Trademarks 2024 PDF

Trademarks Week 7-10 Key Ingredient for a Trademark – USAGE What Makes A Logo click? https://youtu.be/RBTiTcHm_ac Common (Mis) use Common (Mis) Use Context Statutory Definitions UK Trademarks Act 1994 - Sec 1 Trademarks - a "trademark" means any sign capable of being repr...

Trademarks Week 7-10 Key Ingredient for a Trademark – USAGE What Makes A Logo click? https://youtu.be/RBTiTcHm_ac Common (Mis) use Common (Mis) Use Context Statutory Definitions UK Trademarks Act 1994 - Sec 1 Trademarks - a "trademark" means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. India – Trademarks Act 1999 – Section 2(zb) – a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others  ? ? a ti on e nt re s rep ca l a p hi G r Types of Marks Non- Conventional Conventional Marks Marks Essentially – an Color aesthetic and Sound word Scent Composite Taste Logos Non-Conventional Marks : Color combinations Sound Marks Registrable – any jingle or unique sound through which consumers can identify the goods or service with Graphical Representation, through musical notes Popular Examples of registered trademarks under the USPTO - https://www.uspto.gov/trademarks/soundmarks/trademark-sound-mark-example s In India, there was a silence maintained in the Act, without any explicit recognition. However, first sound mark in India had been registered by Yahoo in 2008. Now, the new Trademark Rules 2017, provides for the procedure to register sound marks.  Sieckmann Criteria – Clear, precise, self-contained, easily Olfactory accessible, intelligible, durable and objective Marks Needs to be represented precisely and prove the uniqueness Key issues – subjectivity; representation and consistency Amended UK Definition - Trademarks Act 1994 Follows the EU Trademark Directive of 2015 Section 1: 1) In this Act “trademark” means any sign which is capable— a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and b) of distinguishing goods or services of one undertaking from those of other undertakings. 2) A trademark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.]  Initial evidence in the Harappan Civilization of unique History identifications of different goods Europe – The concept of Proprietary or possessory marks – farmers branded their livestock – merchants branded their goods, so that during any unexpected incident, the surviving merchandise could be identified. Use of marks in guilds – exclusivity to produce certain goods or services – marks had a certificatory value – to ascertain the quality of the products. Industrial revolution – use changed – rise of factory production prompted the owners to revert to the original use of marks Beginning of the twentieth century – trademarks began to be valued as assets as well- apart from being indicators of origin- distinctiveness and appeal of the Marks became to be recognized. UK - Common Law - Trademarks Act 1875 (UK) – applicable to India British India - Trademarks Act 1940 – based on Act of 1938 in UK; Trade and Merchandise Marks Act 1958 Common law Protection is still afforded to Marks Purpose Giving an Indication to the purchaser Satisfactory assurance of the quality of that mark Property of the manufacturer Establishing a connection between the goods and the source PUBLIC INTEREST: to avoid consumers being deceived and misled into buying bogus products Justifications and Criticisms Frank Schechter – one of the proponents of the Dilution theory and the advocate for greater protection. Marks are a species of property. Schechter for TM protection remarks “…the preservation of the uniqueness of a trademark should constitute the only rational basis for its protection” However, major criticism for TM protection is that it is a monopoly, which, is inefficient. Although it is not a complete monopoly over the goods, it creates an exclusive rights for a person using that mark. It has social and economic costs to other traders and to the market in general. There may be restrictions to free speech as well- if greater protection is afforded – there will be more power on the TM owner to control the uses of that mark – even if it is non- commercial. Other concerns for overboard protection: Gets in the way of free competition; Encourages companies to invest heavily in branding; Barriers to free movement of goods International Systems and Standards One limitation of the Paris Convention was that it could not create an international mechanism for registration. Madrid Agreement (1891) and Madrid Protocol (1989) provide those procedures through the WIPO Bureau- which then passes the application to the national Trademark Offices. While there is an international mechanism – enforcement and exploitation of these marks must be done separately – unlike for e.g., the community mark that EU confers. Protection against unfair competition (Article 10bis of Paris Convention) also mentioned. However, setting of International Standards is mainly through the TRIPS regime. International Systems and Standards – Contd… Role of WIPO – Mainly International Registration and awareness-building - Paris Convention, Madrid Agreement, Madrid Protocol and NICE Classification ( https://www.wipo.int/classifications/nice/nclpub/en/fr/ ) Role of WTO – Setting International Standards - TRIPS – TRIPS+ Regime Duration for the protection of Trademarks – 10 years – Renewable indefinitely Indian System of Protection for TMs T RA D E M A R K S A C T , 1 9 9 9 ( A LO N G W I T H L AW O F PA S S I N G O F F ITS RULES) Trademarks Marks (primarily unregistered) Registration (Statutory protection) Common Law protection Absolute and Relative grounds of Goodwill, Misrepresentation and refusal Damages Infringement Suit of Passing off (or Passing off action) Easier to exploit and enforce Additional steps to exploit and enforce SUBSTANTIVE ASPECTS Grounds of Refusal Registration of Trademarks can be studied with two aspects – substantive and Procedural Substantive element of registration are the Grounds of refusal – they impose disqualifications that coexist with qualifications. Absolute Grounds (Section 9) – in no circumstance can a mark exhibiting a character under these can be registered – requires examination by the Trademarks Office Relative Grounds (Section 11) - Depending on the circumstance of each case and through a system of examination and opposition – both conducted and facilitated by the Trademarks Office These grounds decide the viability of a trademark to be registered – form the basis for deciding whether statutory recognition can be granted – and whether When can the Section 9 registration be Devoid of Distinctiveness absolutely Descriptive of the good or service – which refused indicate quality, intended purpose or geographical origin Customary words or terms/ Common words Deception of public – Deceptive similarity Marks likely to hurt religious sentiments Scandalous or obscene words Names of National Importance Functional Mark Laudatory words Devoid of distinctiveness – s.9(1) (a) TMs devoid of distinctive character are not capable to distinguish one from other. An Invented word for example- may be used to describe a good or describe a particular person’s good. The latter can be a Trademark, the former cannot. Non-conventional marks – Must have a distinctive character to be registrable  Abercrombie used the mark "Safari" on articles Devoid of Distinctiveness of clothing sold by it in its sporting goods stores – for many years. – Abercrombie Fitch Co. v They filed an action for Trademark Hunting World Inc. - 537 infringement against the defendant ‘Hunting F.2d 4 (2d Cir. 1976) World’. According to them, the defendants had engaged in the retail marketing of sporting apparel - use of "Safari" alone or "Minisafari" and "Safariland.” The District Court for the Southern District of New York dismissed the complaint and cancelled all of plaintiff's trademark registrations for "Safari.” The issue before the 2nd Circuit was whether the District Court erred in its observations. Abercrombie Fitch Co. v The Court ruled that although plaintiff for many years had used the mark "Safari" Hunting World Inc. on articles of clothing sold, defendant established its rights to use similar derivations of the term in selling its own line of sporting apparel. Usage of Safari as a generic term or descriptive term, even as a Valid trademark – the plaintiff could not stop the defendant from using it. Four different categories of terms have been identified with respect to trademark protection - Arrayed in an ascending order generic, descriptive, suggestive, and arbitrary or fanciful. Spectrum of distinctiveness Descriptive words – S. 9(1)(b) TMs – consisting exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of services – shall not be registered Follow a test of descriptiveness based on the above factors e.g., Kleenex, Fish- Fri etc. In Procter and Gamble v Office for Harmonization in Internal Market (Baby Dry case), the court held that the ‘BABY DRY’ was an unusual juxtaposition of two independent words, hence not wholly descriptive. Functional Mark – S. 9(3) An issue of affecting market competition Functionality doctrine prevents TM law, from inhibiting legitimate competition by monopolizing a useful product feature- leaves it to the domain of patent law Simply functional aspects being turned to a mark is not registrable E.g., Harley Davidson exhaust sound Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) For many years – the plaintiff had coloured the dry-cleaning press pads of its making with a special shade of green-gold. The defendant, a rival, soon began to use a similar shade on its own press pads Considering that, the plaintiff registered its colour as a trademark and filed a trademark infringement case against its rival. The 9 th Circuit court ruled that a trademark could not be obtained for a colour alone. The case was appealed. The Key issue before the Supreme Court was whether colour could be registered as a trademark. The Supreme Court held positively, remarking that the Lanham Act is broad in its approach towards the protection of Trademark. Qualitex v Jacobson However, the Supreme Court cautioned against individual colors, as they require a secondary meaning and are not inherently distinctive. Breyer J on the Functionality Doctrine: “Functionality doctrine therefore would require, to take an imaginary example, that even if customers have come to identify the special illumination enhancing shape of a new patented light bulb with a particular manufacturer, the manufacturer may not use that shape as a trademark, for doing so, after the patent had expired, would impede competition--not by protecting the reputation of the original bulb maker, but by frustrating competitors' legitimate efforts to produce an equivalent illumination enhancing bulb.”  Secondary Meaning If a word belonging to a language, which has a primary meaning assigned to it in the vocabulary; acquires a secondary meaning viz. that of goods manufactured by a particular person, it becomes registrable. Secondary meaning may increase the potential to provide distinctiveness to such words. The words can also be seamlessly used for its primary meaning, without any loss to the secondary meaning. E.g., Naukri.com, Apple, Canon Deceptive Similarity – S. 9(2)(a) Mark shall not be registered if it is of such a nature as to deceive the public. Cadila Health care v Cadila Pharmaceuticals –how to decide if the marks are deceptively similar - Test of an average consumer Corn Products Refining v. Shangrila Food Products Ltd- AIR 1960 SC 142 – The court observed that the overall similarity of the composite words, having regard to the circumstances – should be considered. The question is whether an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two marks. Cadila Health care Ltd. v. Cadila Pharmaceuticals – 2001 (2) PTC 541 SC A Passing off case - Appellant and Respondent were both pharmaceutical companies who had taken over the business of the Cadila Group after restructuring under the Companies Act. Both companies were granted the right to use the term Cadila. Appellant initially manufactured a drug to treat cerebral malaria with the mark ‘Falcigo’ and was granted permission by the Drugs Controller of India in 1996 to sell the product across India. In 1997 the permission was also granted to the Respondent for selling drugs for cerebral malaria with the name ‘Falcitab’. Key Issue related to the question of confusion and passing off. Cadila Health care Ltd. v. Cadila Pharmaceuticals The Supreme Court took into consideration various aspects - like the legibility of doctors' prescription, accidental confusion due to deceptive similarity and the need for caution in cases of drugs which are used to treat the same disease, however, comprise of different composition. The test of a reasonable ordinary person was held to be a person of imperfect recollection and average intelligence. The Court took into consideration that even if both the drugs are only sold in hospitals and clinics with prescriptions, there could be a cause of confusion even amongst professionals dispensing the medicines - conclusively established that there was a likelihood of passing off and it was a case of deceptive similarity. Cadila factors for ascertaining Deceptive similarity The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works. The degree of resemblance between the marks, phonetically similar and hence similar in idea. The nature of the goods in respect of which they are used as trademarks. The similarity in the nature, character and performance of the goods of the rival traders. The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. The mode of purchasing the goods or placing orders for the goods and Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. Other Grounds Laudatory Words S.9 (1)(b) – E.g., Your Majesty, Imperial etc. Customary words and Common words – S.9(1)(c) – Some words are incapable of any secondary meaning – E.g., ’Escalator’ in India by OTIS was refused. Marks likely to hurt religious sentiments – S. 9(2)(b) Scandalous or obscene words S.9(2)(c) Prohibition under Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950) – S. 9(2)(d) – E.g., Gandhi, Nehru etc. Relative grounds of Refusal Section 11- Provides that an earlier mark can be a ground for refusal Identity of marks and similarity of goods Similarity of marks Well-known trademarks Marks protected through passing off or copyright Likelihood of confusion including likelihood of association Likelihood of Confusion - Test of Average Consumer Well- known trademarks - Test of Relevant Public Defense: Doctrine of honest concurrent user- usage of the same mark by different persons, which is non-infringing - E.g., Polo Likelihood of Confusion  McCarthy – Likelihood of Confusion is the fundamental test Likelihood of of both state common law and statutory trademark infringement ad federal statutory trademark infringement Confusion Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. (As per the USPTO) In a TM action, the court considers whether one’s use of the trademark creates a likelihood of confusion with an already existing trademark. Similarity of goods, marks and likelihood of confusion – are cumulative Similarity of marks – includes aural, visual and conceptual similarity Likelihood of confusion – a mere tendency is good enough to prove, as it says “likelihood” Average Consumer – Lord Denning – Average Consumer is a moron in a hurry Likelihood of Association – A subset Section 11 (1) – includes likelihood of association with an earlier trademark In this context the European Court of Justice, in a plethora of cases, laid down that the likelihood of the association may arise in three set of circumstances: Where the public confuses the sign and the mark in question (likelihood of direct confusion); Where the public makes a connection between the proprietor of the sign and those of the mark and confuses them (likelihood of indirect confusion or association); Where the public considers the sign to be similar to the mark and perception of the sign calls to mind the memorable mark, although the two are not confused (likelihood of association in the strict sense). Polaroid Corporation v Polarad Electronics 287 F.2d 492 (2d Cir. 1961) Polaroid Corporation, a Delaware corporation, owner of the trademark Polaroid and holder of 22 United States registrations thereof granted between 1936 and 1956 - brought an action in the Eastern District of New York. Alleged that defendant's use of the name Polarad as a trademark and as part of defendant's corporate title infringed plaintiff's Federal and state trademarks and constituted unfair competition. Polaroid sought a broad injunction and an accounting. Defendant, in addition to denying the allegations of the complaint, sought a declaratory judgment establishing defendant's right to use Polarad in the business in which defendant was engaged. Apart from this, an injunction was sought against plaintiff's use of Polaroid in the television and electronics fields, and other relief. The lower court dismissed both the claim and the counterclaims, concluding that neither plaintiff nor defendant had made an adequate showing with respect to confusion and that both had been guilty of laches. Both parties appealed but defendant withdrew its cross- appeal. Polaroid v Polarad contd… The appellate court affirmed the lower court's decision and held that plaintiff's delay in proceedings against defendant barred it from relief. The court found that plaintiff's mark was a strong one and the similarity between the two names was great, but the evidence of actual confusion, when analysed, was not impressive.  Polaroid v Polarad Factors Strength of the senior user’s mark: The stronger or more distinctive the senior user’s mark, the more likely the confusion. Similarity of the marks: The more similarity between the two marks, the more likely the confusion. Similarity of the products or services. The more that the senior and junior user’s goods or services are related, the more likely the confusion. Likelihood that the senior user will bridge the gap: If it is probable that the senior user will expand into the junior user’s product area, the more likely there will be confusion. The junior user’s intent in adopting the mark: If the junior user adopted the mark in bad faith, confusion is more likely. Evidence of actual confusion: Proof of consumer confusion is not required, but when the trademark owner can show that the average reasonably prudent consumer is confused, it is powerful evidence of infringement. Sophistication of the buyers: The less sophisticated the purchaser, the more likely the confusion. Quality of the junior user’s products or services: In some cases, the lesser the quality of the junior user’s goods, the more harm is likely from consumer confusion. Related products and services Amritdhara Pharmacy v Satyadeo Gupta AIR 1963 SC 449 – Indian Context Satyadeo Gupta had applied for registration of the trade name of a medicinal preparation “Lakshmandhara” in relation to the medicinal preparation since 1923. It was admitted by the Respondent that the Respondent’s product was mainly sold in the state of Uttar Pradesh and there were only sporadic sales in other states. Amritdhara Pharmacy opposed the registration of the mark ‘Lakshmandhara’ on the ground that it had an exclusive proprietary interest in the trademark “Amritdhara” in relation to a similar medicinal preparation which had acquired considerable reputation since 1901 and that the respondent’s trade name “Lakshmandhara” was likely to deceive and cause confusion and therefore the registration was prohibited by Sections 8 and 10(1) of the Trade Marks Act, 1940. In response to the same, the Respondent filed a counter affidavit, raising the defenses of honest concurrent user and acquiescence on part of the Appellant as the Respondent was using the mark ‘Lakshmandhara’ since 1923. Amritdhara Pharmacy v. Satyadeo Gupta The Registrar denied registration to Lakshmandhara on the basis that the Respondent’s mark is similar to the petitioner’s mark. Subsequently, the Allahabad High Court overturned the decision. In an SLP to the Supreme Court, a full bench of the Hon’ble Supreme Court held that the marks ‘Amritdhara’ and ‘Lakshmandhara’ are similar and thus overruled the decision of the Allahabad High Court and upheld the decision of the Registrar of Trademarks. In coming to the said conclusion, the Court relied on: The test of comparison of marks, which states that the question of comparison of two marks has to be approached from the point of view of a man of average intelligence and imperfect recollection. The Court held that- “a critical comparison of two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name”; F. Hoffmann-La Roche Roche was a limited liability company, manufacturing v Geoffrey Manners and selling Pharmaceutical products – they applied for a AIR 1970 SC 2062 – Pharmaceutical registration of the mark ‘Protovit’ for multivitamin context tablets and liquids – they began selling it since 1951 In 1957 – the respondent applied for the registration of its mark ‘Dropovit’ for ”medicinal and pharmaceutical preparations and substances”- faced no opposition from Roche during procedure and got it registered. Roche then became aware of this mark and then negotiated with the respondents – failure of negotiation – hence applied to rectify the Register – on the grounds that it is likely to deceive or cause confusion. The joint Registrar and subsequently, the High Court rejected that application and held that DROPOVIT was not deceptively similar to PROTOVIT. F Hoffman La Roche v Geoffrey Manners The key issues concerned likelihood of confusion and descriptive nature of the mark The Supreme Court held that both the High Court and the Joint Registrar were correct in their findings – no persisting tangible threat of misperception by the Respondent’s mark – it was also held to be an invented word Ruling affirmed two things: To allow imperfect recollection as a benchmark for considering an average consumer and the possibility of deception It is important that while comparing the two marks, one must compare the mark in totality to ascertain if any deception or confusion exists. Well Known trademarks  Common law v Civil Law – easier to protect in common law Well Known Article 6bis of the Paris Convention – has a provision for bad Marks faith; read with Article 10bis which has a provision against unfair competition. WIPO has a Soft Law for the protection of these marks – a Joint recommendation for these marks China has also joined the bandwagon to protect- by enacting the laws against bad faith. India maintains a database of well-known marks: https://ipindiaonline.gov.in/tmrpublicsearch/wellknownmarks.as px Relevant sector of the public Test – Rolex SA v Alex Jewelry Pvt. Ltd. – The Court found that the segment of the public which uses the watches of the category or price range as Rolex, if they come across jewellery or artificial jewellery also bearing the same mark is likely to believe that the said jewellery has a connection to Rolex. N.R. Dongre v Whirlpool Toyota Jidosha Toyota claimed to be owners of well-known trademarks Kabushiki Kaisha vs M/S of ‘Toyota’, ‘Innova’ and ‘Prius’. First two marks were Prius Auto Industries registered trademarks of the Plaintiff - the lower courts Limited (2017) had no difficulty in finding in favour of Toyota on this count - The contest was with respect to the trademark “PRIUS”, which the plaintiff claimed belonged exclusively to it. The Plaintiffs had no registration to the mark, but the Defendants did in 2002. Toyota contested this registration by the defendants, claiming that it was the first user of Prius (and began using this mark as early as 1997) - the Defendants had wrongly and dishonestly registered the same in India. The key question before the Supreme Court was whether Prius could be granted protection in India with its reputation abroad.  Toyota Jidosha Kabushiki Kaisha vs M/S Prius Auto Industries Limited The court ruled in favour of the Defendants, noting that the Plaintiff had not supplied enough proof of its “reputation” in the Indian market. In other words, although trans-border reputation was now very much a part of Indian law (ever since the Whirlpool decision), such reputation could not merely be asserted, but must be proved. And within the “territory” of India. The court notes: “…if the territoriality principle is to govern the matter, and we have already held it should, there must be adequate evidence to show that the plaintiff had acquired a substantial goodwill for its car under the brand name ‘Prius’ in the Indian market also..” In other words, although the mark may be very well known abroad, that by itself is not sufficient. Reputation in the local milieu must be proved as well. The court therefore ruled as: “All these should lead to us to eventually agree with the conclusion of the Division Bench of the High Court that the brand name of the car Prius had not acquired the degree of goodwill, reputation and the market or popularity in the Indian market so as to vest in the plaintiff the necessary attributes of the right of a prior user so as to successfully maintain an action of passing off even against the registered owner.” Doctrine of Honest Concurrent User – S. 12 In case of honest Concurrent use, the Registrar may permit the registration of a mark Kores (India) Limited vs Khoday Eshwarsa And Son, And Anr. 1985 (1) BomCR 423 Honesty of the concurrent use Quantum of concurrent use shown by the petitioner having regard to the duration, the volume of trade and the goods concerned, Degree of confusion likely to follow from the resemblance of both marks Whether there can be a proved instance of confusion The relative inconvenience to the parties and the inconvenience to the public if the latter mark is registered. Hindustan Pencils Private Ltd. vs M/S. Universal Trading Company 2000 PTC 561 (Del) Marks were used for a similar duration They were in different classes of goods and services. Hence, it was held to be honest concurrent use. Dilution Dilution The value of the modern trademark lies in its selling power; and this selling power depends for its psychological hold upon the public, not merely upon the merit of the goods upon which it is used, but equally upon its own uniqueness and singularity; Frank Schechter is the main theorist of Trademark Dilution, in his paper ‘ The Rational Basis of Trademark Protection’. Trademark dilution refers to the unauthorized use of and/or application for a trademark that is likely to weaken the distinctive quality of or harm a famous mark. According to Schechter, it is the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use upon non-competing goods. Understanding Dilution – By Schechter If KODAK may be used for bathtubs, MAZDA for cameras and shoes, or RITZ – CARLTON for coffee, these marks must inevitably be lost in the commonplace words of the language, despite the originality and ingenuity in their contrivance, and the vast expenditures in advertising them which the courts concede should be protected to the same extent as plant and machinery. Dilution – S. 29(4) and (8) Blurring Tarnishment Disparagement and Comparative Advertising Dilution by Blurring Blurring is the most common type of dilution. It occurs when unauthorized use of a famous mark weakens or impairs the distinctiveness of the mark. A hypothetical example may be use of GOOGLE as a mark on toothpaste, such that consumers who previously associated the GOOGLE mark solely with the tech giant’s products begin to also associate the mark with toothpaste. More unique the mark, the greater impact it has.  Dilution by Tarnishment Tarnishment might occur where the effect of the defendant's unauthorized use is to dilute by tarnishing or degrading positive associations of the mark and thus, to harm the reputation of the mark. ‘Enjoy Cocaine’ case (Coca Cola v Gemini Rising- The court said that there would be injury to COCA-COLA's reputation caused by an unwholesome association with an illegal drug, but said that injury would be caused, not by dilution, but by people who were confused and mistakenly thought that Coca-Cola was sponsoring the defendant's posters. Weakening the strength of a famous mark – Daimler Benz v Hybo Hindustan - “…None should be continued to be allowed to use a world famed name to goods which have no connection with the type of goods which have generated the worldwide reputation…. In my view, the defendant cannot dilute, that by user of the name “Benz” with respect to a product like under- wears…” Comparative advertising and Disparagement Section 29(8) and Section 30(1) Comparative advertising allowed as far as it does not disparage the other’s products Mere puffing of goods is not actionable.  Pepsico sued Coca Cola over a series of advertisements – Pepsi Co. v usage of a mark and logo similar to Pepsi and using the Hindustan Coca phrase of Pepsi in a disparaging manner. Cola Ltd., 2003 Usage of phrases such as ‘Yeh dil Maange no more’ further disparaged the products of Pepsi and using similar concepts (27) PTC 305 of TVC to twist and use it for representing Coca Cola was also considered. Hence, they filed a case in the Delhi High Court against Coca Cola on grounds of disparagement. The Single Judge held that it was healthy competition. The Division Bench held differently. The court looked at intent, manner and storyline of the commercial. The court held that there was disparagement as the viewers could easily identify that the products referenced belonged to the appellants. HUL v. AMUL, Controversial TVC and print media ads put up by Bombay High Court, Gujarat Cooperative Milk Marketing Federation (GCMMF), makers of Amul ice cream prompted 2017 and appealed Hindustan Unilever Ltd (HUL), makers of ‘Kwality in 2019 Walls’ frozen dessert and ice creams, along with Vadilal Industries Ltd. and Vadilal Diary International Ltd. to file a case in the Bombay High Court against Amul for product disparagement. In 2017, Amul released a new TVC “Pure moments deserve pure milk ice cream. Not vegetable oil” The ad displayed two ice cream cups side by side. While the Amul-branded cup was shown being filled with milk, the other cup – with ‘frozen dessert contains vegetable oil ‘ written on it – was shown being filled with a dull white semi-solid mass. HUL v Amul HUL filed for an injunction in 2017 against the ad The learned Single Judge restrained Amul from Howsoever communicating to the public the two impugned TVCs or any part thereof or any other advertisement of a similar nature in any language. Disparaging or denigrating Kwality Wall’s (Plaintiff therein) products or business in any manner whatsoever. The Division Bench, on appeal, took into consideration – intent, manner and storyline of the commercial. The Bench partially allowed Amul to use the TVCs after making modifications that involve removal of portions of the TVCs that disparage the frozen dessert products.  Brand wars - Examples https://youtu.be/riD0RlWC24g Samsung vs Apple - https://youtu.be/4Klv1Map2UY Colgate vs Pepsodent - https://youtu.be/R347lsr23X8 (As discussed, and pointed out in class) Parody exception Usage of marks in the exercise of different forms of free speech would not be considered as dilution. Mattel v MCA Records Case of barbie v Barbie Girl music video Held to be parody and not dilution. What is so good? PROCEDURAL ASPECTS Registration Procedure for Trademarks Trademarks in India are listed by the Controller General of Patents, Designs and Trademarks – a process through which a Trademark is entered in a register Trademarks can be both registered or unregistered. Unregistered trademarks are afforded protection under common law through the action of Passing off. However, Registration has some benefits: Forms the prima facie evidence of ownership of the Trademark Gives entrepreneurs stronger enforceability of their trademarks Easier to commercialize – selling, assigning and licensing. Registration is valid in whole of the territory of India. Through an application under the Madrid Protocol, one can also obtain registration for other countries as per preference enlisted. Important boost towards goodwill generation.  Identification (user details, jurisdiction, goods description & class) Public search & Market Search Assessment of https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.as px TMs https://ipindiaonline.gov.in/eregister/eregister.aspx NICE Classification ( Single or Multiple Class) Cost (Schedule 1) Where it starts Public Search Page on the Indian website Registrar, Registry and Register of Trademarks The Registrar is appointed under Section 3 of the Trademarks Act. The Controller General of Patents, Designs and Trademarks heads the Trademarks Registry offices and functions as the Registrar of trademarks. He/she is authority that maintains the register under Section 6 of the Act – along with the responsibility of settling opposition proceedings and rectification of the Register Also has powers of Civil Court and the power to review his/her own decision. To assist the Registrar – Joint Registrar, Assistant Registrars, Examiners of Trademarks and clerical staff – appointed under the Act read with the Rules. Registry is established under Section 5 of the Act. Head Office of the Trademarks Registry is at Mumbai and branch offices are at Ahmedabad, Chennai, Delhi and Kolkata. For international applications and registrations under the Madrid Protocol, an International Registration wing is set up in the Head Office of the Trademarks Registry at Mumbai. Section 6 provides for the Register of Trademarks - It is a record kept at the head office of the Trademarks Registry in which the details of all registered trademarks are maintained. Aggrieved by the Registrar’s decision, can approach the High Court (initially IPAB under Section 91).  Procedure of Registration - Application The process is enumerated from Sections 18 to 23 of the Act. The application for registration should be filed by the person claiming to be the proprietor in a Registry that is within the territorial limits of the place of business - nowadays the entire process has become online. Application contains details, supplemented by the proof of usage and the representation of the word mark, logo or the composite mark and should be filed by paying the requisite fee (under the Trademark Rules, 2017). An application for registration of a Trademark may be made for one or more particular goods included in one or more classes of goods or services. The class to which the goods or services belong is ultimately determined by the Registrar. The Trademarks Act, 1999 allows a single application to be made for registration of Trademark for goods or services falling in more than one class of goods or services. Steps to follow for online registration  Examination of Application – Section 18 The Registrar, post the application, undertakes an examination of such application. He may assign the Examiners to assist him in this process. It causes a search to be made amongst the registered Trademarks and pending applications to ascertain whether there are on record, in respect of the same or similar goods or services or description of goods or services, any mark identical with or confusingly similar or which may show an association with the mark sought to be registered. Principle of First in Time, First in Right – An applicant may have made an application for registration of Trademark still not used by him/her, this shall operate as a claim on the Trademark till the time applicant does not abandon his claim. If another person makes an application for similar Trademark than the claim of earlier applicant is superior and will be preferred. Hence, pending applications are also looked at. Subject to the search, the grounds of refusal and other provisions, the Registrar is entitled to completely accept, reject or partially accept with amendments, the application under Section 18(4). However, in case of any rejection or partial acceptance, there should be reasoning provided. Opposition of Application – Section 21 After the Examination and acceptance, the application is then advertised on the website of the Registry. This is to invite any reservation or opposition that other proprietors may have regarding the application – Advertisement under Section 20. Read with the relevant Rules – any person within 4 months of such advertisement can file an opposition against such application, by giving such a notice in the prescribed format and fees to the Registrar. The Registrar then informs the applicant of such opposition and within two months, the applicant is supposed to file a counter-statement to the opposition with evidence. At the discretion of the Registrar, there may be a hearing where the parties can defend their positions. Based on that hearing, the Registrar may decide and furnish reasons for such decision.  TM R Generation of Examination Filing of Notice of Report (by the Replies to the Filing of TM-A Publication in the Opposition (by Registrar of Examination Application Trademark Journal third parties) (UR Trademarks) Report 42) Grounds of Refusal: Absolute & Relative Evidence in Counter Statement Evidence in Evidence in Reply Support of Opposition Hearing in Reply to NOO Support of NOO by Opponent / Application (UR (UR 50) (UR 44) (UR 45) Rebuttal (UR 47) 46) Checking the Status of Application through the E-Register  Acceptance of the mark as a “registered trademark” OR Rejection of Applicant’s mark Hearing and the Trademarks Watch Aftermath… Renewal of Registration (UR 57) (Form TM-R) Grant of Registration – Section 23 When the application is accepted by the Registrar and Has not been opposed OR Has been opposed but went in favor of the applicant it shall be deemed as registered under this Act. There will be a certificate issued by the Registrar in effect of the same. However, if there is a default on the part of the applicant to fulfill the procedure of application and registration is not completed within twelve months, such application shall be considered abandoned. Duration of Trademark registration – 10 years and renewable indefinitely. (however, non-usage for a continuous period of 5 years can be a ground of cancellation under Section 47) Post Registration, a person aggrieved can file for a cancellation or rectification of the Register under Section 47. The power to accept such applications is captured under Section 57. Madrid Protocol – International Registration Useful mechanisms- but still results in the proprietor holding a portfolio of national marks – each enforced separately. There cannot be an international filing without a national filing/registration. An application filed online through the Indian portal – can file an application to the Bureau - designating all or some of the members of the Madrid Union where you wish your mark to be protected. The application is transmitted to WIPO for examination, registration and publication. No separate Registration certificate is issued for an international registration. India as a designated country – Section 36E; India as an origin country under Section 36D. Monetizing Trademarks CONTINUOUS, LICENSE OR ASSIGNMENT EXTENSIVE FRANCHISE USAGE Rights of a Trademark Owner Assignment Licensing Infringement Rights of a Trademark Owner – Section 28 Registration of a trademark shall give to the registered proprietor of the trademark the exclusive right to the use of the TM in relation to the goods and services registered. Primarily the following rights are conferred Exclusive use Assignment Licensing Infringement Seeking correction of register Alteration of the registered Trademark. Exception – nominative fair use or parody exception – Section 30(1) Assignment and Licensing The legal strength of a trademark is a function of their business strength. Assignment – under Section 37 - empowers the proprietor to assign the trademark Statutory Provisions – Section 40-44 – it should not result in more than one person having exclusive rights to use the mark for same goods or services or associated categories. Assignment needs to be registered with the Registrar – Section 45 Assignment and Licensing Licensing – should not destroy the trademark It may not create an exclusive right - can be both exclusive and non-exclusive Licensing – Common law – statutorily permissible Gujarat Bottling Co. v Coca Cola Co. – Licensing of TM governed by common law – Conditions The licensing does not result in confusion or deception among the public It does not destroy the distinctiveness of the TM A connection in the course of trade consistent with the definition of trademark continues to exist between the goods and the proprietor. Infringement – Section 29 Statutory remedy – restricted to only registered Trademarks - Vindication of exclusive right Person who can sue – only a registered proprietor or user- may not be a licensee Cause of action – use of a deceptively similar mark that may not be identical Section 27 – No action of infringement can lie against an unregistered trademark Section 29 – Infringement Section 29(1) to Section 29(8) – Different categories enumerated Raymond Ltd. v Raymond Pharmaceuticals – suit of infringement between a well- known mark and a domain name - The court held that the domain name has not been adopted without due cause or to take unfair advantage or cause any detriment to the distinctive character or repute of the Plaintiffs.  Deceptive similarity Likelihood of confusion or association Infringement Detriment to the distinctiveness of the trademark - S. 29 Use as a trade name Use in labelling or packaging Comparative advertising and disparagement  Identical marks and goods and services Section 29(1) – Durga Dutt Sharma v Navaratna Pharmaceuticals – In an action for infringement, the plaintiff must make out that the use of Deceptive defendant’s mark is likely to deceive Similarity But where both the marks are so close visually, phonetically or otherwise, no further evidence is required. For better understanding - https://spicyip.com/2017/06/on-sections-291-and- 292-of-the-trade-marks-act-i-guest-post-by-eashan-ghosh.html Point of Point of Comparison Further Condition / Outcome Activity Comparison Section (Goods / Effect (Mark) Services) Use in the Use in a manner as to render Identical goods 1 course of Identical mark the mark likely to be taken as 29(1) or services trade being used as a trademark Use in the Use in a manner as to render Deceptively Identical goods 2 course of the mark likely to be taken as 29(1) similar mark or services trade being used as a trademark  Section 29(2) and (3) – Likelihood of confusion Point of Point of Comparison Outcome Activity Comparison (Mark) (Goods / Services) Further Condition / Effect Section 1 Use in the course of Identical mark Similar goods or services Use in a manner likely to cause confusion on the part 29(2)(a) trade of the public 2 Use in the course of Similar mark Identical goods or services Use in a manner likely to cause confusion on the part 29(2)(b) trade of the public 3 Use in the course of Similar mark Similar goods or services Use in a manner likely to cause confusion on the part 29(2)(b) trade of the public 4 Use in the course of Identical mark Identical goods or services Use in a manner likely to cause confusion on the part 29(2)(c) trade of the public 5 Use in the course of Identical mark Similar goods or services Use in a manner which is likely to have an association 29(2)(a) trade with the registered trademark 6 Use in the course of Similar mark Identical goods or services Use in a manner which is likely to have an association 29(2)(b) trade with the registered trademark 7 Use in the course of Similar mark Similar goods or services Use in a manner which is likely to have an association 29(2)(b) trade with the registered trademark 8 Use in the course of Identical mark Identical goods or services Use in a manner which is likely to have an association 29(2)(c) trade with the registered trademark Section 29(2) and (3) Usage of the mark as a whole, is the criterion of consideration Living Media v Alpha Deacom The court found that the plaintiff had not used the standalone term ‘Today’ for telecom and Broadcasting services. Hence the defendant was allowed to register the mark ‘Nation Today’ for the same class of services. Section 29(4) – Dilution Unlike Section 29(1), (2) and (3) – which requires similarity or identical nature of goods and services for which the mark is similar or identical to the registered mark Section 29 (4) – Detrimental to the distinctiveness Conditions: Defendant – Neither Registered proprietor of the mark nor permitted user Impugned mark must be used in the course of trade Similarity to identity to the registered mark Class of goods and services should be different Registered TM should have a reputation in India Detriment to the distinctive nature and reputation of the registered TM Use of a Registered Mark as a corporate name – Section 29(5) No-fault provision – offering a higher degree of protection Two conditions to be satisfied Use of the Registered TM as the trade name Trade or business in the same goods and services Section 20 of the Companies’ Act 1956 – Section 16 of the Companies Act 2013 Defenses: Section 30 - 35 Honest Practice – Common use – Exhaustion – Invalid Registration Acquiescence – Section 30(1) Section 30(2) Section 30(3) – Section 31 Section 33 Use of name, address or Registration under Prior use – Section Use of a Trademark description of copyright is not a 34 as a parody mark goods or services/ defense Good faith use of name – Section 35  Common use Example: Thunder, Chocolate etc. Where the term is common to indicate the kind or quality of goods – Section 30(2)(a) Kamath v Lime and Chilli Hospitality (Café Madras case) Use in relation to Spare parts and accessories - Section 30(2)(d) - Hawkins Cookers Ltd. vs Murugan Enterprises Parallel Imports Unless otherwise stated in the law, the economic exploitation of intellectual property rights is limited to the act of first sale - Rights exhausted once the proprietor puts the goods in the market The term "parallel importation" refers to goods produced and sold legally, and subsequently exported. Each state is entitled either to prohibit or to allow parallel imports within its own legal framework – As TRIPS maintains its distance from setting a minimum standard for it under Article 6 Two issues still debated upon - whether parallel importation constitutes infringement under Section 29 of the Trademarks Act and whether India recognizes the principle of international exhaustion of rights under Section 30 of the Trademarks Act. Parallel imports are also referred to as 'grey-market' goods because although the goods may be genuine, they are sold through unauthorized trade channels. Exhaustion – Section Doctrine of Exhaustion means that an owner of a particular good ceases to have control over further sale 30(3) and (4) of his goods once he has made a valid transaction of sale. Hence, this doctrine is also called as the doctrine of first sale. Doctrine of International Exhaustion, Regional Exhaustion and National Exhaustion ‘Market’ is a controversy - International Exhaustion Lawful acquisition and sale is not infringement Sale of IP protected items by third parties is generally termed infringing. The resale or further exploitation of such products, however, do not fall under the scope of IP protection. Even if a car is covered by a number of patents, once the car maker has put that car on the market, there is a consensus that he cannot prevent that car from being re-sold, leased-out, etc. Kapil Wadhwa v Samsung Electronics - The Court held that India follows International exhaustion of rights.  The petitioners, one of India’s oldest and Parody exception - TATA Sons v. largest employers, were registered users of Greenpeace Intl., IA No the trademark, apart from claiming the common law right under the same - filed a 9089/2010 in CS (OS) case for unauthorized use of trademark and 1407/2010 for damage to reputation thereby caused. The defendant - Greenpeace International, an NGO - engaged in environmental activism - opposed the industrial activities of the petitioner in the establishment of the Dhamra port, which, according to the defendants, had an adverse impact on the breeding of the injured species, Olive Ridley Sea Turtles. To create awareness for the same, they launched a game based on Pacman, titled ‘Turtles v. Tata’, where the turtles are portrayed as escaping the Tata logo. The petitioners sought an interim prayer of temporary injunction against the game, based on the loss to the reputation of the company.  The Court relied on common law jurisprudence TATA Sons v. Greenpeace for temporary injunctions in defamation cases to hold Intl., IA No 9089/2010 in that such an injunction before the trial takes CS (OS) 1407/2010 place was an unreasonable restriction on freedom of speech. observed that Indian citizens were entitled to hold their opinions and mere contradiction with the authorities was not proof of mala fide intention in making the statements. In balancing free speech and intellectual property rights, several factors would weigh in favour of free speech: when the expression is primarily communicative rather than commercial; and when the context and impact of the speech suggests parodic usage - mere usage of a trademark as an object of criticism was inconclusive regarding infringement of the same.  Parody Exception - Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC. - 507 F.3d 252 (4th Cir. 2007) Louis Vuitton Malletier S.A. (LVM) filed this action against Haute Diggity Dog, LLC, a Nevada corporation that manufactured and sold pet products nationally, alleging trademark infringement under 15 U.S.C. § 1114(1)(a), trademark dilution under 15 U.S.C. § 1125(c), copyright infringement under 17 U.S.C. § 501, and related statutory and common law violations. Haute Diggity Dog manufactured, among other things, plush toys on which dogs can chew, which parodied famous trademarks on luxury products. The particular Haute Diggity Dog chew toys in question here are small imitations of handbags that are labelled "Chewy Vuiton" and that mimic LVM's LOUIS VUITTON handbags. The district court concluded that Haute Diggity Dog's "Chewy Vuiton" dog toys were successful parodies of LVM's trademarks, designs, and products, and on that basis, entered judgment in favour of Haute Diggity Dog on all of LVM's claims. Louis Vuitton Malletier LVM appealed and challenged, as a matter of law, the ruling made S.A. v. Haute Diggity by the district court. Dog, LLC. - 507 F.3d The key issue before the Circuit Court was whether Haute Diggity 252 (4th Cir. 2007) Dog’s marks a successful parody that would not blur the distinctiveness of LVM’s famous mark. The Court found that Haute Diggity Dog's products are not likely to cause confusion with those of LVM and that LVM's copyright was not infringed. The likelihood-of-confusion factors substantially favour Haute Diggity Dog. Recognizing that "Chewy Vuiton" is an obvious parody, the Court concluded that LVM had failed to demonstrate any likelihood of confusion. On the trademark dilution claim, however, the Court rejected the district court's reasoning but reached the same conclusion through a different analysis. The Court ruled that LVM has failed to make out a case of trademark dilution by blurring by failing to establish that the distinctiveness of its marks was likely to be impaired by Haute Diggity Dog's marketing and sale of these products. To establish its claim for dilution by tarnishment, LVM must show, in lieu of blurring, that Haute Diggity Dog's use of the "Chewy Vuiton" mark on dog toys harms the reputation of the LOUIS VUITTON mark and LVM's other marks. Since LVM could not make a case for damage of reputation, dilution by tarnishment was also ruled out. Reliefs – Civil: Section 135 Injunction – Section 135 (1) Interlocutory Orders – discovery of documents preserving of infringing goods and other evidence, restraining the defendant from destroying evidence Permanent injunction Section 135(2) – Injunction for discovery of documents Delivery up and destruction – Section 135(1) Damages – Section 135(1) Account of Profits – Section 135(1) Quia Timet Action - Equitable relief sought under dire circumstances with a view to prevent any infringement form taking place – else the owner will be left with no relief. Reliefs - Civil Anton Piller Orders – the court has inherent jurisdiction on an application by the plaintiff made ex parte and in camera to require the defendant to permit the plaintiff to enter his premises and take inspection of relevant documents and articles and take copies thereof or remove them for safe custody. The necessity for such an order arises when there is grave danger of relevant documents and infringing articles being removed or destroyed, so that the ends of justice will be defeated. John Doe Orders - John Doe orders are the orders issued by the court to search and seize against unnamed/ unknown defendants; which virtually translates into untrammeled powers in the hands of the plaintiffs, aided by court-appointed local commissioners, to raid any premises where infringement activities may be carried out. Groundless Threats  Counterfeit products – falsification of Trademarks Offences and Section 103-104: Imprisonment (6 months to three Penalties years) and/or fine (Rs. 50,000 to 2,00,000) Search and seizure by Police – Section 115 To Recap - What would you say here? And here? Unfair Competition – USA, France and China Article 10 bis of Paris Convention – against unfair practices Interpreted more broadly than passing off France Unfair Competition Parasitisme (Parasitic Behavior) Parasitic Competition USA Element of misappropriation Lanham Act China Anti- Unfair Competition Law (1993) Anti – Monopoly Law (2007) Passing off – In UK and India Common law Tort - Protecting unregistered aspects of a business that gives it it’s uniqueness – deception to obtain undue economic benefit of the goodwill which other has established in a trade – an action to not only preserve the reputation of plaintiff but also safeguard the public Salmond – the goods are in effect telling a falsehood about themselves which is calculated to mislead Lord Diplock in Advocaat case – The essence of the tort of passing off is a misrepresentation made by the defendant which is calculated to cause damage to the business or goodwill of the plaintiff. ‘No man shall pass off his goods as those of another’ – Lord Oliver in Reckitt and Colman Products v Borden Inc (Jif Lemon)  Erven Warnink Besloten Vennootschap v J Townend and Sons (Advocaat Case) Factors The plaintiffs were manufacturers of an alcoholic drink named as above – with a mixture of eggs and spirits. The defendants came out with a similar drink - marketed with a similar name – the plaintiffs applied for an injunction to restrain the defendants. The Court held that the defendants was passing off their goods as those of the plaintiffs. In applying the test for passing off, the Court developed what is known as the "extended" tort of passing off which included any situation where goodwill is likely to be injured by a misrepresentation. Lord Diplock established five criteria for a claim of extended passing off. There must be: misrepresentation by a trader in the course of trade to prospective customers of his or ultimate consumers of goods or services supplied by him, which is calculated to injure the business or goodwill of another trader, and which causes actual damage to the business or goodwill of the trader bringing the action. Reckitt & Colman Products Ltd. v. Borden Inc. (Jif Lemon Case) The plaintiff was a manufacturer of lemon juice and, since 1956, had been selling such juice under the name “Jif” in plastic containers resembling real lemons. The defendant’s product, manufactured in 1985-86 marketed three different kinds of lemon juice in containers precariously similar to those of the plaintiffs’, the only difference being a differently coloured cover and a different brand name, “ReaLemon”. The plaintiffs’ brought an action for passing off and were successful, with both the Court of Appeal and the House of Lords upholding the decision. Lord Oliver abbreviated the requirements by Lord Diplock by holding that First, the plaintiff must establish goodwill attached to his goods/services. Second, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are those of the plaintiff. Thirdly, he must demonstrate that he suffers or is likely to suffer damage due to the defendant’s misrepresentation. This established the CLASSIC TRINITY of Passing off. Ingredients of Passing Off Misrepresentatio Goodwill Damage n Hindustan Radiators Co. v Hindustan Radiators Ltd. - List of eight factors for determining Passing off in India Plaintiff has been using its trading style and trademark for a long period and continuously whereas the Defendant has entered into the said field only recently; There has not been much delay in the filing of the suit for injunction by the Plaintiff; The goods of the Plaintiff have acquired distinctiveness and are associated in the mind of the general public as goods of the Plaintiff; The nature of activity of the Plaintiff and the Defendant is same or similar; The goods of the parties to which the trademark of the Plaintiff is associated are same or similar; The user of the said trademark or trade name by the Defendant is likely to deceive and cause confusion in the public mind and injury to the business reputation of the Plaintiff; The sphere of activity and the market of consumption of goods of the parties are the same; and The customers of the Plaintiff, inter alia, include uneducated, illiterate and wary customers who are capable of being deceived or confused or misled.  Goodwill must be attached to business Goodwill The Plaintiff must have proprietary right over the mark It must have been used to denote the business. Such use of the mark should have generated goodwill Protecting the goodwill of a trader is not the same as protecting the trader’s reputation Harrods v Harrodian School Collective and shared goodwill - Bollinger v Costa Brava Wine Location of Goodwill In UK – it is a requirement that the goodwill be located in UK Merely having reputation in UK is not enough Anheuser Busch v Budejovicky Budwar But in India – there needs to be clarity – overseas marks have also been protected Daimler Benz v Hybo Hindustan N R Dongre v Whirlpool But still, what would constitute as a reputation good enough to not consider the location in India depends on circumstances of each case – Toyota Case Legally speaking, equating reputation to goodwill may be questionable – as it is in India But the location criterion is also regressive in UK, given the global size of markets – criticized heavily by the scholars. In terms of fulfilling the intent of passing off – India’s perspective is appreciable. J Bollinger SA v Costa Brava Wine from Champagne District of France exported to England – sold in the name of Wine Co Ltd (No.3) Ch. ‘Champagne’. 262 (13 November 1959) Defendants marketed Sparkling wine as ‘Spanish Champagne’ Hence, the champagne producers of France filed for an injunction to prevent the defendants from doing so. The key issue was whether the defendants’ usage of the mark or name amounts to passing off. Court held that if people were allowed to call sparkling wine not produced in Champagne as ‘Champagne’, the distinction between the original and other sparkling wines would be blurred. Anheiser-Busch The plaintiff sold the well-known ‘Budweiser’ beer in the US, but it was not generally available in the UK, being Inc. v. Budejovicky sold in American military bases and in a few duty-free Budvar shops. F.S.R. 413 (CA) However, the beer was widely known throughout the UK (U.K.) because of the plaintiff’s publicity efforts as well as tourist and business traffic between Europe and the US. The defendant sold its own beer under the same name. The right to a trademark was challenged. Oliver LJ – the plaintiff could ‘legitimately claim.. a reputation as the [brewer] of a beer, Budweiser, with a substantial section of the public’. Loss of reputation is unconnected with either an ability or a willingness to supply - Daimler Benz Aktiegesellschaft & Anr. v. Hybo Hindustan 1994 PTC 287 The Plaintiffs being a famous German car company and its subsidiary in India, filed a suit for permanent injunction restraining infringement of trademark against the Defendant towards use of it’s trademark ‘Benz’ along with the device of a three-pointed human being on undergarments. The Hon’ble Court observed that the mark ‘Benz’ and the device are well known marks. The Court further observed “…Such a mark is not up for grabs – not available to any person to apply upon anything or goods. That name which is well known in India and world wide, with respect to cars, as is its symbol a three pointed star.” The Hon’ble Court made the following important observations: “….There are marks which are different from other marks. There are names which are different from other names. There are names and marks which have become household words. “Benz” as name of a Car would be known to every family that has ever used a quality car. The name “Benz” as applied to a car, has a unique place in the world. There is hardly one who is conscious of existence of the cars/automobiles, who would not recognize the name “Benz” used in connection with cars…..” “….In my view, the Trade Mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else’s reputation with reference to goods, especially so when the reputation extends world wide. By no stretch of imagination can it be said that use for any length of time of the name “Benz” should be not objected to….” “…None should be continued to be allowed to use a world famed name to goods which have no connection with the type of goods which have generated the world wide reputation….”  Misrepresentation Must be actionable Mere confusion is not enough Initial Interest Confusion – Temporary confusion - MoroccanOil v Aldi Use of Similar promotional Materials Cadbury Schweppes v Pub Squash (Australia) Misrepresentation as to commercial Connection – Likelihood of association - Canon v Metro Goldwyn Meyer Likelihood of Direct Confusion Likelihood of indirect confusion or association Likelihood of association in the strict sense Character merchandising – Mirage Studios v Counter feat Clothing Confusion to Public Element of deceit – Must be likely to deceive public Chocosuisse Union v Cadbury (Swiss Chocolate Case) Damage Must be a consequence of the defendant’s misrepresentation No need of an actual damage, when there is likelihood of damage Must be to the Claimant’s goodwill Direct Loss of sales – Diageo v Inter Continental Brands (Vodkat) Damage to reputation Defences Delay or Acquiescence Chorion Rights v Ishan Apparel (Noddy Case) Bona fide use of your own name - Reed v Reed Concurrent Use Difference between Passing Off and Infringement PA S S I N G O F F INFRINGEMENT Common-Law remedy The statutory remedy under Section 29 of the Trademark Act, 1999 Broader Narrower No requirement of registration Registration is mandatory Plaintiff is only required to show deceptive Apart from proving deceptive similarity, similarity or likelihood of confusion, no need of the Plaintiff is also required to prove stress on the reputation/goodwill confusion in public and the likelihood of The registered proprietor or registered user of injury to the plaintiff's goodwill the trademark can institute the suit where they actually and voluntarily resides or carries his Section 20 of the Civil Procedure Code, business or personally work for gain 1908 would apply Common factor? Geographical Indications International Paris Convention Madrid Agreement Lisbon Agreement Definition of appellation of origin – Article 2(1) of Lisbon Agreement – The geographical name of a country , region or locality, Which serves to designate a product originating therein The quality and characteristics of the product are due exclusively or essentially to the geographical environment, including natural and human factors. TRIPS draws from this definition– Article 22.1 Indication of source and appellation of origin Limb of Industrial Property Advantage of quality and geographical origin India History – similar to Trademarks (refer to the history slide of Trademarks) GI Act – Geographical Indications of goods (Registration and Protection) Act 1999 Stems from India’s international obligations under TRIPS S. 2(1)(f) – Goods Agricultural Natural Manufactured Handicraft Includes foodstuff S. 2(1)(g) - Geographical Indication - similar to TRIPS GI and Appellation of Origin GI Act S. 9 – Prohibition to registration S. 11 and 12 – Procedure of registration S. 21 and 22 – Rights conferred by Registration S. 24 – Prohibition of Assignment Prohibition of Registration of GI as a Trademark – S. 25 Difference Between G E O G RA P H I C A L I N D I C AT I O N S T RA D E M A R K S Origin from a particular place Origin from a company Usually named after a place Fanciful or arbitrary sign Non- Transferable Transferable Cases for your reference Koninklijke Philips Electronics NV vs Remington Consumer Products Ltd, JUDGMENT OF 18. 6. 2002 — CASE C-299/9 Corn Products Refining v. Shangrila Food Products Ltd- AIR 1960 SC 142 Estee lauder v fragrance counter- 189 F.R.D. 269 (S.D.N.Y. 1999) Lois Sportswear, U.S.A., Inc., v. Levi Strauss & Co., 799 F.2d 867 (2d Cir. 1986) (Trademark- Levi’s pocket stitch case) Balkrishna Hatcheries v Nandos Int’l Ltd 2007 (35) PTC 295 Christian Louboutin SAS v Nakul Bajaj (Del HC, 2018) (intermediary liability) People for the Ethical Treatment of Animals v. Michael T. Doughney 263 F.3d 359 (4th Cir. 2001) (Trademark- People Eating Tasty Animals case) Rescuecom Corp. v. Google Inc, 562 F 3d 123 (2d Cir 2009) (Trademark- Google ad words case) Thank you