Case BriefsHigh Courts

Kerala High Court: Shaji P. Chaly, J. heard a petition that sought relief due to the infringement of the right to vote as the petitioner’s name was named was removed from the voter’s list. The Court stated that the relief sought by the petitioner had become infructuous. However, the Court stated that deletion of name from voter’s list is a serious matter and it must be dealt with proper care.

The petitioner, a resident of Thiruvananthapuram, had an electoral identity card issued by the Election Commission of India. Despite having voting rights, in the Lok Sabha elections 2019, his name was omitted from the voter’s list. The petitioner always had voting rights but his name was removed from the list on the grounds that he had ceased to be an ordinary resident of the said constituency. However, his family members continued to have their names in the voter list. He requested the respondent authority to restore his voting rights so that he could exercise his voting rights. But when no action was initiated by the respondent, he approached this Court for relief by way of filing the present petition.

Petitioner appeared in person and contended that he was residing in the same building ever since he had voting rights. He submitted that although he and his family had shifted to a temporary residence till the time repair was carried out in his original residence, his family members still had their name in the voter’s list while his name was omitted from the list.

Counsel for the respondent, Murali Purushothaman, contended that according to Sections 22 and 23 of Representation of the People Act, 1951 (hereinafter referred to as “the Act”) any new name could not be included in the electoral list after nominations had been filed in the respective constituencies. He contended that petitioner’s name was deleted on the ground that he shifted to a different residence. Moreover, the Election Commission had also published a draft electoral roll and asked for objections if any, but the petitioner did not submit his objection for deletion of his name.

The Court held that voting rights of a person are valuable rights and it cannot be taken away by any means. Section 22 of the Act stated that before removing any name from the voter’s list, it was the duty of Electoral Registration Officer to hear that person in respect of any action being taken. Court stated these provisions are based on principles of natural justice and must be strictly followed.

The Court directed the respondent to conduct a detailed enquiry in the matter and if necessary, take appropriate actions against the officers who removed the name of the petitioner from voters list. It was also directed that in the event of petitioner making an application, his name be restored in the voter’s list.

The writ petition was disposed of in the above terms.[A. Subair v. Chief Election Commissioner of Kerala, 2019 SCC OnLine Ker 1914, decided on 10-06-2019]

Case BriefsHigh Courts

Delhi High Court: In what may probably go down as the first of its kind decision in India on the subject of anti-piracy and intellectual property law, Manmohan, J. passed a decree of permanent injunction against “rogue websites” from infringing, in any manner, the plaintiff’s copyrighted work. Internet Service Providers (“ISPs”) and the Government departments concerned were also directed to block access to such rogue websites and “hydra headed websites”.

The Court was deciding a bunch of suits brought by UTV Software Communications Ltd., Twentieth Century Fox Film Corpn. and others, all of which are companies engaged in the business of creating content, producing and distributing cinematographic films around the world including in India. They primarily sought injunction restraining infringement of copyright on account of defendants communicating to the public the plaintiffs’ original content/cinematographic works without authorization. The defendants that were impleaded can be categorised in four classes — (i) Certain identifiable websites that were unauthorisedly communicating the plaintiffs’ copyrighted work; (ii) John Doe defendants who were hitherto unknown parties engaged in the unauthorised communication of the plaintiffs’ copyrighted works, including the registrants of the defendant-websites, uploaders, creators of redirect/mirror/alphanumeric websites; (iii) ISPs that provide internet access, enabling users to visit any website online, including the defendant-websites; and (iv) Department of Telecommunication (“DoT”) and Ministry of Electronics and Information Technology (“MEITY“).

This was a rare occasion where in an ex-parte matter, questions of law of general public importance arose for consideration. The Court was of the view that the general industry evidence appears consistent with a hypothesis that digital piracy has hurt the movie industry. In fact, online piracy has had a very real and tangible impact on the film industry and the rights of the owners. The Copyright Act, 1957 confers a bundle of exclusive rights on the owner of a “work” and provides for remedies in case the copyright is infringed. The Court was of the opinion that it had ample powers to mould the relief to ensure that the plaintiff’s rights are adequately protected.

The Court discussed the relevant law on the subject including Sections 2(y),(f) and (ff), 14(d), 51(a)(i) and (ii), 52(1)(c) and 55 of the Copyright Act; and Sections 2(1)(w), 69-A and 79 of the Information Technology Act, 2000; along with relevant case laws, both domestic and foreign. The seminal points and the Court’s conclusion after due consideration is, in seriatim, delineated below:

(a) Infringer of copyright on the internet not to be treated differently from an infringer in the physical world — If the view of the “Internet exceptionalists school of thought” is accepted, then all infringers would shift to the e-world and claim immunity! A world without law is a lawless world. There is no logical reason why crime in the physical world is not a crime in the digital world especially when the Copyright Act does not make any such distinction.

(b) Seeking blocking of a website dedicated to piracy does not make one an opponent of free speech and open internet — Advocating limits on accessing illegal content online does not violate open internet principles. The key issue about Internet freedom is not whether the Internet is and should be completely free or whether Governments should have unlimited censorship authority, but rather where the appropriate lines should be drawn, how they are drawn and how they are implemented.

(c) What is a “rogue website” — Music and film piracy are primarily facilitated on the net by Flagrantly Infringing Online Locations (“FIOLs“) or Rogue Websites. They are those websites which primarily and predominantly share infringing/pirated content or illegal work. The registrant details of these websites are unknown and any or all contact information is masked/blocked. In Para 59 of its judgment, the Court also chalked down some illustrative factors to be considered for determining whether the website complained of is a FIOL/rogue website. It was clarified that such factors do not apply to intermediaries as they are governed by IT Act, having statutory immunity and function in a wholly different manner.

(d) Test for determining a rogue website is qualitative — If the test to declare a website as a rogue website is that it should contain only illicit or infringing material, then each and every rogue website would add a small percentage of legitimate content and pray that it be not declared an infringing website! Consequently, the real test for examining whether a website is a rogue website is a qualitative approach and not a quantitative one.

(e) Defendant-websites were rogue websites — The Court gave a list of reasons to conclude that the defendant-websites satisfied the “qualitative test” and therefore were rogue websites. The reasons include that they do not provide any legitimate contact details and hide behind the veil of secrecy, they encourage users to circumvent detection or blocking orders, etc.

(f) Court is justified to pass directions to block the rogue websites — Website blocking in the case of rogue websites, like the defendant-websites, strikes a balance between preserving the benefits of a free and open Internet and efforts to stop crimes such as digital piracy. The Court was also of the opinion that it has the power to order ISPs and DoT as well as MEITY to take measures to stop current infringements as well as if justified by the circumstances prevent future ones.

(g) Dealing with the “hydra headed” rogue websites — The question that arose for consideration was how should courts deal with hydra headed websites, who on being blocked, actually multiply and resurface as alphanumeric or mirror websites. In the present batch of matters though the Court had injuncted the main website by way of the initial injunction order, yet the mirror/alphanumeric/redirect websites had been created subsequently to circumvent the injunction orders.

Though there is no similar procedure for issuing a “dynamic injunction” as is issued by courts in Singapore and elsewhere, yet in order to meet the ends of justice and to address the menace of piracy, the court in the exercise of its inherent power under Section 151 CPC permitted the plaintiffs to implead the mirror/redirect/alphanumeric websites under Order 1 Rule 10 CPC as these websites merely provide access to the same websites which were the subject of the main injunction. On being satisfied that the impugned website is indeed a mirror/redirect/alphanumeric website of the injuncted rogue website(s) and merely provides new means of accessing the same primary infringing website, the Joint Registrar shall issue directions to ISPs to disable access in India to such mirror/redirect/alphanumeric websites in terms of the orders passed.

Relief

(i) Keeping in view the aforesaid findings, a decree of permanent injunction was passed restraining the defendant-websites, tehir owners, partners, proprietors officers, servants, employees, and all others in capacity of principal or agent acting for and on their behalf, or anyone claiming through, by or under it, from, in any manner hosting, streaming, reproducing, distributing, making available to the public and/or communicating to the public, or facilitating the same, on their websites, through the internet in any manner whatsover, any cinematograph work/content/programme/show in relation to which plaintiffs have copyright.

(ii) A decree was also passed directing the ISPs to block access to the defendant-websites.

(iii) DoT and MEITY were directed to issue a notification calling upon the various internet and telecom service providers registered under it to block access to the defendant-websites.

(iv) The plaintiffs were permitted to implead the mirror/redirect/alphanumeric websites under Order 1 Rule 10 CPC in the event they merely provide new means of accessing the same primary infringing websites that have been injuncted.

(v)Plaintiffs were held entitled to actual cost of litigation.

Suggestion

As a measure for curbing pirated content and the dark-net for promoting legal content and accelerating the pace of Digital India, the court suggested that since website blocking is a cumbersome exercise and majority of the viewers/subscribers who access, view and download infringing content are youngsters who do not have knowledge that the said content is infringing and/or pirated, the MEITY/DOT should explore the possibility of framing a policy under which a warning is issued to the viewers of the infringing content, if technologically feasible in the form of e-mails, or pop-ups or such other modes cautioning the viewers to cease viewing/downloading the infringing material. In the event, the warning is not heeded to and the viewers/subscribers continue to view, access or download the infringing/pirated content, then a fine could be levied on the viewers/subscribers.

Words of appreciation

The court also appreciated the services rendered by Hemant Singh, Amicus Curiae as well as Saikrishna Rajagopal and the team of Advocates assisting them. They not only handed over innumerable notes, charts and articles but explained with great patience certain technologies that the Court was not familiar with. [UTV Software Communication Ltd. v. 1337X.to, 2019 SCC OnLine Del 8002, dated 10-04-2019]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Jayant Nath, J. passed a permanent injunction decree against the defendants, restraining them from using the trademark “AAJ TAK AAMNE SAAMNE”; “AAJ TAK”; “aajtakaamnesaamne.com” or any other trademark deceptively or phonetically similar to registered trademark “AAJ TAK”.

In the present case, the plaintiffs filed the suit for permanent injunction against the defendants for infringement and passing off trademark “AAJ TAK” or any other trademark deceptively similar to plaintiffs registered trademark “AAJ TAK” in relation to magazine, newspaper, journal etc.

The contentions as placed upon by the plaintiffs were that they were the registered owner of immensely popular trademark “AAJ TAK” which has been licensed to Plaintiff 2 for running a 24 hour Hindi news channel. Defendant 1 was an individual who claimed to own, print and publish fortnightly magazine “AAJ TAK AAMNE SAAMNE”. Plaintiffs came to know recently of the infringement and violation of their trademark by the defendants when they received an email through defendant’s employee.

Further, the plaintiff submitted that the act of the defendant was not only dishonest, illegal and malafide but clearly infringed upon the intellectual property rights of the plaintiffs. Plaintiff 1 was the registered proprietor of the trademark “AAJ TAK” along with various other composites in various classes which were mentioned in the plaint within the meaning of Section 2(zg) of Trade Marks Act, 1999. The said trademark “AAJ TAK” had earned the status of a “Well-Known Trademark”. Defendants were clearly trying to ride and encash the goodwill earned by the plaintiffs over a long period of use.

Therefore, the High Court was of the view that the averments made in the plaint and the unrebutted evidence filed by the plaintiffs established that they were the registered proprietor of the said trademark “AAJ TAK”, thus they had a statutory right to the exclusive use of the same. A decree of permanent injunction was passed in favour of the plaintiffs due to the clear violation of their rights and lacking bonafide on the part of the defendants. [Living Media India Ltd. v. Mandeep Kaur, CS (COMM) 990 of 2016, decided on 16-11-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Pratibha M. Singh, J. decreed a suit in terms of granting a permanent injunction restraining the defendants from selling plaintiff’s counterfeit products.

The plaintiff—Giorgio Armani SpA—is an Italian company that owns various ARMANI marks that makes it one of the leading fashion brands worldwide. The defendants were in the business of organising exhibitions of various high-end designer products including those of the plaintiff. The plaintiff alleged that its products were being sold without authenticity cards or nay price tag and hence the defendant’s activities were likely to cause huge damage to plaintiff’s marks and business. It was also pleaded that since the products did not bear price tags, which could not have been the case if the products were original, they could be easily inferred as being counterfeit.

The High Court perused the record and held that the fact that the defendants were offering for sale products under the various ARMANI marks and holding exhibitions in respect thereof showed that they were well aware of the value of the said marks. Legal position was noted to be that under Sections 29 and 30 of the Trade Marks Act, 1999, causing infringement to a product would also constitute infringement. It was noted that the defendants neither argued nor pleaded that the products were genuine. The fact of missing price tags added credence to the plaintiff’s claim that the products were counterfeit. The activities of the defendant were held to be an infringement of plaintiff’s marks. Therefore, the suit was decreed in terms of granting permanent injunction against the defendants. [Giorgio Armani v. Yogesh Mordani,2018 SCC OnLine Del 12078, dated 03-10-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Manmohan, J. decreed a suit for grant of a permanent injunction against the defendant for infringement of plaintiff ’s trademarks.

It was an admitted fact that the plaintiff was a registered owner of the trademarks SUMEET and SUMEET TRADITIONAL for their power operated kitchen mixies for domestic use. The mark was used by the mother of the director of plaintiff company since 1963. Registration of trademark under Class 7 of the Trade and Merchandise Marks Act, 1958 was granted in 1970 and assigned to the company in 1981. The defendant company was alleged to unauthorisedly sell identical mixies with same trademarks. The parties had earlier entered into an Agreement for Subcontract for manufacture of 2 specific models of mixies. Since the defendant was violating the Agreement by selling goods under the plaintiff’s trademark, the Agreement was terminated. Plaintiff submitted that the use of the said marks by the defendant post-termination of the Agreement was likely to cause confusion and deception amongst the purchasing public.

The High Court perused the record and on appreciation of evidence, the Court was of the view that the suit of the appellant deserved to be decreed. In the opinion of the Court, the triple identity test was satisfied. The test being —

  • Firstly, use of identical or deceptively similar trademark.
  • Secondly, use of trademark in relation to identical goods.
  • Lastly, use of trademark in relation to identical goods having identical trade channels (products sold via same trading channels).

From the evidence on record, according to the Court, it was apparent that despite termination of the Agreement, the defendant malafidely continued to affix plaintiff’s trademark on their product which amounted to infringement of the same. Accordingly, the suit was decreed in favour of the plaintiff with actual costs. [Sumeet Research and Holdings (P) Ltd. v. Sipra Appliances,2018 SCC OnLine Del 11341, dated 14-09-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Pratibha M. Singh,  J. allowed a suit filed by Disney Enterprises Inc. Against the defendants-chocolate maker for permanently restraining infringement of its copyright in the character Lightning McQueen from the movie Cars.

The plaintiff held copyright in the character Lightning McQueen, an animated race car from the movie named above, in the United States. The defendants were manufacturing chocolates by the name of Choco Car, consisting of an artistic work/character which was a complete imitation of Lightning McQueen. The plaintiff, therefore, filed the present writ suit seeking permanent injunction against the defendants and damages for infringement.

The High Court termed the case as a “classic case of character merchandising”. It was noted as well settled that characters can acquire the status of trademarks and can also be protected under copyright law. It was observed that the importance of preventing well-known characters from being misused for commercial products lies in the fact that the creation of fictional characters requires great amount of creativity and innovation. It was further observed that the plaintiff’s copyright was liable to be protected in India in view of the International Copyright Order as also India being a party to Berne Convention for Protection of Literary and Artistic Works and the Universal Copyright Convention. Holding thus, the suit filed by the plaintiff was allowed and a decree of permanent injunction was passed against the defendants. The defendants were further ordered to pay Rs 5 lakhs as damages to the plaintiff. [Disney Enterprises Inc. v. Pankaj Aggarwal,2018 SCC OnLine Del 10166, dated 10-07-2018]

Case BriefsSupreme Court

Supreme Court: The Bench comprising of A.K. Sikri and Ashok Bhushan, JJ., allowed a civil appeal filed against the judgment of Karnataka High Court, whereby the decision of Intellectual Property Appellate Board cancelling the registration of appellant’s trademark was upheld.

Respondent was a cooperative of milk producers who sold milk and milk products under the mark NANDINI. It has registration of the mark under Classes 29 and 30 of Schedule IV to the Trade Mark Rules, 2002. The appellant, on the other hand, adopted the mark ‘NANDHINI’ for its restaurants and applied for registration of the said mark in respect of various foodstuff sold by it. Registration of the mark was allowed in favour of the appellant by the Deputy Registrar of Trade Marks. Respondent objected that the mark was deceptively similar to that of the respondent’s, and was likely to deceive the public or cause confusion. According to the respondent, it had exclusive right to use the said mark and any imitation thereof by the appellant would lead the public to believe that the foodstuff sold by the appellant were, in fact, that of the respondent. The respondent appealed to the IPAB against the decision of Deputy Registrar, which was allowed. Subsequently, the writ petition filed by the appellant thereagainst was dismissed by the High Court.

The Supreme Court proceeded in the matter on the presumption that NANDINI trademark of the respondent had acquired distinctiveness. The fulcrum of the dispute was whether the registration of mark ‘NANDHINI’ in favour of the appellant would infringe the rights of the respondent. The Court, after considering the facts, found it difficult to sustain the order, as it did not find the two marks deceptively similar. Applying the principles laid down in National Sewing Thread Co. v. James Chadwick and Bros., AIR 1953 SC 357, to the instant case, the Court found that the visual appearance of the two marks was different and they relate to different products. Further, looking at the manner in which they were traded, it was difficult to imagine that an average man of ordinary intelligence would associate the goods of the appellant to that of the respondent. The Court held that the use of the mark ‘NANDHINI’ by the appellant in respect of its different goods would not be detrimental to the purported distinctive character or repute of the trademark of the respondent. Therefore, the impugned order was held to be unsustainable in the law which was accordingly set aside. The appeal was, thus, allowed and order of the Deputy Registrar granting registration in favour of the appellant was restored. [Nandhini Deluxe v. Karnataka Coop. Milk Producers Federation Ltd., 2018 SCC OnLine SC 741, dated 26-07-2018]

Case BriefsSupreme Court

Supreme Court: R. Banumathi, J. while delivering the Judgment for herself and Ranjan Gogoi, J. dismissed an appeal filed against the Judgment of Calcutta High Court wherein the respondents were allowed to use the word MALABAR in conjunction with the word ‘BAROMA’ for selling basmati rice.

Appellant claimed to use the mark ‘MALABAR’ to sell biryani rice since 2001. Appellant filed a suit for infringement and passing off against the respondents who were using the mark ‘MALABAR GOLD’ which was being used to sell the same product, i.e., biryani rice. An interim injunction was granted against the respondents restraining them from using the said mark. In course of the proceedings, the respondents submitted the modified mark that they proposed to use, having the word BAROMA in conjunction with the word MALABAR, and with changed get up. Consequently, the interim injunction was vacated. Aggrieved, this appeal was filed by the appellant.

The Supreme Court found that the appellant had their label mark registered under Class 30 which had a disclaimer (limitation) that there was no exclusive right in the word ‘MALABAR’. Accordingly, the appellant could not claim to use the word MALABAR to the exclusion of everyone else. Other marks registered under the same class using the word MALABAR in conjunction with other words were brought to the notice of the Court. In Court’s view that High Court was right in holding that appellant did not have exclusive right over the word MALABAR. On comparison, the Court held that the marks of both the parties seem different. The proposed mark of the respondents was different in get up as well as the word BAROMA used in conjunction made it distinct. Holding that there was no deceptive similarity between the two marks, the Court found no infirmity with the impugned order. The appeal was dismissed. [Parakh Vanijya (P) Ltd. v. Baroma Agro Product,  2018 SCC OnLine SC 686, decided on 12-07-2018]

Case BriefsHigh Courts

Calcutta High Court: A Single Judge Bench comprising of Soumen Sen, J., addressed the grievance of the petitioner who has prayed for the passing of “John Doe” order against the respondents who are responsible for the infringement of petitioner’s copyright and trademark.

The brief facts of the case are that the petitioner is involved in the business of  B2B e-commerce portal and since its inception in the year 1996, he had coined and adopted a unique mark known as “INDIAMART” for use in connection with the goods and services falling under various categories. He also claims that he has been using the said mark regularly and also got it registered in various forms as a wordmark, logo mark, label mark, and device mark. The petitioner has furnished all the details for the said registrations.

In regard to the copyright and trademark infringement, petitioner became aware of respondent’s having slavishly imitated the petitioner’s unique mark “INDIAMART” in one form or the other. For the said claim, petitioner’s have successfully disclosed all the copies which show that the petitioner’s mark is being infringed. One of the claims being put forward by the petitioner is that clearly the respondent’s have tried to confuse and deceive the public over the reputation of the plaintiff’s mark. Further, it has been stated by the petitioner that the respondents have infringed the copyright of the petitioner by using the proprietary information/data including such information, etc. which comes under the literary works of the petitioner.

Therefore, the petitioner has demanded the blocking of such websites which clearly are constituting to piracy and violation of the copyright and trademark use of the petitioner and on that note, he has prayed for John Doe orders of injunction.

The Hon’ble High Court, by recording the documents furnished by the petitioner and the fact that respondents have slavishly imitated the trademark of the petitioner which brings the Court to the claim of the petitioner about its goodwill and thereby allowing the relief to the petitioner as prayed for and concluding by giving direction to the petitioner to communicate this order to all the defendants. [Indiamart Intermesh Ltd. v. Ankit; 2018 SCC OnLine Cal 2379; dated 16-05-2018]

Case BriefsHigh Courts

Karnataka High Court: A Single Judge Bench comprising of L. Narayana Swamy, J. dismissed a miscellaneous first appeal while vacating the injunction passed against the respondent prohibiting him from using the trademark ‘PATIL FRAGRANCES’.

The appellant filed a suit against the respondent for infringement and passing off its trademark and trade name ‘PATIL AND PATIL PARIMALA WORKS’ by using identical and deceptively similar trade name. An application for interim injunction was also filed to restrain the respondent from using the name ‘PATIL FRAGRANCES’ during pendency of the suit, which was granted. Thereafter, the respondent too filed an IA for vacating the injunction which was allowed and thereby the injunction was vacated. The appellant filed the instant appeal impugning the order passed by the XVII Additional City Civil Judge vacating the injunction granted initially against the respondent.

The High Court, in order to decide the appeal, weighed the matter to find out in whose favour lies the balance of probabilities. The Court found that the appellant and the respondent belonged to the same family; they used the same surname; the respondent was a former employee and the brother of the appellant; various members of the family use the surname ‘PATIL’ for conduct of their business. The credential of the respondent having the same name was verified by various government documentary proofs. Relying on Section 35 of the Trade Marks Act, the Court held that even a registered user or a registered trademark proprietor cannot interfere with the bona fide use by a person of his own name. Accordingly, the Court held that it was not a case of infringement of trade mark, but it was a clear case of bona fide use of his name by the respondent. In such circumstances, the Court dismissed the appeal and upheld the impugned judgment vacating the injunction passed against the respondent. [Somashekar P. Patil v. D.V.G. Patil,2018 SCC OnLine Kar 637, dated 08-05-2018]

Experts CornerGUJCOST - GNLU

“Property is not the bastion of egoism but rather the vehicle of social exchange.”

— Joseph Kohler, German scholar[1]

One cannot negate the steady escalation of technology or dispute its benefits, but the recent trend of protection sought under intellectual property rights, spurred by this monstrous growth is a distress signal. The trend can be labelled in just one term-hashtags. For those who are fortunately (or not) unaware of the hashtag culture, it is a tool to characterise content into groups; by placing a “#” character, also known as the hash symbol, in front of a word or a phrase, the author makes it easier for the reader to locate a work when searched by the specific word or phrase.

Hashtags are all around us. They are online, offline and the term was also announced by Oxford University Press as “Children’s Word of the Year” in 2015.[2] No more a mere symbol on the keypad of a phone, hashtags are serving as investment points for companies wanting to carve a brand niche. It is interesting to learn that popular brand campaigns #HowDoYouKFC and #McDstories, belonging to food giants KFC and McDonald, respectively, the soft drink specialist Coca-Cola company’s #smilewithacoke, the viral fundraiser #IceBucketChallenge and the global phenomenon of #TBT popularised by Instagram, are protected as trade marks. Surprisingly so, by the end of 2015 more than two hundred hashtags were registered as trade marks in the United States of America, while thousands more awaited their chance. An article published in WIPO Magazine last year[3], cites a survey establishing 64% hike in hashtag trade mark applications in 2016 as compared to previous year. Is this not a cause for concern? By according such protection, we may have diluted the concept of IPR rather than expanding it.

In 2013, the United States Patent and Trade marks Office (USPTO) addressed “Hashtag Trade marks” in the Trade mark Manual of Examining Procedure.[4] It recognised that a term containing the hash symbol or the term hashtag may be registered as a trade mark, but “only if it functions as an identifier of the source of the applicant’s goods or services”. It states further, “Generally, the hash symbol and the wording Hashtag do not provide any source-indicating function because they merely facilitate categorisation and searching within online social media … if a mark consists of the hash symbol or the term Hashtag combined with wording that is merely descriptive or generic for the goods or services, the entire mark must be refused as merely descriptive or generic.”

What was a modest beginning in the year 2007, a decade later, hashtag has earned a remarkable status. And with an unprecedented growth in social media, hashtags have managed a mind boggling feat. Safe to say, hashtags have engulfed humanity, with not a life remaining untouched (except of course, lives in the remotest parts of the earth). Addressing the concern mentioned in the previous paragraph, it is worrisome to imply gullibility in the IPR regime and the regime needs to be strengthened at a faster pace in order to maintain its sanctity.

Intellectual property rights—A social contract

IPR protection is commonly placed under two major theories—(i) Utilitarian (ii) Natural; the former recognising a creation or an invention thereby incentivising to create or invent further, the latter backing the idea that an individual must be able to protect the result of their creative, inventive or commercial labour. Society has a need for intellectual productions in order to ensure its development and cultural, economic, technological and social progress and therefore grants the creator a reward in the form of an intellectual property right, which enables him to exploit his work and to draw benefits from it. In return, the creator, by rendering his creation accessible to the public, enriches the community. Intellectual property law is thus the product of a type of “social contract” between the author and society.[5]

Apart from the justifications, intellectual property rights too are attached with a social function. The social function which is inherent to any legal rule allows for the rights of the individuals to be weighed against competing rights.[6] Being part of a broader legal system, these rights must always be put in context with other rights of equal value and with collective interests. Thus, works protected as intellectual property are equally important for the society as for the creator and both parties must benefit from works of the intellect. However, looking into the recent trend of according trade mark protection to hashtags, it must occur to the legal minds, to shape the social function of IP in moderation. Where necessary, checks and balances must to be placed on the human expansionist behaviour, under which law is being subjected to unnecessary widening in accordance with technology.

Globally, economies are advancing at a swift rate based on “knowledge products and intangibles”, resulting in rapid expansion of IPRs. Author Christophe Geiger[7] cites the implications of widening the ambit of IPRs, in it that such multiplication is mindless, the consequences of which are not “thought through in advance”.

The ever-growing trade mark unit

Putting in perspective a wide understanding, a trade mark may be one or more words, devices or symbols—or composite of both-that is used to distinguish goods or services of one from others. Most scholars and courts agree that trade marks serve two purposes: to protect consumers from deception and confusion, and to protect the infringed mark as property. Traditionally, courts while deciding whether a trade mark is distinctive or not, will usually place a mark under any of the four categories:

(i) Generic,

(ii) Descriptive,

(iii) Suggestive, or

(iv) Arbitrary/Fanciful.

Such adjudication is based on the relationship between the mark and the good/service it is associated with. Moving further, the trade mark regime was widened to include unconventional categories such as shapes, smells, colours, sounds and so on. Currently, companies also seek to register slogans as trade mark, however, the spectrum of generic-to-arbitrary/fanciful is applicable in this case as to the usual marks.

With reference to the given background, the question that arises is whether hashtags fit in the traditional legal framework for trade mark? When companies can register words, phrases or slogans as trade marks, what difference does a hashtag make?

Outlook at trials

History is witness to the fact that a major shift in provisions of a law calls for the judiciary to decide the fate for the same. So has been the case with hashtag trade marks, however, the judiciary has been divided on whether trade mark protection granted to hashtags is valid. The outcomes have been inconsistent.

In Vahan Eksouzian v. Brett Albanese[8], the Court was to analyse whether the use of a hashtag (#cloudpen) was a violation of a settlement agreement clause that prohibited the use of the terms “cloud” and “pen” in close proximity as a unitary trade mark. The defendant owned the trade marks “Cloud PENS” and “Cloud PENZ” and the agreement prohibited the plaintiff from using “the words Cloud, Cloud V, and/or Cloud Vapes in close association with the words “pen”, “penz”, “fuel”, “pad”… in association with the plaintiff’s products as a unitary trade mark.” The Court held that there was no breach “because hashtags are merely descriptive devices, not trade marks, unitary or otherwise, in and of themselves”. It found that even though the hashtag used the registered mark, “using the hashtag in this manner was not an infringing act likely to cause confusion”.

This decision was further supported in AOP Ventures Inc. v. Steam Distribution LLC[9], where the plaintiffs alleged that the defendants caused infringement of its registered mark DRIP CLUB by using the hashtag #Dripclub in atleast five social media posts. The Court stated that merely using a trade mark as a hashtag does not cause infringement of that mark.[10]

Despite these two cases, there are courts that have looked at hashtag use as supporting a trade mark infringement claim. In TWTB Inc. v. Rampick[11], the Court found the use of hashtags to be relevant to a trade mark claim and considered the use of the hashtags as evidence of a former licensee holding itself out to be the same business as a current licensee. Interestingly, in Fraternity Collection LLC v. Fargnoli[12], the Court refused to dismiss a trade mark claim against a competitor’s use of a trade mark as a hashtag and noted that the use of a competitor’s name or product as a hashtag “could, in certain circumstances, deceive consumers.”

Also supporting the enforceability of trade mark rights against hashtag use is Coca-Cola Co. v. Whois Privacy Protection Service Inc./Thien Le Trieu, Le Trieu Thien[13], where WIPO noted that once a mark was determined to be protectable (or by extension, not protectable) there was no reason to analyse the hashtag version of that same term or mark. It stated, however, that a hashtag mark not based on an existing mark would be treated the same as a non-hashtag mark in analysis, and whether the mark had acquired secondary meaning would determine if it were protectable.

Conclusion

The debate goes on with equal amount of support and dissent for hashtags as trade marks. Not leaning towards procedural aspects, my argument sticks to a singular reservation i.e. the social function of IPR, which is to be beneficial to the individual creator and serve the community, at the same time. A single person or company’s rights must be weighed in harmony with the rights of the society as a whole. If the right is to be used in accordance with its function, it must not be used “anti-socially” i.e. disregarding certain fundamental values and competing rights.[14] To insist on the social functions of IPRs is thus to identify a need for moderation and balance in the conception and implementation of these rights.[15]

With the meteoric percolation of social media into daily lives of people, it becomes increasingly important to limit the philosophical basis of IPR, to not bring in any and everything under the sun within an overcrowded umbrella of IP protection. In doing so, it is necessary that the underline idea behind IP protection is remembered, to give necessary protection to the creator, not a monopoly, thus giving others a chance to create further basing on what is already present. Thus, it is the need of the hour to restrict the tendency of excessiveness and harness the IPR regime to its function in order to maintain the flow of creativity in its purest sense.

The foundational philosophy of intellectual property is not to provide monopoly but competitive property rights; to promote healthy competition and lend help to creativity. However, the flurry with which private corporations take over social media with tools like hashtags, can have a cascading effect on rise in litigations. While lawmakers and judiciary must look into easing the chaos on trade mark registers, to restore strength in the IPR regime, a unanimous global decision on the parameters of IPR protection will certainly aid the situation.

 

*Hetvi Trivedi is Research Associate, GNLU-GUJCOST Research Centre of Excellence in IP Laws, Policies & Practices

[1]  Christophe Geiger, The Social Function of Intellectual Property Rights, Max Planck Institute for Intellectual Property and Competition Law Research Paper No. 13-06 (2013).

[2]  David Sillito, Hashtag is “children’s word of year”, available at <http://www.bbc.com/news/entertainment-arts-32902170>.

[3] Claire Jones, Hashtag Trademarks: what can be protected? WIPO Magazine, October 2017 available at <http://www.wipo.int/wipo_magazine/en/2017/05/article_0009.html>.

[4]USPTO, TMEP §1202.18, available at <https://tmep.uspto.gov/RDMS/TMEP/print?version=Jan2015&href=ch1200_d1ff5e_1b5ad_3bc.html>.

[5] Christophe Geiger, The Social Function of Intellectual Property Rights, Max Planck Institute for Intellectual Property and Competition Law Research Paper No. 13-06 (2013).

[6]  Ibid.

[7]  Id., at 5.

[8]  2015 WL 4720478 (CD Cal 7-8-2015).

[9]  2016 WL 7336730 (CD Cal 11-10-2016).

[10] Prashant Dayal, #Trade marked: Why Hashtag Trade marks should stay, available at <https://www.wisbar.org/aboutus/forlawstudents/Documents/Prashant%20Dayal%20-%20Submission.pdf>.

[11]  152 F Supp 3d 549 (ED La 2016).

[12]  2015 WL 1486375 (SD Miss 31-3-2015).

[13]  2016 WL 692866, Case No. D2015-2078.

[14]  Christophe Geiger, The Social Function of Intellectual Property Rights, Max Planck Institute for Intellectual Property and Competition Law Research Paper No. 13-06 (2013).

[15]  Ibid.

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Jayant Nath, JJ., disposed of a suit before it. The suit was filed seeking a decree of permanent injunction to restrain the defendant, it’s partners, employees etc from using the offending trademark KWALTY and/or the offending bottle shape as represented in the plaint and/or any other mark which is deceptively or confusingly similar to the registered trade mark KINLEY and DANUBE BOTTLE shape of Plaintiff 1 as a trade mark or part of a trademark or any other mark to infringe the plaintiff’s trade mark.

The Court noted that Plaintiff 1 is the registered proprietor of the trademarks DANUBE BOTTLE shape, KINLEY and KINLEY (label). The trademark shape was first adopted in 2006 in Turkey and has seen use since 2008 in India. The shape is associated with considerable goodwill and reputation. It was pleaded that the plaintiffs have invested enormous amounts of money towards protection, promotion and advertising of the trade mark KINLEY. The defendant had, apart from copying the shape of the bottle, also adopted a label virtually identical to the KINLEY (label) of the plaintiff.

The defendant was served through publication but had refused to accept service. The defendants were proceeded against “ex-parte”. No one appeared for the defendant and also no written statement was filed. The defendant continued to flout the interim orders passed by the Court and hence, the plaintiffs were declared to be free to pursue any action as per law against the defendant. [The Coca-Cola Company v. Mr. Dwarkanath, 2018 SCC OnLine Del 7406, decided on 15.02.2018]

Case BriefsForeign Courts

Supreme Court of the United States: The Supreme Court of the United States on hearing a matter regarding infringement on designs matters between Apple and Samsung has reversed and remanded the matter back to the Federal Circuit for fresh consideration.

The facts in issue are that Apple in 2011 had sued Samsung for having infringed certain design patents owned by it over its smart phone. The jury found that Samsung had indeed infringed three design patents owned by apple i.e. (a) ‘black rectangular front face with rounded corners’, (b) ‘rectangular front face with rounded corners and a raised rim’ and a (c) ‘grid of 16 colorful icons on a black screen’. Consequently, Apple was awarded damages worth $ 399 million in accordance with Section 289 (which provided for recovery of the total profit made by an infringer from the infringement).

The Federal Circuit confirmed the damages award by rejecting the contention of Samsung that an award for damages under Section 289 should be limited to the ‘Article of Manufacture’ and not the entire smart phone, on the ground that the individual components of apple in the smart phone could not be sold separately to the consumer therefore the profits made by Samsung from the entire smart phone shall be awarded to Apple. The Supreme Court of the United States found fault with the narrow construction of the Federal Circuit regarding the ‘Article of Manufacture’ by holding that even individual components in the final products could be patented. Therefore, the Federal Circuit could not dismiss the claim of Samsung on the ground that the design patents owned by Apple were indivisible from the smart phone. The Supreme Court reversed and remanded the matter by holding that the ‘Article of Manufacture’ is broad enough to embrace both a product sold to a consumer and a component of that product, whether sold separately or not. [Samsung Electronics Co., Ltd., et al. v. Apple Inc., No. 15–777., decided on December 6, 2016]

High Courts

Delhi High Court: In a recent case a major international cosmetic brand, namely, Loreal had filed a suit for permanent injunction on account of trade mark infringement against the defendants who were selling counterfeit products in the name of the said brand, on their internet website www.shopclues.com. While recognising that the plaintiff had built a globally valuable trade mark and acquired immense goodwill, the Court has passed a restraining order against the defendants restraining them specifically from using, manufacturing, marketing, purveying, supplying, selling, soliciting, exporting, displaying and advertising the said trade mark on the online market place through their website or through any other mode.

In the instant case the globally renowned cosmetic brand, Loreal had filed a suit for permanent injunction against the defendant from selling counterfeit products of the said brand over the internet. On account of the alleged trade mark infringement the plaintiff prayed for passing off, delivery up and rendition of accounts against the defendants. Counsel for the plaintiff S. K. Bansal submitted that plaintiff’s trade mark is registered inall major countries of the world and has a globally valuable trade mark with an enormous goodwill and reputation. It was also submitted that the goods and products being sold on the alleged internet website were purchased and sent for verification and were found to be counterfeit.

Taking note of the submissions, the Court viewed that the plaintiff is the registered proprietor of the LOREAL AND LOREAL formative trade marks  and is established in France. It has been using the said trade mark since 1910 and is not only registered in India but in all other major countries as well. It was further concluded that the balance of convenience being in favour of the plaintiff, the instant case is fit for grant of ex parte ad interim injunction. Holding, that if ex parte ad interim injunction is not granted the plaintiff would suffer irreparable loss, the Court has passed the restraining order till 15-12-2014, against the defendants as well as their directors, principal officers, partners, distributors, stockists etc. The Court has also directed that the provisions under Order 39 Rule 3 CPC be complied with, within four days of the date of passing of this order. Loreal v. Brandworld,  ordered on 14-10-2014

Intellectual Property

Supreme Court of United States: In an appeal regarding the infringement of copyright of the television programs by an internet broadcaster which allowed its subscribers to watch television programs over the Internet at about the same time as the programs are broadcast over the air streams, a nine judge bench of the Court held by a 6:3 majority that an internet broadcaster, which telecasts live shows at the same time as the live-show are aired by the broadcasters, ‘performs’ the copyright holder’s work ‘publicly’ within the meaning of the Transmit Clause in the Copyright Act, 1976 and clarified that the text of the Transmit Clause effectuates Legislature’s intent to protect a copyright holder from the unlicensed activities of such internet broadcasters as the same has overwhelming likeness to the cable companies as provided in the said Act and that the sole technological difference between the two cannot be considered to hold that the internet broadcasters do not fall within the purview of Copyright Act, 1976. The Court, holding that the respondent had infringed the copyright of the petitioners, said that it, however, believed that its decision will not discourage the emergence or use of different kinds of technologies. American Broadcasting Cos., Inc. v. Aereo, Inc., No. 13-61, decided on 25 June 2014