‘Masala’ are commonly used terms by different manufacturers in the packaged food industry and it would be unfair to confer monopoly over the same expression.

Board in view of the above, expressed that,

the term N95 is a generic term in the mask industry, the same is not capable of being neither registered or protected as trade mark nor the same can be appropriated by any one entity.

Term N95 serves as an indicator in the trade to designate the kind, quality, intended purpose and other characteristics of the particular product which is non-proprietary in nature. The registration of the impugned mark was thus barred under the absolute grounds of refusal under Section 9 (1) (b) of the Trade Marks Act, 1999.

In the present case, wording of N 95 in the registered mark is descriptive of a characteristic of the masks, specifically that they filter at least 95% of airborne particles and are not strongly resistant to oil is a standard and is a class of respiratory devices and thus is a generic term.

Hence, the board held that respondent 1 cannot monopolize the N 95 mark in commerce as it is a generic term that refers to the genus of which the particular product is a species.

Can generic terms be registered?

Generic terms cannot be registered under trademark law and no protection to proprietor is provided.

The governing principle in cancellation/Rectification of registration Applications, “what is the primary significance of the registered mark to the relevant public” shall be the test for determining whether the registered mark has become the generic name of goods or services and in the present case not just the relevant public but various government authorities and institutions to refer to a particular type/standard of the respiratory mask as N95 and thus it is generic to the goods.

Further it was observed that  the Respondent does not have any bona fide intent to lawfully use the applied-for mark in commerce.

During the Pandemic COVID-19 crisis the shameless acts of the Respondent 1 in restricting the sales of the N95 Standard masks based on the Registration obtained by him would deprive the general public from accessing the N95 Masks that are declared as essential commodity by the Government.

Hence, it was held that:

“…given current public sentiment during this global public health crisis and since the dishonesty factor holds the cardinal principle until the Rectification Petition is finally decided the operation of the registration No. 4487559 in class 10 Registered under Certificate No. 1633656 shall remain stayed.”

Matter to be listed on 5-03-2021[Sassoon Fab International (P) Ltd. v. Sanjay Garg, 2020 SCC OnLine IPAB 170, decided on 04-12-2020]

Case BriefsHigh Courts

Bombay High Court: S.C. Gupte, J., granted an interim injunction to Hindustan Unilever Limited while restraining “Emami” from the use of trademark “Glow & Handsome” till the final disposal of hearing.

Hindustan Unilever Limited by the present interim application claimed to be a proprietor and prior user of the mark “Glow and Handsome” for its well-known skin cream, thus far marketed under the trademark “Fair & Lovely”. HUL sought to restrain the defendant, who is a rival manufacturer and trader of goods, from using the mark “Glow & Handsome” for its rival product.

Premise based on which the present application has been moved by HUL

Sometime in September 2018, the Plaintiff applied for registration of the new trademark “Glow & Handsome”.

The Plaintiff also proceeded to obtain permission from the Food and Drugs Administration (‘FDA’) of its trademark “Fair & Lovely” to the new mark “Glow & Handsome”. That permission appears to have come about on 2-08-2020. By a press release dated 3-07-2020, the Plaintiff announced its proposed use of the trademark “Glow & Handsome” for the product hitherto marketed under the trademark “Fair & Lovely”.

On 27-07-2020, the Defendant purported to announce what it describes as a process of launching products under the trademark “Glow And Handsome”.

Present interim application seeking an interim injunction against Emami’s use of the trademark “Glow and Handsome” has been moved in view of the above.

Court’s Analysis and Decision

Bench observed that plaintiff prima facie appears to be a prior adopter and user of the mark “Glow and Handsome”.

HUL has already launched its gods in the market with the said trademark and so far as the defendant is concerned, it is admittedly at the stage of adopting “a process of launching” its goods under the trademark “Glow and Handsome”.

Hence the HUL is entitled to an ad-interim injunction at the present stage.

Court restrained Emami, who has not yet brought its own goods into the market under the proposed trademark “Glow & Handsome” till the time both the parties complete their respective pleadings and final disposal of the matter is completed.

Bench clarified that he present order in no way shall obstruct the defendant’s claim in its own suit in Calcutta High Court regarding a restraint order against the plaintiff’s use of trademark “Glow & Handsome”, also, the Plaintiff cannot claim any equities so far as its use of the mark “Glow & Handsome” hereafter is concerned. [HUL v. Emami Ltd., 2020 SCC OnLine Bom 872, decided on 17-08-2020]


Also Read:

[Glow & Handsome] | Trademark Suit | Bom HC dismisses Emami’s appeal against Single Judge’s ad-interim order

[Glow & Handsome] HUL v. Emami | Trademark Suit | Bom HC | Emami cannot initiate any legal proceedings without giving 7 days prior notice to HUL

Case BriefsHigh Courts

Bombay High Court: B.P. Colabawalla, J., held that,

“Trade Mark ISKCON has come to enjoy a personality that is beyond the mere products/services rendered thereunder and the recognition, reputation and goodwill of the said trade mark ISKCON is no longer restricted to any particular class of goods or services.”

Permanent Injunction

Plaintiff had sought permanent injunction to restrain the defendants from infringing the plaintiff’s registered trademarks, passing off and other reliefs.

A decree of declaration has also been sought that the plaintiff’s trademark ISKCON is a ‘well-known trade mark’ in India.

Director of Defendant 2 has give an undertaking that the defendants will not use the trad mark / name ISKCON by itself or as a part of the trade mark / name or in any manner whatsoever including the impugned expression “Formerly known as ISKCON”.

Advocate for the plaintiff submitted that apart from the above-stated declaration, plaintiff is also entitled to a declaration that its trademark ISKCON is a well-known trademark in India.

Plaintiff has made applications/secured registrations in respect of the trade mark ISKCON and/or marks containing ISKCON as one its leading, essential, distinctive and prominent feature in respect of various goods/services/classes.

Plaintiff has been regularly, openly, continuously, uninterruptedly and extensively using the said mark ISKCON in respect of various goods and services since at least the year 1971 with a view to distinguish the goods/services bearing the said mark ISKCON from those of others.

Further the Counsel for the petitioner also submitted that parameter required to be taken into consideration for a well-known trademark as per Sections 11(6) and 11(7) of the Trade Marks Act, 1999 are fulfilled in the present case.

Decision

It is clear that ISKCON is a coined trade mark of the Plaintiff, that is to say that the said term ISKCON did not exists prior to the Plaintiff’s adoption and use of the same and thus it deserves the highest degree of protection.

Plaintiff has been diligently safeguarding and protecting its rights in the said trade mark ISKCON and has initiated proceedings before various forums against the misuse of its trade mark ISKCON and been successful in enforcing its rights in its mark ISKCON.

Hence in Court’s opinion, plaintiff’s trade mark ISKCON satisfies the requirements and tests of a well-known trade mark as contained in Sections 11(6), 11(7) and other provisions of Trade Marks Act.

Therefore, Court held that trade mark ISKCON is a well-known trade mark in India within the meaning of Section 2(1) (zg)of the Trade Marks Act, 1999. [International Society for Krishna Consciousness (ISKCON) v. Iskcon Appaeral (P) Ltd., 2020 SCC OnLine Bom 729 , decided on 26-06-2020]

Case BriefsHigh Courts

Delhi High Court: Mukta Gupta, J., directed “Telegram” to take down the channels that are infringing plaintiff’s rights and granted ad-interim injunction to Jagran Prakashan Limited.

Plaintiffs’ claim in the present suit is that its digital e-paper is available on www.jagran.com. Readers of the newspaper have the option to either subscribe the physical/print newspaper or they can log on to the plaintiff’s website for the purpose of reading the said daily newspaper.

Plaintiff’s counsel, Jeevesh Mehta submitted that taking into consideration the present circumstances of spread of COVID-19 pandemic, plaintiff is not charging any subscription fee from its readers in India. Though fee of 1 dollar is being charged in other countries.

Further, plaintiff claims to be the exclusive owner of the trademark Dainik Jagran.

Grievance as placed by the plaintiff is that, defendant 1 (Telegram) a cloud based instant messaging and voice over IP service, allows its users to create channels while not disclosing the identity of these users and these users have created channels on which plaintiffs e-paper are being uploaded in PDF format on daily basis.

With the creation of these channels, users can now download the previous editions of e-paper too which otherwise would not have been available, if not subscribed.

Plaintiff alleged that defendant 1 was indulging into reproducing, adopting, distributing, transmitting and disseminating the e-newspapers of the plaintiff and thereby not only causing the plaintiff serious financial loss but also violating the plaintiff’s trademark rights as well as copyrights in the e-newspaper. 

Defendant 1 is required to conduct due diligence and in terms of Rule 3 sub-rule 4 of the Information Technology (Intermediaries Guidelines) Rules, 2011 on being informed about the misuse, the defendant No.1 is required to pull down the said channels within 36 hours.

Bench on perusal of the above stated that, balance of convenience lies in favour of the plaintiff.

Consequently, an ad-interim injunction is granted in favour of plaintiff and against defendant’s 1 and 2. Further, defendant 1 is also directed to disclose the basic subscriber information/identity of the users/owners of the channels. 

Thus, defendant 1 is directed to take down/block the telegram channels or any other similar channels infringing rights of plaintiff with 48 hours of receipt of this order. [Jagran Prakashan Limited v. Telegram FZ LLC,  2020 SCC OnLine Del 615 , decided on 29-05-2020]

Case BriefsHigh Courts

Calcutta High Court: A Division Bench of I.P. Mukerji and Md. Nizamuddin, JJ., allowed an appeal filed against the order of the Single Judge whereby he had rejected the appellant-plaintiff’s application for grant of interim injunction restraining the respondent-defendant from using the subject trademark.

The appellant and the respondent were in the business of manufacturing TMT bars. The appellant was the registered proprietor of the word mark “Shyam” and label marks featuring this word prominently. The appellant filed a suit for infringement of the said trademark and passing off against the respondent. The interlocutory application filed by the appellant for grant of interim injunction till the disposal of the suit was rejected by the Single Judge as noted above. Aggrieved thereby, the appellant approached the High Court.

Two main contentions advanced on behalf of the respondent were: Firstly, that the registration of the mark “Shyam”, which is the name of a God, was invalid. And secondly, it was contended that the appellant filed the suit after a considerable delay and, therefore, the defence of acquiescence was available to the respondent.

Regarding the first contention, the High Court, relying on Lal Babu Priyadarshi v. Amritpal Singh, (2015) 16 SCC 795, held that it could not be said as an infallible principle of law that registration of the word “Shyam” was invalid and it should be cancelled. The respondent has to prove, by leading cogent evidence, before the Board, that indeed the name ‘Shyam’ refers to God only, is not distinctive of the appellant, is generic and common. Hence, its registration was invalid. Since, at the instant stage, the respondent was not able to establish this even prima facie, the Court rejected the first contention.

Coming to the second contention, the Court noted that the appellant was aware of the use of their trademark by the respondent since at least December 2015. Yet, the appellant took their own time in filing the suit and applying for an injunction, i.e., in 2019. However, the Court was of the view that the appellant could not be accused of acquiescing to the use of their trademark by the respondent, though it could be said that they took no action to restrain the respondent from using it. Reliance was placed on Power Control Appliances v. Sumeet Machines (P) Ltd., (1994) 2 SCC 448, wherein the Supreme Court has said that acquiescence would only arise out of the positive acts and not merely by silence or inaction. It has gone to the extent of saying that acquiescence was “one facet of delay”.

In such view of the matter of the Court, considering the prima facie case and balance of convenience, ordered that the respondent would be injuncted from using the trademark in question till the disposal of the infringement suit filed by the appellant, which effect from 1-5-2020, by which date, the respondent was permitted to clear the existing stock. [Shyam Steel Industries Ltd., v. Shyam Sel & Power Ltd., 2019 SCC OnLine Cal 5177, decided on 24-12-2019]

Case BriefsHigh Courts

Delhi High Court: Sanjeev Narula, J. while addressing a matter in respect to trademark infringement and in lieu of that seeking a permanent injunction, discussed the concept of “acquiescence” by relying on ample of cases.

In the present case, the plaintiff sought a permanent injunction restraining the defendant from adopting and using:

  • Trademark/trade name ‘Make My travel’, MMT (letter mark) and the tag line ‘Dreams Unlimited (Impugned ‘wordmarks’);
  • The MakeMyTravel Logo, which includes the infringing word marks namely, MMT and Dreams Unlimited
  • Their domain name <makemytravelindia.com>;

The above are all stated to be violative of the plaintiff’s statutory and common law rights in its own trademarks –

  • MAKEMYTRIP
  • MMT
  • The tag lines MEMORIES UNLIMITED and HOTELS UNLIMITED.

The case of the plaintiff is that, it has presence all across India and several other countries around the world including in the United States of America, the United Arab Emirates and Mauritius. Over the years, the plaintiff has expanded its range of products and services beyond online travel bookings.

Plaintiff, through its primary website, www.makemytrip.com and other technology-enhanced platforms including application-based mobile platforms, etc., offers an extensive range of travel services and products, both in India and abroad.

After changing its trade name to include the words, “MakeMyTrip” on August, 2, 2000, plaintiff has been continuously and uninterruptedly using the trademarks MakeMyTrip and MMT, the MakeMyTrip Word Mark as well as the MMT letter mark. Tag Line “Memories Unlimited” and “Hotels Unlimited”, have also been continuously and uninterruptedly used by the plaintiff.

Plaintiff has earned immense reputation and goodwill on account of extensive and continuous use by the plaintiff. In order to add further distinctiveness and brand recall to its MakeMyTrip Word Mark, plaintiff has conceived, adopted and used various catchy and stylized logos, all of which contain the MakeMyTrip Word Mark, as their essential feature.

Hence, any unauthorized use of the MakeMyTrip Marks and/or any other deceptively similar mark would violate the Plaintiff?s statutory and common law rights and an effort to ride upon the immense reputation and goodwill garnered by the Plaintiff in its MakeMyTrip Marks.

Thus, being aggrieved by the adoption and use of the Infringing Mark and Infringing Domain Name, the Plaintiff, through its Counsel, issued a cease and desist notice requisitioning the Defendant to, inter alia, cease all use of the Infringing Marks and Infringing Domain Name.

It was further submitted that, infringement and passing off of plaintiff’s marks is proved by the following factors:

  • Phonetically, visually, structurally and conceptually the competing marks are identical and/or deceptively similar.
  • Identity of the idea: The mark MakeMyTravel and MakeMyTrip are combination of three words, where the first two words are identical and last word “travel” and “trip” convey the same meaning, idea and concept
  • Nature of goods and services in respect of which the trademarks are being used are identical.
  • Class of purchasers likely to use services of the Plaintiffs and the Defendants is the same.

Defendant’s submissions were as follows:

Plaintiff and its officials were aware that defendant had incorporated a company by name of Make My Travel (India) Private Limited since the year 2010-2011.

During the years 2011-2017, plaintiff and defendant entered into business transactions and on occasions, money was transferred from the account of defendant to that of the plaintiff, thus plaintiff despite being aware of the same did not raise any objection.

Further adding to the above, it has been stated that, since the very beginning. The defendant company was using the letter marks MMT in all its email accounts and other communication and the plaintiff along with its officials was aware of the same.

On May, 17th, 2018, a temporary ad-interim injunction was granted in favour of the plaintiff, according to which the following would be applied on the defendants:

“restraining the Defendant from using in any manner whatsoever, selling, offering for sale, advertising directly or indirectly dealing in any products or services under the infringing marks, namely Make My Travel (word per se), MMT (letter mark). Dreams unlimited (tag line), www.makemytravelindia.com and Make My Travel logos or any other trademark/trade name/trade dress or logo/device, which is identical to and/or deceptively similar to and/or plaintiffs MakeMyTrip logo marks, namely, MakeMyTrip (word mark), MMT (letter mark) and Memories Unlimited and Hotels Unlimited (tag line).”

Decision of the Court and its Analysis

The main relief sought in the above view was of permanent injunction and the Court has been thus called upon to deliberate the question as to whether the same should be confirmed or vacated.

While deciding the application at the preliminary stage, plaintiff under Order 39 Rule 1 & 2 as also the application of the Defendant under Order 39 Rule 4, the court has to keep in mind the well-settled principles governing the grant of injunction viz. prima facie case; balance of convenience and the harm or injury likely to be caused on account of the impugned acts of the Defendant.

High Court while taking reliance on several Supreme Court decisions, laid down the test which is to be applied while evaluating the question regarding the infringement. In F. Hoffman La Roche v. Geofferey Manners, (1969) 2 SCC 716, Supreme Court held that,

“True test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark.”

Referring to the decision in the case of, Amritdhara Pharmacy v. Satyadev Gupta, AIR 1963 SC 449, Court held that for deceptive resemblance, two important questions that need to be kept in mind are:

  • who are the persons that the resemblance must be likely to deceive or confuse and
  • what rules of comparison are to be adopted in judging whether such resemblance exists;

In the above-stated case of the Supreme Court, it was held that,

“confusion is perhaps an appropriate description of the state of mind of a consumer who on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether the impression is not due to imperfect recollection.”

Court while dealing with the present matter stated that while the first two words of the marks MakeMyTrip and MakeMyTravel are identical, last words, TRIP and TRAVEL are similar and convey the same idea.

Defendant’s tag line DREAMS UNLIMITED is deceptively similar to the Plaintiff’s taglines HOTELS UNLIMITED and MEMORIES UNLIMITED second word in the tag lines is identical, the first words DREAMS, MEMORIES and HOTELS, when considered in the context of travel and holiday-related services, may be used in the same context or idea.

In view of the above-stated decisions, Court stated that the plaintiff has a strong prima facie case and the balance of convenience also lies in its favour. In case the defendant is permitted to continue to use infringing marks, grave and serious prejudice is likely to be caused to the plaintiff.

Court added to its observation that, the adoption of the mark by the defendant is without any cogent explanation and it prima facie appears to be dishonest.

On perusal of the orders passed by the Court in the case of MakeMyTrip (India) Pvt. Ltd. v. Orbit Corporate Leisure Travels (I) Private Limited, Court stated that in the said case, there was an agreement between the defendant’s predecessor-in-interest and the plaintiff, and this crucial factor prevailed upon the Court to accept the plea of acquiescence. In the present case, there is no such agreement on record, the plea of acquiescence is premised merely on the basis of email communications exchanged with booking customer care executives.

In Dr Reddy’s Laboratory Ltd. v. Reddy Pharmaceuticals Ltd., 2013 SCC OnLine Del 3626, the Court took note of the fact that the owners of trademarks or copyrights cannot be expected to run after every infringer and thereby remain involved in litigation at the cost of their business time, but can wait till the time the user of their name starts harming their business interests and starts misleading and confusing their customers.

Concept of “Acquiescence”

Acquiescence is a species of estoppels, a rule in enquiry and a rule of evidence and it is essential to the Acquiescence Doctrine that it is accompanied by an encouragement or an inducement: he who possesses a legal right must have encouraged the alleged violator of that right in acting to the latter’s detriment, confident in the knowledge that the former is not asserting his rights against the violator.

Thus, the Court held that defendant has no justification for the use of the infringing marks, except for the plea of suppression and acquiescence, both of which would require further and deeper scrutiny and examination during the course of the trial.

“Irreparable loss would be caused to the plaintiff if the defendant is not restrained from using the impugned marks.”

Hence, injunction order dated 17-05-2018 is made absolute and shall continue to operate during the pendency of the present suit. [Make My Trip (INDIA) (P) Ltd. v. Make My Travel (INDIA) (P) Ltd., 2019 SCC OnLine Del 10638, decided on 18-10-2019]

Case BriefsInternational Courts

World Intellectual Property Organization: M. Scott Donahey (Panelist) transferred the disputed domain names to Philip Morris USA Inc. as these were confusingly similar to their trademark.

Philip Morris USA Inc., manufacturer and marketer of cigarettes and related tobacco products, began doing business under the mark ‘MARLBORO’ in 1883. It was registered as their trademark with the United States Patent and Trademark Office on 14-04-1908. They also registered the domain names ‘marlboro.com’ and ‘marlboro.net’, the former of which resolves to Complainant’s primary location on the Internet at which it promotes its trademarked products and services. The respondent registered the disputed domain names on 14-07-2019. The disputed domain names ‘marlborohempcigarettes.com’ and ‘marlborohempprerolls.com’ were registered with ‘GoDaddy.com’

The complainants filed a complaint with the WIPO Arbitration and Mediation Center (Center) on 02-08-2019. The Center upon receiving this complaint requested the Registrar to verify the disputed domain name.  The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). They notified the Respondent of the Complaint in accordance with the Rules, paragraphs 2 and 4, and the proceedings commenced on 13-08-2019. In accordance with the Rules, paragraph 5, the due date for Response was 02-09-2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default the next day. M. Scott Donahey was appointed as the sole panelist in this matter on 16-09-2019 to ensure compliance with the Rules, paragraph 7.

The complainant contended the following:

  • The disputed domain names were confusingly similar to their trademark in that they each contain the distinctive and famous MARLBORO mark together with other common English words,
  • Respondent had no rights or legitimate interests in respect of the disputed domain names,
  • Respondent has registered and is using the disputed domain names in bad faith.

The respondents did not reply to any of the above contentions.

The panel ordered that the disputed domain names, ‘marlborohempcigarettes.com’ and ‘marlborohempprerolls.com’, should be transferred to the complainant in accordance with paragraphs 4(i) of the Policy and 15 of the Rules. They discussed the following to come to this conclusion:

Identical or Confusing Similarity: Each of the disputed domain names had complainant’s distinctive and famous MARLBORO mark. One of the disputed domain names also included the English words “hemp” and “cigarettes,” while the second of the disputed domain name included the English words “hemp” and the fanciful English word “prerolls.” Domain names, which incorporate English language trademarks and/or service marks together with English words, are confusingly similar to the trademarks they incorporate. Accordingly, the Panel was of the view that the disputed domain names were in fact confusingly similar to Complainant’s MARLBORO trademark and service mark.

Rights or Legitimate Interests: While the overall burden of proof in UDRP proceedings falls on the complainant, the panel was of the view that it may result in “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In the present case, the complainant had alleged that the respondent had no rights or legitimate interests in respect of the disputed domain names and the respondent also failed to assert any such rights. Accordingly, the Panel held that the respondent had no rights or legitimate interests in respect of the disputed domain names.

Registered and Used in Bad Faith: The respondent had been using the disputed domain names to resolve to inactive web sites. The Panel could not conceive any reason as to why a website that could be created to legitimately use the disputed domain names. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 determined that in such a case, the disputed domain names can be said to have been registered and used in bad faith. Accordingly, the Panel held that the disputed domain names were registered and were being used in bad faith.[Philip Morris USA Inc. v. Irving Herrera, Case No. D2019-1853, decided on 16-09-2019]

Case BriefsHigh Courts

Delhi High Court: Pratibha M. Singh, J. while addressing a petition concerning the protection of the trademark ‘DA MILANO’, issued certain guidelines for the online intermediaries involved and held as follows:

“Role of Facebook and Instagram, insofar as posts put up by concerned third parties is governed by the Information Technology (Intermediaries Guidelines) Rules, 2011. Considering the provisions of the stated guidelines, online platforms which claim to be intermediaries not performing any active role in the posting of such information by 3rd party alleged infringers, have a duty only to take down the posts which are brought to their notice by plaintiff in terms of Section 79(3).

The above-mentioned guidelines along with Section 79(3) of the IT Act have been interpreted by a very significant Supreme Court case of Shreya Singhal v. Union of India, (2015) 5 SCC 1, “to mean that “any information received by the platforms would be by means of a Court order”.

In Shreya Singhal case, pertaining to Section 79 (3)(b), following was held which is relevant in respect to the present matter:

“Section 79(3)(b) has to be read down to mean that the intermediary upon receiving actual knowledge that a court order has been passed asking it to expeditiously remove or disable access to certain material must then fail to expeditiously remove or disable access to that material. This is for the reason that otherwise it would be very difficult for intermediaries like Google, Facebook, etc. to act when millions of requests are made and the intermediary is then to judge as to which of such requests are legitimate and which are not.”

The facts in the present case are that the plaintiff who claims to be the owner of ‘DA MILANO’ filed a suit against the Defendants 1 to 4 in respect to seek permanent injunction, restraining infringement of trademark and passing off and under Section 74 of IT Act, 2000 seeking protection of the trademark ‘DA MILANO’.

It has been further stated that, Defendants 1 to 4 are alleged infringers who have posted on “Facebook” and “Instagram” advertising and offering to sell products bearing the mark ‘DA MILANO’. Plaintiff while seeking a permanent injunction against infringers impleaded the stated online platforms to ensure that posts comprising the infringing marks are taken down.

Trial Court, had sought the personal appearance of Facebook and Instagram in the present matter. Therefore, the grievance was the direction of personal appearance of the representatives of Facebook and Instagram.

Senior Counsel, Parag Tripathi, submitted that his clients are willing to comply with interim order which has already been passed and since the said defendants are not contesting the matter on merits against the plaintiff and are merely intermediaries; their personal presence is not required.

High Court on perusal of the facts and the guidelines mentioned above along with relying on the Supreme Court case of Shreya Singhal v. Union of India, (2015) 5 SCC 1, agreed on the fact that the stated platforms are mere intermediaries and have no active role in the matter, which therefore demands no personal appearance. Further, the following directions were issued:

  • Plaintiff shall inform Instagram and Facebook whenever they came across use of the mark ‘DA MILANO’ either in word form, logo or in any other form on their platforms.
  • Once such information is received, as per Rule 3(4) of the 2011 Guidelines, the said posts shall be taken down, within the timelines prescribed.
  • If platforms have any doubt as to the violative or offending nature of posts, they shall intimate the plaintiff.
  • Upon any order being passed by a Court of competent jurisdiction, the same shall be intimidated to the platform, which shall abide by the said order.

Thus, the suit is decreed against Facebook and Instagram in the above terms. [Facebook Inc. v. Surinder Malik, 2019 SCC OnLine Del 9887, decided on 28-08-2019]

Case BriefsHigh Courts

Delhi High Court: Rajiv Sahai Endlaw, J. dismissed a suit filed for refraining the makers of the movie Khandani Shafakhana from releasing the said movie on the ground that it infringes the plaintiff’s proprietary rights.

The plaintiff is an Ayurvedic Sexologist practicing in New Delhi. He claimed that his father, Hakin Hari Kishan Lal, had coined the logo/trademark/brand Khandani Shafakhana and had been in existence from as long as back as 1925. It was claimed that the same constituted plaintiff and his family’s proprietary material. It was also claimed that the Khandani Shafakhana device mark was registered with the Trade Marks Registry. On this basis, it was alleged that the makers of movie Khandani Shafakhana were infringing their proprietary rights. However, it may be noted that the said device mark was not in use for the last 18 years.

Senior Advocate Harish Malhotra, representing the plaintiff submitted that the abandonment of the said device mark was not voluntary and that it could be revived at any time. Rejecting this submission, the High Court noted that the abandonment was under an Order 33 Rule 3 CPC application, and was of plaintiff’s own violotion. It was not pleaded that there was any force or compulsion on the plaintiff to sign the application.

Discussing the proprietary rights claimed by the plaintiff, the Court observed:

“Moreover, while the use of 18 years prior to the institution of the suit, by the father of the plaintiff, of the words “Khandani Shafakhana” is in relation to his professional clinic, the use by the defendants is of the said words as a title to a film. The words “Khandani Shafakhana” singly as well as used in conjunction with each other are generic words. Both are words of Hindi / Urdu language. While the word “Khandani” connotes familial or clannish, the word “Shafakhana” means a hospital or a clinic. Used together, the words convey a family hospital or a family clinic. A bare search of the internet, discloses the word “Khandani” being used, with„Pakode Wala? for vending street food, with „Rajdhani? for a restaurant, with „Sherwani? for a clothing store.Certainly, one person even if running his medical clinic in the name and style of “Khandani Shafakhana”, cannot prevent another, from using the generic word“Khandani” or “Shafakhana” for a hospital or a medical clinic.”

A screening of the movie was arranged for the Court and the plaintiff and after watching the same, Justice Endlaw recorded in the present Judgment:

“I had risen after viewing the film thinking that it presents a golden opportunity to the plaintiff and other practitioners in the field, to, though till now found publishing their advertisements in local newspapers, approach the larger cross section of the society on the subject of need to impart sex education and for lifting the stigma and taboo attached to sexual diseases/disorder/dysfunction and treatment thereof and to commence a countrywide dialogue from the platform offered by the film.”

After discussing the principles culled out from various judicial precedents on the subject, the Court was of the view that the plaintiff was not entitled to the relief of permanent or mandatory injunction or for recovery of any damages from the defendant, as claimed. Resultantly, the suit brought by the plaintiff was dismissed.[Vijay Abbot v. Super Cassettes Industries (P) Ltd., 2019 SCC OnLine Del 9458, decided on 29-07-2019]

Hot Off The PressNews

The World Intellectual Property Organization (WIPO) has launched a new artificial intelligence (AI)-powered image search technology that makes it faster and easier to establish the distinctiveness of a trademark in a target market.

Earlier-generation image search tools primarily determine trademark image similarity by identifying shapes and colors in marks. WIPO’s new AI-based technology improves on this technology by using deep machine learning to identify combinations of concepts – such as an apple, an eagle, a tree, a crown, a car, a star – within an image to find similar marks that have previously been registered.

The new technology results in a narrower and more precise group of potentially similar marks, facilitating greater certainty in strategic planning for brand expansion into new markets. With fewer results to scrutinize, this also translates into labor-cost savings for trademark examiners, attorneys and paralegals, industry practitioners and researchers.

WIPO’s new AI search technology leverages deep neural networks and figurative elements classification data from the Madrid System for the International Registration of Marks and from large trademark offices.

All users can access the AI search technology for free through WIPO’s Global Brand Database, where it has been fully integrated into the database search engine.


[Press Release dt. 26-03-2019]

[Source: WIPO]

OP. ED.Practical Lawyer Archives

In today’s digital world, the internet is probably the most intrusive and effective way to make yourself known and available to the global community. In the last decade or so, online advertising has become the easiest way for corporates to advertise their products and services. The internet’s ability to find, attract and target customers is unmatchable.

Keyword advertising is one of the main tools that a lot of companies have been using to expand their internet presence. This form of advertising allows the products of the companies to appear on the search results of the customer when they search a particular phrase on the search engines. This has been triggered by the help of the search engines like Google and Yahoo which have created keyword advertisement programs that allow the advertisers to purchase certain words or phrases that would lead to their product.

For e.g., if a person was opening a new NGO in Dehradun and wanted to advertise the NGO on Google, the first step would be to create an online advertisement for the NGO. Thereafter, the person would choose certain terms that would lead to the advertisement being shown on Google. The person might purchase those words to lay the framework for keyword advertising.

The problem that surrounds the increasing use of keyword advertising is that of trademark violations. This field though requiring a lot of attention is still highly unsettled due to lack of sufficient and clear law or judicial understanding. The principle reason for the same deficiency is that most cases of keyword advertising do not reach court and are settled by the parties outside it.

The problem arises when companies buy keywords that are trade marks of unrelated third parties or even their competitors. This is done to allow its product to be shown on the search engine when the customers search for its competitors’ marks. To put it into context for instance like in the first example, the person opening the new NGO purchases Child Rights as a keyword, it may show the NGO advertisement every time a person searched Child Rights and You (CRY). Now, this seems to be an excellent move by the advertisers because the established keyword CRY will garner more views than its newly established NGO’s keywords.

This practice of using another company’s name in advertisements is also known as piggybacking and is often practised by companies in disguise to manipulate customers. The general idea that exists in judicial decisions is that the advertisers can bring in action if there is a confusion caused among consumers. While analysing trade mark violations with respect to keyword advertisements, the courts have mostly held that the “likelihood of confusion” is not obvious. However, this being a grey area has attracted a lot of diverse opinions by intellectual property rights (IPR) experts. Different courts have given different judgments in this regard. The courts have mostly restrained from holding the search engines liable for allotting such keywords. However, a conclusive determination on the issue is still awaited. Thus, let us analyse the “likelihood of confusion” in keyword advertisements.

The Trade Marks Act, 1999 deals with the legal issues related to trade mark infringement in India. It is defined as an infringement of exclusive rights attaching to a trade mark without the authorisation of the trade mark owner or any licensee.[1] There are two types of remedies available to the owner of a trade mark for unauthorised use of its imitation by a third party. These remedies are an action for passing off in the case of an unregistered trade mark and an action for infringement in case of a registered trade mark. Moreover, there also exists a jurisdictional issue with regard to the competence of national courts to hear matters relating to keyword advertisements and the liability of search engines.

The essential function of trade mark law is to secure the real identity of any product. It is to provide a product with a secondary meaning which distinguishes it from other products. The “likelihood of confusion” is instrumental in determining whether a trade mark violation has taken place. This research is significant because there is no uniform standard with regard to the trade mark violations by the use of keyword advertisements. Therefore, the existing problem in relation to keyword advertisements is whether it has all the essentials of trade mark violations. Moreover, whether the search engines shall be liable for selling such keywords is another issue that exists today.

The issue of keyword advertising and the related trade mark infringement is still evolving in India as there is no binding decision on the same. The major reason for the lack of judicial authority over the same is that there are no particular laws and regulations that are governing keyword advertising. Development in the law on keyword trade mark infringement will enable the courts to analyse and rule on them effectively. However, with the increasing scope of online advertisements, the number of infringement suits is increasing worldwide. Most jurisdictions have refrained from ruling in favour of trade mark infringement or contributory infringement of search engines. As it was seen in Portakabin Ltd. v. Primakabin BV[2] decided by the European Court of Justice (ECJ) in 2010, the tide is still in the favour of advertisers in such disputes.

The ECJ ruled in favour of Primakabin’s use of trademarked keywords while stating that:

A specialist reseller of second-hand goods under another person’s trade mark cannot be prohibited from using that mark to advertise to the public its resale activities unless the resale of those other goods risks seriously damaging the image which the proprietor has succeeded in creating for its mark.[3]

With regard to the search engines liability, it was seen in Victor Andrew Wilson v. Yahoo! UK Ltd.[4] that search engines cannot be held liable for the use of trademarked advertisements. The UK Court had opined that the search engine was not using the trade mark of the claimant and it was being used by the people who were browsing the term “Mr Spicy”. Thus, similar to the stand in the Netherlands, the UK Courts have also ruled in favour of the advertisers. Moreover, in France, the Court has held that Google is merely performing a technical and passive role and thus it cannot be held liable[5]. As the search engine is not working for its own communication, but the communication of the customers, the liability shall only arise when Google is asked to take off the infringing keyword and it refrains from doing so.[6]

The ECJ has held that there are four main cumulative conditions that must be shown to prove trade mark infringement. In order for trade mark infringement to occur, all four components shall be satisfied:[7]

(i) the use must be in the course of trade;

(ii) the use must be made without the consent of the trade mark owner;

(iii) this use must relate to identical or similar products or services; and

(iv) the use must affect the functions of the mark.

Given the aforementioned grounds of trade mark infringement, keyword advertisements of the trade mark words may as well constitute trade mark infringement of the registered trade mark. Such tactics are invariably undertaken by rival companies involved in similar trade as of that of the trade mark owner. The rival companies use trademarked words as keywords without taking permission from the owner. This, therefore, is a dishonest practice and involves a use of symbol or mark that has been registered by another party. Further, most of the times, these companies produce products or provide services that are close substitutes of each other and thus keyword advertisements relate to identical and similar products and services.

Another question that merits an answer is whether the use of such keywords amount to loss to the owner of the trade mark. It has been argued that given the level of internet literacy, an average internet user does not know the difference between search results and advertisements and it is likely that a user will go to a link of other advertisers mistaking it to be the trademarked products advertisement. However, this argument does not stand given the increasing scope of online advertisements and online shopping. The internet has become the biggest platform for the exchange of goods and services. A lot of customers browse for particular products in the internet and are confused due to the advertisements of the rival companies. Since, it is the first advertisement that appears on the search result, more often than not, the customers end up landing on their websites.

It must be noted here that mostly, the new rival brands are trying to use the keywords of renowned trade marks to market their products are producing similar products or services. As these products or services are close substitutes of each other, the customers might be swayed to purchase the new companies’ goods or services as the newly marketed products are mostly cheaper in the market. Further, the customers become aware of the existence of such a rival brand and therefore the exclusivity of the trade mark owner does not remain the same and they may face substantial dip in their sales and profits. The initial confusion affects the economic gains of trade mark registration.

We conclude by saying that trade mark violation of trademarked keywords constitutes an infringement of trade mark by the rival advertiser. However, with regard to the liability of search engines, it shall depend upon the recognition of the trade mark. If it is too widely renowned trade mark for instance “Coke”, then the search engines should be held liable for putting it in the suggestion box for keywords. Sooner or later, such matters may start landing before appropriate courts for redressal and the uncertainty over this issue may then be settled by providing a conclusive determination.


[1]    Dr B.L. Wadhwa, Law relating to Intellectual Property Rights, 4 (Universal Law Publication Co), 303-305, (2010).

[2]    Case C-558/08, order dated 8-7-2010 : ECLI:EU:C:2010:416.

[3]    Portakabin Ltd. v. Primakabin BV, Case C-558/08, order dated 8-7-2010 : ECLI:EU:C:2010:416.

[4]    2008 EWHC 361 (Ch).

[5]    Google France SARL v. Louis Vuitton Malletier SA, Case C-236/08, order dated 23-3-2010 : ECLI:EU:C:2010:159,.

[6]    Ibid.

[7]    Ibid.