Month: June 2022

TRADEMARK, ITS FUNCTIONS AND TYPES

Introduction

The valuable asset that belong to the traders and businessmen which is often associated with the goodwill or reputation of them is known as the trademark. So, a trade mark, or “mark” includes any word, symbol, design, phrase, smell, sound, color, letters, number, or combination of any of these which are employed by the company in order to identify the products or services of the company, and also to distinguish the company’s products and services from products and services of others. The trademark is an indicator of quality of goods and services when the consumer becomes conversant with particular marks. However, marks often are categorized according to the type of identification involved. The field of trademark has undergone a drastic change with the introduction of non-conventional trademark such as fragrance marks, sound marks, flavor marks, feel marks, motion marks. The legislative definitive of mark is given in section 2 (m) of the Trade Marks Act, 1999.

In the case of Andrew v Keuhnrich[1], the court observed categorically the function that is being played by the trademark namely,

(1) Identification of the origin of the product.

(2) Guarantee of quality to the consumer.

(3) Advertising and marketing the products of the trader.

(4) Functions as the symbol of business.

Types of trademarks:

There are different types of marks including work mark, device mark, service mark, collective mark, certification mark etc. which are known as the conventional mark and are detailly dealt with in this article. 

WORD MARK: Wordmarks are the most common type of trademark found in India. A mark is considered to be a wordmark if it contains only texts.

Example of wordmark:

MAHINDRA & MAHINDRA

DEVICE MARK:

The marks that consist of logos, designs, slogans, taglines and drawings are considered to be device marks.

Example of device mark:

SERVICE MARK:

The mark that helps in identification of service of the service provider id considered as the service mark and it may consist of word, phase, symbol and design.

COLLECTIVE MARK:

When the purpose of a mark is to indicate the membership or to differentiate the goods and services of an association or organization from other association or organization then in such instances the collective mark comes into play.

Example of collective mark:

CERTIFICATION MARK:

When a company manufactures goods then it has to go through specific certification process and post the certification process, the goods manufactured if granted certification is said to be certified and the certification mark is given to those goods in order depict that the quality standards are fulfilled so that the general public would be aware of the certification. Such marks which are grated are known as certification mark.

Example of certification mark

Conclusion

Hence, there are different type of trademarks that helps the public in identification of products and services of a company and also acts as an indicator of quality of goods and services of a company. The trademark law in India has undergone huge developments with the upcoming of different marks including the non-conventional marks. The rights are conferred to the owner of trademark only upon registration and any form of unauthorized use of trademark would amount to infringement of trademark.

BY

AISHWARYA. N

 3rd year BA LLB (Hons)

UPES School of Law

[1] Andrew v Keuhnrich (1913) 30 RPC 677.

Can characters be protected under COPYRIGHT?

Introduction

Characters such as Mickey Mouse, Mr. Bean, James Bond, Harry Potter, and others have become a part of our everyday life. These characters have sufficiently entered our lives, from watching them on television every day to bringing merchandised products of our favorite characters into our homes. These characters develop from episode to episode and series to series, and this development is brought about by the writers of such characters. Unfortunately, copyright laws all around the world do not recognize characters as the subject matter of copyright, but judicial decisions all over the globe have established a few tests to reward copyright protection to characters.

  • Character Delineation Test

The character delineation test was established in the case of Nichols v. Universal Pictures Corp[1], the court held that the characters can only be protected under the scheme of copyright if they are sufficiently delineated. The test prescribes that the character has to be developed sufficiently and the more developed the character, the more it embodies expression, and less a general idea. And hence, the more likely it is to be copyrightable.

  • The ‘Story Being Told’ Test

The story being told test was established in the case of in Warner Brothers Pictures Inc. v. Columbia Broadcasting System., the court held that ‘No character is protectable under the copyright law unless such character is extremely well-delineated as to form the ‘story being told’ rather than being a mere chess man in the game of telling the story’.[2] Simply said, this test requires that the character be an integral component of the story. The character must be so ingrained in the plot that eliminating the character renders the story irrelevant.

  • Towle Test

The Towle test has been developed in the case of D.C. Comics v. Towle, under this test, a character is entitled to copyright protection if (1) the character has “physical as well as conceptual qualities,” (2) the character is “sufficiently delineated to be recognizable as the same character whenever it appears” and “display[s] consistent, identifiable character traits and attributes,” and (3) the character is “especially distinctive” and “contain[s] some unique elements of expression.”[3] This test has been successfully applied in the recent case of Daniels v. Walt Disney Co.[4]

Conclusion

Other than these requirements, there is no other means for a character to receive copyright protection, and meeting each of the aforementioned conditions appears difficult to achieve. The characters are the outcome of artistic works, and as such, they must be listed separately as the subject of the copyright.

BY

Ekta Dixit

LLM (IPR & Tech Laws)

JINDAL GLOBAL Law School

[1] Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930)

[2] Warner Bros. Pictures v. Columbia Broad. Sys., 216 F.3d 945 (9th Cir. 1954)

[3] DC Comics v. Towle, 802 F.3d 1012 (9th Cir. 2015)

[4] Daniels v. Walt Disney Co. – 958 F.3d 767 (9th Cir. 2020)

Territoriality OR Universality ? : Trans-Border Reputation of Trademarks

INTRODUCTION

According to the territorial principle of intellectual property, intellectual property is territorial in nature and is only protected in the country where it was registered. This is why inventors and entrepreneurs want to file their patents in many countries. However, because trademark registration is not mandatory, the same brand is frequently used in multiple countries by different businesses. When a trademark enables the public to identify the source of a product, it is said to have a reputation in the market. However, the reputation of a well-known mark knows no borders, and many businesses enjoy recognition not only in the country in which they are registered, but also in other countries. This concept of trans-border reputation is based on the principle of universality, which states that because a trademark is recognized throughout the globe, it should be protected in all countries where it has gained such popularity. A mark is considered to have achieved a trans-border reputation if it is so well-known that it is recognized by the general public worldwide. In any trademark dispute involving transnational repute, the court is most concerned with the breadth of the evidence presented in support.

JUDICIAL DECISIONS IN INDIA

One of the earliest cases involving the issue of trans-border reputation in India was William Grant & Sons Ltd. v. Mcdowell & Company Ltd., [55 (1994) DLT 80], in which a single judge bench of the Delhi High Court determined that plaintiff’s GLENFIDDICH whiskey had acquired trans-border reputation in India through duty-free sales in India, advertisements in Indian magazines, and other forms of advertising.

Later in the case of N.R. Dongre and others v. Whirlpool Corporation and Anr., [1996 AIR SCW 3514], the Indian Supreme Court held that trademark protection can be granted on the basis of trans-border reputation, even when knowledge of the product is solely disseminated through media and advertisements, without the product having any physical presence or use in the Indian market.

Until 2017, Indian courts traditionally applied the universality principle in evaluating a brand’s trans-border reputation in India. In 2018, the Supreme Court gave a historic decision that has formed a precedent for many future cases involving determining trans-border reputation.

The Supreme Court issued its decision in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. and Ors., [AIR 2018 SC 167], widely known as the Prius case. Based on international precedents, the Supreme Court determined that a foreign mark’s widespread reputation around the world is insufficient to prove that the mark has likewise developed substantial goodwill in Indian Territory. The Supreme Court ruled that advertisements in various magazines and information available on internet websites were insufficient to establish the plaintiff’s mark’s reputation and goodwill in India, because internet use was not widespread enough in the early 2000s for the public to be aware of Toyota’s car launch.

WAY FORWARD

The Prius decision has been a shield for many Indian businesses because big foreign brands used to be a danger to Indian businesses even if they did not have any operations in India and just because they were well-known in other nations. The Indian courts’ approach has shifted from universality to territoriality, and the courts specifically decide the trans-border reputation in India whether the brand has earned such a reputation in India and not otherwise.  Recently, in 2020, the Delhi High Court utilized the Prius precedent in a case of Keller Williams Realty, Inc. vs. Dingle Buildcons Pvt. Ltd. & Ors [CS(COMM) 74/2019].

BY

Ekta Dixit

LLM (IPR & Tech Laws)

JINDAL GLOBAL Law School

SOCIAL MEDIA & PRIVACY

Introduction

Part II of the Information Technology Rules 2021 (hereinafter referred to as the ‘IT rules 2021’) lays down the due diligence and grievance redressal methods to be undertaken by these intermediaries. Within this arises concern of breach in end-to-end encryption that intermediaries guarantee to their users. End-to-end encryption is also legally recognized and protected under Section 84A of the IT Act, 2000.

Requiring messaging services to enable the identification of the first originator of information on its platform may adversely affect the privacy of individuals

With the rising data privacy concerns, these encryptions have been ensured by and strengthened on various platforms like WhatsApp and Facebook Messenger. Rule 4, sub-rule (2) of IT Rules, 2021 directs “significant social media intermediaries” to have a mechanism in their interface that would allow identification of the “first originator” of certain messages (information) which have the capability of “disrupting public order”, and even those that are against the sovereignty and integrity of the country or defamatory in nature. Such information can then be provided on a request made through a judicial order passed by a competent court or through an order passed under Section 69 of the IT Act, 2000. One of the problems with authorizing the Government to access the information regarding “first-originator” of a message is, the breach of end-to-end encryption. For a message in order to trace a message, decryption is a prerequisite, and allowing such decryption violates the encryption policy of platforms like WhatsApp, Signal, and Messenger. Enabling traceability in any manner which is compatible, has been previously dismissed on account of being susceptible to spoofing which means providing unauthorized access to outsiders or even the government itself. This raises severe concerns regarding user-privacy and their sharing of content on such platforms after the implementation of the IT Rules, 2021. Provision is that it is visibly conflicting to its parent legislation, the IT Act 2000. Section 84A of the IT Act, 2000 empowers the government to provide encryption methods which mean that it helps “secure” the use of electronic medium. Contrary to this, the IT Rules, 2021, through Rule 4(2), provide for the weakening of such encryption, violating the purpose laid down in the IT Act, 2000. Thus, such handicapping of encryption which is guaranteed by intermediaries is indeed problematic and hence raises legislative concerns.

Conclusion

Therefore, the country has an obligation to ensure that its laws and policies do not flagrantly violate the freedoms enshrined in ICCPR. However, certain provisions of the new IT Rules purport to create an ecosystem where the right to exercise freedom of speech in the digital space, a freedom guaranteed under ICCPR, would be seriously jeopardized.

BY

Mansi S Bhavsar

5th Year B.A. LLB

Dr. D. Y. PATIL LAW COLLEGE, Pune