Category: TRADEMARKS

Counterfeiting Vs Trademark Infringement

Counterfeiting and Trademark infringement is often confused with being one and the same. While both counterfeiting and Infringement of trademarks are related to each other they are not identical. It can be said that: “All counterfeiting of marks is trademark infringement however not all infringement of trademarks is counterfeiting.”  Counterfeiting is a narrower concept under trademark infringement.

Both Infringement and counterfeiting are problems that can hamper the economy. They jeopardize the competitive position of companies in the global hemisphere. Companies that engage in counterfeiting and infringement of the Trademarks of others gain huge profits by negatively affecting the business of other companies who are honestly creating their goodwill and reputation. Counterfeit products also pose a threat to consumer health since they are made without proper supervision and don’t follow compliance. A good understanding of Counterfeiting and Infringement and their differences can help us in combat the spread of these goods.

What is Counterfeiting in the context of IPR

The Indian Trademark Act, 1999 doesn’t define counterfeit therefore we look towards the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement and legal dictionaries for counterfeiting definition.

  1. The Trade-Related Aspects of Intellectual Property Rights (TRIPS) defines counterfeiting as:

“Counterfeit trademark goods” shall mean any goods, including packaging, bearing without authorization a trademark which is identical to the trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trademark, and which thereby infringes the rights of the owner of the trademark in question under the law of the country of importation;

  • Webster’s New world law dictionary defines counterfeiting as:

To copy or imitate something without the right to do so and with the intent to deceive or defraud by representing the copy or imitation to be the original or to be genuine if no original ever existed.

The common elements that can be derived from these definitions are that Counterfeiting is the creation of an identical good in order to deceive or defraud the purchaser of the good.

What Is Infringement Under the Indian Trademark Act?

Section 29 of the Indian Trademark Act,1999 defines Infringement of the Trademark. According to this section, “A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and, in such manner, as to render the use of the mark likely to be taken as being used as a trade mark.”

Violating the exclusive rights of the registered owner of trademarks without their permission is called Trademark Infringement. There are many ways of infringing an owner’s trademark which include, creating a mark similar or identical to the registered mark to create confusion in the minds of the general public of its association, or using the registered trademark’s name or part of it in the infringing mark in the same goods and service, etc. These methods of identifying trademark infringement are also listed in Section 29 of the Trademark Act,1999.

Difference Between Counterfeit Marks and Infringing Marks

A counterfeit mark is indistinguishable from the original or genuine mark. Infringing marks are considered confusingly similar to the genuine mark or original mark. This means that infringing marks might either be exactly identical to the genuine mark or it might be a mark that is being used in such a way that leads to confusion, deception or misunderstanding about the actual source of the Trademark. Counterfeiting also includes copying the packaging, instructions, stickers, etc of the original product. Counterfeit Products are very difficult to distinguish from the original products because even the essential features of the goods are copied to be exactly the same.

The remedies available for counterfeiting and trademark infringement also vary. Counterfeiting of a mark is punishable under the Indian Penal Code and is a cognizable offense. In the case of the Infringement of a Trademark, civil remedies in the form of injunction and damages can be sought by the registered owner.

The mere existence of counterfeit products is proof enough to bring legal action against the defendant. While in Infringement the plaintiff is required to prove that any other mark is deceptively similar to their mark to the extent that they can create confusion in the mind of the average person and that the defendant is not a registered owner of the mark and neither has permission from the registered owner to use the mark. Hence, the burden of proof is much more strict in cases of counterfeiting.

BY-

SHAKSHI SWARNKAR

2 YEAR LLB

ILS LAW COLLEGE, PUNE

TRADEMARK: BULLYING IN THE NAME OF PROTECTION

TRADEMARKS

Trademark protection is given to protect and safeguard the marks which are exclusively used by a particular entity to sell its goods or services under its name. These marks help the entities in differentiating their goods and services from that of others. But unfortunately, some powerful entities have gone beyond their legal rights of defending their marks and bullying the weaker entities. 

TRADEMARK BULLYING

We say that trademark bullying has happened when a bigger entity that is generally registered under the Trademarks Act, 1999 threatens or tries to threaten the other entities which may be smaller in comparison, and generally unregistered by sending them to cease and desist notice on unreasonable grounds. The bigger entities in such a case try to threaten the smaller entities by creating a fear of suing the smaller entities in claims of infringement of the trademarks of the bigger entities. 

Most of the time the companies which are involved in trademark bullying are large companies that have well-known marks registered and are not bothered about huge money getting spent on litigations. These large companies are aware of the fact that the smaller companies neither have sufficient resources nor are economically well off, which restrains them from pursuing against the bigger companies. The smaller entities even though may have a legitimate case in most of the cases tries to avoid the legal hassles as they are overpowered by large entities in terms of resources and money. 

TRADEMARK BULLYING IN INDIA

In India trademarks are protected by the Trademark Act, 1999, and we are lucky enough to have provisions under this act to help the smaller entities from getting bullied by the bigger entities.

Section 142 of the Trademark Mark Act, 1999 protects the smaller entities from the larger entities when these bigger entities initiate a baseless infringement proceeding just to overpower the smaller entities.

Section 142 of the trademark act, 1999 states that:

“1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trademark 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.”

We have provisions for bullying not only in the Trademark Act but also in the following acts:

  • Patent Act of 1970,
  • Copyright Act of 1957, and
  • Designs Act of 2000.

The aggrieved party can file a suit against the other party who threatens or bullies for a trademark under the provisions of section 142 of the Trademark Act, 1999, and can seek an injunction and monetary compensation. The trademarks which are eligible for this are only registered trademarks.

HOW IS IT DEALT JUDICIALLY?

Whether bullying has taken place in trademark would depend from case to case and would be decided by the courts by keeping all the situations and circumstances in mind.

In the case of Bata India Limited vs VitaflexMauch GmbH[2015], a lawsuit was filed by the plaintiff against the defendant in which the plaintiff wanted to restrain the defendant from issuing threats of legal proceedings on baseless grounds. Here the main questions were whether the notice which was issued by the defendant to the plaintiff contained any baseless legal threat and should the plaintiff be entitled to any damages or injunction for this. The Delhi High court held that the threats were made by the defendant to the plaintiff and were unreasonable. Therefore, the court issued an order against the defendant by restraining the defendant from issuing any further false threats.

Although India has a framework for protecting smaller entities from groundless, unreasonable, or baseless threats, there is no statute that would precisely define as to what would constitute a groundless, unreasonable, or baseless threat. However, some parameters such as the first user over the first one to file, deceptively similar which can cause confusion… etc. are used by courts to determine whether or not trademark bullying has occurred.

CONCLUSION

Thus, with this, we can conclude that there is a lack of clarity in the law with regard to what exactly constitutes trademark bullying as trademark bullying happens when an entity threatens the other entity with legal proceedings on unreasonable, baseless grounds. The smaller entities have to depend upon the fewer precedents to justify their contentions.

To make the law more efficient the term trademark bullying can be defined under the Trademarks Act, 1999, or the Trademark Rules, like the USPTO report. Also, under section 142 the terms baseless and groundless can be given more clarity so that courts can take decisions more efficiently. 

BY-

SONALI JUYAL

2ND YEAR LLB,

ILS LAW COLLEGE, PUNE

Film Titles and Trademarks

The advent of the digital age and new-age technologies has increased the accessibility of people to films. Movie theaters are longer the only way to release a film for the masses. OTT platforms have been a game changer in the film and visual entertainment industry across the World. And no doubt, India is in no way far behind. The streaming and OTT apps have seen a spurt of growth in the Indian market and with this has come an increase in the amount of content coming from these OTT platforms in the form of movies, web series, and other content. With this comes the question as to how to protect these movie names from being used by someone else.

The title of a film is used to identify the work as a whole. Titles are important, especially from a marketing standpoint, because they capture the audience’s attention, set the tone for movies, and maybe give them a recall factor. The famous Sholay and Avengers are two memorable movie titles. Given the brand and recall value that a title might generate, one may interpret it as his/her intellectual property, making it critical to protect it against unlawful exploitation by others.

The question is, what are the various kinds of protection accessible to a film title in India?

Types of Protection available.

Registering a film title with entities like The Indian Motion Pictures Producers Association (IMPPA), the Film and Television Producers’ Guild of India, the Association of Motion Pictures and Television Programme Producers (AMPTPP), and the Western India Film Producers’ Association(WIFPA) is standard procedure in the film industry. Before registering a title, an association will typically perform a thorough search with other associations to determine if the same or a deceptively similar title has already been registered with one of the other associations. Only members of an association can typically apply for title registration with that association. Though this appears to be straightforward, the problem is that registration with societies and groups is not legally binding.

On the other hand, while the entire production of the movie along with its script, dialogues, songs, and music may be copyrightable under the Indian Copyrights Act, of 1956, such protection is not afforded to the title of a film. Trademark law, however, does offer some protection in this regard. Film titles can be trademarked as service marks under class 41 of the Trademark Rules 2001. Class 41 of the Rules deals with, among other areas, entertainment. This however comes with certain conditions.

Classification of Titles and degree of protection

There can be generally two types of Film Titles, one that is one of a long series of movies, eg. Dhoom, Golmaal, Avengers, etc., and standalone films, eg. Sholay, Swades, Inception, etc. The Indian Judiciary has consistently reiterated that it is much easier to get a registration for movie titles of the former type than of the latter type. Film Titles of series Films become easily eligible for registration as a Series Mark as defined under section 15 of the Trademark Act.

However, things are trickier for the titles of Standalone Films. In such cases, courts have ruled that it is required to demonstrate that such names have acquired secondary meaning. The Delhi High Court highlighted a few elements that would be significant in determining whether secondary meaning may be assigned in the case of Kanungo Media (P) Ltd. v. RGV Film Factory[1], namely:

  • Continuity and Length of use
  • The degree of advertising and promotion along with the amount of expenditure incurred,
  • The sales figures of the number of Theater admissions, sales, and the number of people who purchased or viewed the work. 

In the case of Sholay Media and Entertainment Pvt Ltd. v. Parag M. Sanghavi[2], a film by “Ram Gopal Verma by the name “Ram Gopal Verma ke Sholay ” was barred from release by the Delhi High Court due to trademark and copyright infringements in regard to the cult classic Sholay. After a series of hearings, the Delhi High Court granted an ex parte injunction to prevent the defendants from violating the plaintiff’s rights and recognized the rights in the title of the picture, The defendant offered an undertaking that it would not violate the plaintiff’s rights.

In the case of Biswaroop Roy Choudhary v. Karan Johar[3] the court ruled against the plaintiff who had a trademark registration under class 41 by the name “Kabhi Alvida Naa Kehna” and refused an interim injunction against the defendant’s name by the same name. The Delhi High Court opined that the defendant was an actual user of the mark despite of not having a Trademark registration. Thus actual usage along with fame and marketing expenditure was held as more important than mere registration.

Conclusion

From the above discussion, it is clear that getting a registration for a title of a film series is much easier than a standalone film. The court’s behavior, however, in regards to standalone films gives a huge undue advantage to large production houses over small filmmakers as was seen in the “Kabhi Alvida Naa Kehna” case. There should be more consideration put towards the interests of small independent filmmakers so that they are not left in deep water by the court’s decision.

Written By-

Sauradip Mukherjee

2nd Year, LLB

ILS Law College, Pune

[1] 2007 (34) PTC 591 (Del)

[2] CS (OS). 1892/2006

[3] 2006(33)PTC381(Del)

The Google AdWords program and its Impact on the Registered Trademarks in India

Introduction:

With the Indian economy going towards digitalization and with the advancement of technology more and more companies in India are going digital and here internet plays a significantly important role because companies are establishing their online presence and are shifting from the old school advertising methods to the modern-day internet and social media-based advertising methods. One such modern-day advertising method is the google Adword program which allows advertisers to display their ads on googles’ search engine result page simply by choosing a keyword that relates to their business and bidding for the same. It is a pay-per-click advertising service where the advertiser pays only when a visitor clicks on his ad.

Illustration: If a company is involved in making mobile phones, then the company can select the keywords ” mobile phones” and bid for the same on the Google AdWord platform. Once the keyword is listed with google, then whenever a visitor searches the words ” mobile phones ” the ad of the advertiser comes on top.

The Issue:

The use of the Google Adword service imposes an imminent threat on the registered trademarks of businesses as a registered trademark can be used as a keyword by any third party to link its website and advertise its goods and services. The above issue not only confuses the minds of the customers but also negates the main purpose of the trademark which is to reduce confusion and doubts about a particular brand among prospective customers. Further, it also causes a risk of trademark infringement under sections 29 (7), (8), and (9) of the Trademark Act 1999.

With the increase in competition in trade and business, the above issue has become very common in the modern-day scenario. Often Companies use the Trademark of their competitors as Keywords in google Ads to boost their revenue and encash the competitor’s goodwill. Unfortunately, such practices are not regulated and there are no specific cyber laws to prevent the doing of such practices.

Judgments & Court Orders:

  • In the recent case of M/S Drs Logistics (P) Ltd & Another vs Google India Pvt Ltd & Anr on 30 October 2021, the plaintiff prayed to restrain google and other third parties from using its registered trademark as a keyword in the google Adword program. The Hon’ble Delhi High Court, in this case, held that “the keyword even if assumed to be invisible, directed internet traffic to the website of the competitor thereby confusing the minds of the prospective customers about the origin of the webpage. “The court further implied that the practice of using a registered trademark by any third party as a keyword in google Ads would amount to infringement and passing off.
  • In the recent case of MakeMyTrip India Private Limited vs Booking.Com B. V & Ors. on 27 April 2022, the Hon’ble Delhi High Court stated that the hidden use of the trademark in metatags and a source code also amounts to infringement. Defendant Booking.com was held liable for passing off Plaintiff’s mark and it was also held that even the invisible use of a mark as a keyword could constitute passing off. Further, the Hon’ble Delhi High Court restrained the defendant Booking.com from using the mark “Makemytrip” as a keyword on Google Adwords.

Justice Prathiba M. Singh observed that “Google Ads creates a situation where a trademark proprietor is being forced to bid for its trademark for the advertisement of its goods and services.”

“It is unethical of Google to encash upon the goodwill and reputation of brands by allowing their competitors to use their registered trademarks as keywords in Google Ads,” said Sijo Kuruvilla George, the Executive Director of the ADIF.

Conclusion & Recommendations:

The google Adword program may be an effective and economical advertising option but the risk of trademark infringement through this program still subsists and is a very major problem in the modern-day scenario. Currently in the Indian Scenario improvement in the protection of Intellectual Property Rights and the introduction of cyber laws is the need of the hour. Further, an AI-based system shall be implemented by google where the use of a registered trademark by a third party is automatically detected and prevented.

BY

Yogesh Somani

1st LLB Student

ILS Law College, Pune

What are the Privileges that a Well-Known trademark enjoys?

As its name suggests, a well-known trademark is a mark that is recognized by the majority of the world’s population and whose reputation is not limited to a specific geographic region or category of goods or services but is known worldwide. A well-known trademark is defined under section 2(1) (zg) of the Indian Trademark Act, 1999. It states “a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of the such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.”[1] The Indian Trademark Registry publishes a list of all well-known trademarks in India, and twenty new trademarks were just added to this list in the trademark journal dated 15th August 2022, including SWIGGY, PAYTM, MAGGI, and NOKIA.

Furthermore, a trademark can be considered as a well-known trademark if it fulfills the criteria mentioned under section 11(6) of the Act. These determining factors includes—

  • That the trade mark is well known to the public at large in India;
  • The number of persons involved in the channels of distribution of the goods or services;
  • The number of actual or potential consumers of the goods or services;
  • The duration, extent and geographical area of any use of such trade mark;
  • The business circle dealing with those goods or services.[2]

As previously stated, the title of a well-known mark does not come easily, and when it does, it comes with a number of advantages as listed below:

Even if the nature of the goods and services are different, no identical mark (as a well-known) can be accepted.

It is a well-known notion of the Trademark law regime that a similar mark might seek registration even if such mark already has an identical registered mark in a different class of products and services. However, with a well-known mark, no one can request to register a similar mark in any of the NICE classes.

In the landmark case of Daimler Benz Aktiengesellschaft & Anr v. Hybo Hindustan[3], The Plaintiff was a manufacturer of Mercedes Benz automobiles, whereas the Defendant sold underwear under the mark BENZ. The underwear belongs within NICE class 25, which is distinct from the plaintiff’s products and services, which deal with automobile production. However, while acknowledging the fame of the plaintiff’s mark, the court prohibited the defendants from utilising the name ‘BENZ’.

An exception to grounds of refusal

A well-known trademark is always exempt from objections under sections 9 (absolute grounds of registration) and 11(relative grounds of refusal). Section 9 of the Act, for example, prohibits the registration of a family name or a geographical location name because these names cannot distinguish the products and services from those of others. On contrary, taking the example of trade names MAHINDRA & MAHINDRA[4] and TATA & SONS[5] or taking the example of INDIA GATE and DELHI PUBLIC SCHOOL exemplifies the advantageous position of a well-known trademark.

Easy registration even if the mark is unconventional

Most unconventional trademarks that have been registered in India have achieved so on account of their renown. In registering an unconventional trademark, the applicant’s goodwill and well-knowingness of the mark are essential. For instance, protecting a single color trademark in India is difficult, but the Delhi High Court has protected the ‘red sole’ of Christian Louboutin heels.

BY- EKTA DIXIT

JUNIOR ASSOCIATE AT BASKARAN & ASSOCIATES

[1] Section 2(1)(zg), Indian Trademark Act, 1999

[2] Section 11(6), Indian Trademark Act, 1999

[3] AIR 1994 Del 2369

[4] 2002 (24) PTC 121; CS (OS) 921/2013; Suit No. 2061 of 2012

[5] 2001 PTC 562

HOW ARE UNCONVENTIONAL TRADEMARKS REGISTERED IN INDIA?

How are Unconventional Trademarks registered in India?

Introduction

Unconventional Trademarks, also known as non-conventional or non-traditional trademarks, as the term implies, these trademarks meet the standard criteria for a trademark yet deviate from the typical conventions established by trademark legislation. These marks are not limited to words, symbols, names, devices, packaging, or color combinations, but also include three-dimensional marks, sound marks, motion marks, hologram marks, and slogans, as well as touch, smell, and taste marks. The Indian Trademark Act, 1999, defines a trademark as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colors.”[1] The fact that the definition in the Act makes reference to the necessity of graphical representation and the capacity to distinguish between similar marks makes it abundantly evident that registration of unconventional trademarks is restricted.[2]  On the other hand, the latter half of the definition discusses the potential for obtaining shape marks and color marks under the purview of the registration. This article will further discuss the process of registration and the legal stance of unconventional trademarks in India.

  • Shape Marks

The shape of the goods mark helps protect the shape of such products whose shape has reached a particular distinctiveness and popularity to such an extent that the general public may recognize the product because of its shape. The shape of the goods is the unconventional trademark that is the most widely recognized in India. This is due to the fact that the shape of goods is mentioned in the definition of a trademark, that it can also be represented graphically, and that it has the ability to differentiate the goods and services of one business from those of other businesses. However, the limitation on the use of shape marks can be found in subsection (3) of section 9 of the Trademarks Act of 1999. In addition to this, the fact that the ‘shape of good’ option is available when filling out an application for trademark (TM-A) registration in India demonstrates that shape marks can be registered in India by providing a two-dimensional graphical image of various angles of the product in order to make the trade dress comprehensible.

  • Color Marks

As discussed previously, the definition of a trademark under the Trademarks Act of 1999 allows a “combination of colors” to be registered as a trademark. In addition, even section 2(1) (m) includes “color combination” in the definition of “mark.” The Act does not prohibit the registration of color marks exclusively, nor does it permit the registration of a single color as a trademark. According to the proposed Trademarks Manual, a single-color trademark may be registered provided it is uncommon and distinctive in trade, is recognized by customers, and acts as a mark of origin for such products and goods. The TM-A application allows for the filing of a color trademark, although this option is generally subject to refusal under section 9(1)(a), which stipulates that trademarks that lack distinctiveness, are incapable of distinguishing the goods or services of one person from those of another, cannot be registered.[3]

  • Sound Marks

The sound marks are currently going through the same registration process as any other conventional mark in India. The ‘sound mark’ is one of the several types of trademarks that can be filed for using the TM-A application. The Trademark Rules, 2017 [Section 26 (1)(iii)(ii)] require that a sound mark that is seeking registration be presented in an MP3 format with its length not exceeding 30 seconds, in addition to a graphical representation of the particular mark that is comprised of musical notations.[4] The acceptability of a sound mark is contingent on whether or not the sound is already so extensively distinctive that a customer would link the sound with the goods or services of only one proprietor, or whether or not the sound is becoming increasingly broadly distinctive.

  • Motion Marks

The Trademark Act of 1999 makes no mention of a motion mark in its provisions. The draft manual for trademarks and the rules governing trademarks both remain mute on the subject. The ‘CONNECTING HANDS’ mark owned by Nokia was the first motion mark to be submitted for registration under registration No.1246341.[5] It is possible to obtain motion marks registered in India by simply giving a sequence of images that illustrate the step-by-step motion of the mark,[6]Nevertheless, a motion mark in its most literal sense cannot be registered in India.

  • Smell Marks

The majority of the time, India adhered to the standards established by the Europe Union, including the requirement of graphical representation. On the one hand, the requirement has been eliminated from the European Trademark law, making it easier for unconventional trademarks to obtain registration.[7] On the other hand, when it comes to smell and olfactory marks, there has yet been no significant change in India. The possibility of obtaining a smell mark registered by writing down the chemical formula for a smell still seems to have a low probability, and there has been no attempt made to do so up to this point in time.

  • Taste Marks

In the same vein as the olfactory marks, the likelihood of successfully registering a taste mark in India is quite low. This is due to the fact that putting a description of a taste into writing does not meet the requirements of graphical representation. It would contradict the objective of a trademark, which is to assist customers in determining the source of a good or service, if the description might be interpreted in a variety of ways by different customers.

  • Other Unconventional Marks

The texture/touch mark and the hologram mark are the two types of marks that receive the least amount of attention in Indian law. It is impossible to graphically represent the texture marks because they are based on the feeling that a person gets when touching a product, and hologram marks need to be viewed from specific angles in order to understand their distinctive character. As a result, they may not be easily depicted in trademark applications because it is difficult to see them from those angles. When it comes to these two marks, there is almost no data accessible, and the odds of getting registered for the same are close to nil in India at this point in time.

BY- EKTA DIXIT

JUNIOR ASSOCIATE

BASKARAN AND ASSOCIATES

[1] Trademarks Act, 1999

[2] Lakshmikumaran & Sridharan Attorneys, available at https://www.lakshmisri.com/insights/articles/unconventional-trademarks-a-roadmap-to-the-future/#  [ Accessed on 2nd June 2022]

[3]  Indian Trademarks Act  1999, Sec 9(1)(a)

[4] Ibid

[5] Trademark Number 1246341 in class 99 dated 28/10/2003 by Nokia Corporation from Trade Marks Registry India

[6] Hardik Choudhary, ‘Are Motion Trade Marks Protected?’ ALG Offices India ( May 2021) https://www.algindia.com/article-is-a-motion-mark-protected-in-india [ Accessed on 26th May 2022]

[7] Sikhar Sinha & Kunal Gopal, ‘Tracing The Jurisprudence Of Smell Marks As a Trademark’  (2017)  HNLU Student Bar Journal Volume III, ( 61-69) https://hnlusbj.files.wordpress.com/2016/11/tracing-the-jurisprudence-of-smell-marks-as-trade-marks.pdf [ Accessed on 5th May 2022]

TRADE SECRETS

A trade secret is confidential data or confidential information that relates to business and is generally kept as a secret by the owner. These are kind of information that pertains to certain commercial value and commercial gain to the owner[1]. In the case of Coco v AN Clark Engineers Ltd[2], it was held that the kind of information which will be protective must not be something in public property and public knowledge. For any information to qualify as a trade secret it must qualify the following elements

  • The information which is not known to the general public and is not readily accessible rather it must be restricted to a limited number of people.
  • Reasonable measures are taken by the owner to maintain the confidentiality of the information.  
  • The information must be of scientific, technical, and related to useful arts or business.
  • The information must be associated with economic benefit to the owner’s right and provide the owner of information with commercial gain and this aspect becomes lost when the information is revealed.

The TRIPS agreement refers to the trade secret as ‘undisclosed information’. The trade secret can range from any technical, scientific, and financial information. Some examples of trade secrets can be formulas for drugs, chemicals, cosmetics, foods and industrial processes, and manufacturing techniques.

The formula of coca cola is the most famous example of a trade secret that is protected in a bank vault in Atlanta and is only accessible only when the board of the company passes a resolution. It remains known only to two employees of the company at the same time and they are not even allowed to fly in the same plane.

In the case of Bombay Dyeing & Manufacturing Co Ltd v Mehar Karan Singh[3], it was observed by the court that information such as formula, pattern, compilation, programme, device, method, technique, or process, which derives an independent economic value from not being known.

In today’s business world, there is a huge concern underlying protecting certain information confidential and for the same, there are efforts being made along with tremendous investments. Thus, the law guarantees enforcement of trade secrets with an object to make good the loss which is suffered by the owner as a result of unauthorized exploitation of trade secrets.

BY- AISHWARYA N.

4th YEAR, UPES LAW SCHOOL

INTERN AT BASKARAN AND ASSOCIATES LLP

[1] Sreenivasulu NS, Intellectual Property Rights, Second Revised and Enlarged Edn, 2011, Regal Publications, New Delhi, p 160

[2]Coco v AN Clark Engineers Ltd (1969) RPC 41.

[3] Bombay Dyeing & Manufacturing Co Ltd v Mehar Karan Singh 2010 (112) Bom LR 3759. 2010 (112) Bom LR 3759.

OBSCENITY REGULATIONS IN INDIAN TRADEMARK LAW

Law Relating to Obscenity in Trademarks

The Trade Marks Act, 1999

Section 9(2)(c) of the Trade Mark Act, 1999 prohibits the registration of marks that indicate or contain lewd or scandalous material. There shall be nothing incompatible with the moral standards of society. Considering cultural standards that prohibit the use, indication, or depiction of anything offensive or scandalous when selecting a mark is essential.

The trademark at issue in Ghazillian’s Trademark Application consisted of the two words “Tiny Penis” in class 25 for apparel, footwear, and headwear. The Registrar denied registration on the grounds that the mark violated prevailing moral standards.

The Draft Manual of Trade Marks

The Draft Manual of Trade Marks states the following:

  • The manual defines “Scandalous marks” as those marks which are “likely to offend the accepted principles of morality”.
  • A mark that is deemed prima facie to be obscene shall be refused.
  • What falls within this category of marks shall be marked which could by their very nature induce public disorder, or incite criminal or other offensive behavior
  • If a mark may be categorized as being merely “distasteful” then an objection u/s 9(2) (c) cannot be sustained. However, if the mark is deemed to be such that it would be deleterious to religious, family, or social values then an objection and subsequent refusal is probable.
  • The outrage which may result from the usage of the mark must emanate from an identifiable section of the general populace of the country.

A mark that is deemed vulgar or racially insensitive shall not be tolerated regardless of the target audience of the goods/services which bear the trademark. However, when it comes to prospective scandalous marks, the objection to the trademark may depend on the target audience. For e.g., a mark that may be deemed scandalous will certainly face objection if it is placed on goods/services aimed toward children. However, the same mark may not be objected to if the goods/services are aimed at adults. Objections should be raised against explicit full frontal nudes and offensive (scandalous) back views.

Examples of marks that may consider objectionable under this Section –

  • WHITE DOVE YOU DON’T NEED WINGS TO FLY[1]

This mark shall be contrary to public policy since the words “White Dove” are a euphemism for a drug and as such the use of this trademark would be construed as a promotion of drug use which is contrary to law and the public policy of the nation.

  • SNUFF MOVIES

The Mark contains terms that hint toward pornography and as such the usage of the mark will be contrary to the public policy of India.

TESTS OF OBSCENITY

  1. Hicklin Test (superseded by contemporary standards test) – The Hicklin’s test in order to determine whether a work is obscene or not proposed the interpretation of the work by isolating the alleged obscene parts of the work, severing them from the work as a whole and interpreting them in an isolated manner and determining what effect the isolated passages may have on the weakest readers such as children. Hicklin’s Test does not give comprehensive results by failing to consider a holistic perspective.
  2. Test of Contemporary Standards

The test of contemporary standards states that the work must be interpreted as a whole and that the alleged obscene parts are not severable. They must be read in the overall context of the work. The standard for judging obscenity shall be that of a reasonable, prudent member of society.

JUDICIAL PRONOUNCEMENTS

  • Samaresh Bose v. Amal Mitra[2] An impartial evaluation of any book, story, or article may lead a puritanical and conservative judge to declare it to be obscene. If another judge were to judge the same book objectively and from a different point of view, he or she might not find it to be obscene.
  • Aveek Sarkar v. State of West Bengal[3] A photograph of a nude or semi-naked woman cannot be deemed offensive in and of itself unless it has the potential to elicit strong emotions or make explicit sexual desires clear. Depending on the specific position and setting in which the nude or semi-naked lady is shown, the image should be suggestive of a depraved mentality and intended to arouse sexual excitement in those who are likely to view it. Only sex-related items that have a propensity to excite amorous thoughts can be considered obscene, although obscenity must be assessed from the perspective of the typical person by using current social norms.
  • S Rangarajan v. P Jagjivan Ram[4] The court ruled that the criteria to be used to evaluate a movie for obscenity should be from the perspective of a sensible, reasonable member of society rather than a hypersensitive human. Even if the issue involves movies, testing obscenity is the main component.

However, despite all these regulations and the vigilance of the Trade Mark Registry, certain questionable trademarks do slip through. Here is a recent example of the same:

The trademark which has been quoted is a recent one as can be ascertained by the date. The screenshot has been taken from the Trade Marks Journal. The trademark includes the word “bust” which is another word for breasts and conveniently includes a graphic image of women’s breasts in the device mark. Such a mark though may seem to be scandalous at first. However, it may as well be categorized as being merely distasteful if the remarks in the Draft Manual of Trade Marks are taken into consideration.

CONCLUSION

There is a grey area with respect to obscenity in the realm of trademark law. While there exist statutory provisions, their interpretation or application has still not been determined. There is a need for further academic research and expansion of judicial pronouncements in this area. A release of clarifications and guidelines by the CGPDTM may also help in this matter.

BY- UDAY ANAND

SYMBIOSIS LAW SCHOOL PUNE

2ND YEAR

[1] Office of Controller General Patents, Designs & Trade Marks, Ministry of Commerce & Industries, Government of India, The Draft Manual of Trade Marks Practice and Procedure.

[2] Samaresh Bose v. Amal Mitra, [1985 SCC (4) 289]

[3] Aveek Sarkar v. State of West Bengal, [2005 (2) CHN 694]

[4] S Rangarajan v. P Jagjivan Ram, (1989) 2 SCC 574

EFFECTS OF REGISTRATION OF TRADEMARK

INTRODUCTION:

The owner of the trademark becomes entrusted with certain exclusive rights as a result of registration of the trademark. There are two different rights that are granted as a part of the exclusive rights that are, firstly, the right to exclusive use of the trademark and secondly is prohibiting the others from using the trademark.

The owner of the trademark is conferred with the following rights on registration of trademark

  • Right to exclusive use of the trademark
  • Right to Apply it on the goods and services
  • Right to transfer the rights on the mark
  • Right of Assigning (with or without goodwill)
  • Right to authorize other person to use the mark
  • Licensing

INFRINGEMENT:

Any unauthorized use of a registered trademark, exploitation of registered trademark and violation of rights conferred on the owner of trademark constitutes infringement. The section 29 (1) of the Trademarks Act, 1999 talks about infringement of registered trademarks. In the case of DM Entertainment v Baby Gift House[1]it was observed by the court that section 29 of the Trademarks Act, 1991 lays down the aspects of infringement of trademark. In order to determine whether there is an actual infringement, there are certain ingredient that are as below:

  • Use of a registered mark in whole
  • Taking out the essential features of a mark with additions or alterations
  • Use of a similar or identical mark to that of the registered trademark owner
  • Use of the mark in regular trade similar to that of the registered trademark owner
  • Use of the mark in respect of similar goods and services to that of the registered mark

In such cases of infringement, a suit can be filed by Proprietor/Owner, assignee, exclusive licensee, agent, representative and registered user before the appropriate forum not below the rank of District Court.

DETERMINATION OF INFRINGEMENT:

In the case of Durga Dutt Sharma v Narayan Pharmacy Laboratories[2], the court observed the test to determine infringement of marks. It held that firstly the similarity between the registered mark and alleged mark is to ascertained by following rules of comparison. The court also laid down the comparison postulate as given below

  • Comparison of the marks visually, phonetically and conceptually.
  • Comparison of the exact words, letters and numbers used in the mark.
  • Comparison of the business and goods of the parties.

DEFENCES IN CASE OF INFRINGEMENT:

The following are the defenses that are available against infringement. The section 30 to 35 of the Trademark Act, 1999 talks about the same.

  1. Ineligibility of the plaintiff to institute the suit
  2. Fair use of the mark (non-commercial purpose)
  3. Generic mark (common in course of trade)
  4. Prior use of the trademark
  5. Concurrent registration of trademark
  6. Using the trademark with the consent of the owner of the mark
  7. No knowledge of registration by the proprietor

Thus, the registration of the trademark becomes quite important but certainly there are also remedies that are available against infringement of unregistered trade mark (passing off). But registration of trademark confers upon the owner of the trademark exclusive rights that are highly inevitable.

BY

AISHWARYA. N

3rd year BA LLB (Hons)

UPES School of Law

[1] DM Entertainment v Baby Gift House MANU/DE/2043/2010.

[2]Durga Dutt Sharma v Narayan Pharmacy Laboratories AIR 1965 SC 980 

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.