Tuesday, June 20, 2017
Monday, January 9, 2017
Suit For Infringement Of Registered Trade Mark Is Maintainable Against Another Registered Proprietor Of Identical Or Similar Trade Mark
IPR Law- Suit for infringement by a registered trade mark owner against a registered trade mark holder: Conditions-The present dispute was between the registered trade mark of the plaintiff as well as defendant. It is interesting to note that before filing the suit the plaintiff i.e. Clinique had filed a cancellation petition before the Registrar of Trade Marks, India, against the defendant for cancellation of the defendant’s trade mark CLINIQ. As per the Section 124(1) (ii), of the Indian Trade Marks Act, 1999 a suit is liable to be stayed till the cancellation petition is finally decided by the competent authority.
However, under Section 124(5) of the Act, the court has the power to pass interlocutory order including orders granting interim injunction, keeping of account, appointment of receiver or attachment of any property.
In this case, the court held that a suit for infringement of registered trade mark is maintainable against another registered proprietor of identical or similar trade mark.
It was further held that in such suit, while staying the suit proceedings pending decision on rectification/cancellation petition, the court can pass interim injunction restraining the use of the registered trade mark by the defendant, subject to the condition that the court is prima facie convinced of invalidity of registration of the defendant’s trade mark. In this case the court granted an interim injunction in favour of the plaintiff till the disposal of the cancellation petition by the competent authority.
Friday, December 23, 2016
Global payments major PayPal has filed a complaint opposing the registration of Paytm's trademark in a notice with the local trademark office, which falls under the ministry of commerce. The notice reviewed by TOI, says that PayPal has pointed out that Paytm's trademark is "deceptively and confusingly similar to PayPal" with a similar color scheme.
"The first syllable in each mark is in dark blue colour and second syllable is in light blue colour. Further both marks begin with PAY' which consumers tend to remember more than the second syllable, and the marks are of similar length.These similarities cause likelihood of confusion in the aggregate, specially considering the fame of the opponent's (PayPal) earlier trademark," the notice said.
When contacted, both PayPal and Paytm spokespersons refused to comment on the matter.
The Noida-based Paytm had advertised its trademark registration in July, a mandatory step, after which anyone, if at all, gets a period of four months to raise objections. The timing of PayPal's notice is interesting since it was filed on the last day of the mandatory timeline. Paytm has been one of the biggest beneficiaries of the government's demonetisation plan announced over a month back. It has seen a big jump in new users, transaction volumes due to the cash crunch. PayPal has mentioned in its notice that its brand name has been registered since 1999 across the globe. "It remains to be seen if the matter will reach the courts if they do not find a resolution through this process,".
Sunday, March 29, 2015
The U.S. Supreme Court ruled on March 24, 2015, that Trial Trademark and Appeal Board (“TTAB”) decisions “can be weighty enough” to preclude a district court from litigating the likelihood of confusion between trademarks in a subsequent infringement suit. The decision in B&B Hardware, Inc. v Hargis Industries, Inc. may not settle the nearly 20-year dispute between the owners of the SEALTIGHT and SEALTITE marks; however, the ruling is likely to increase the importance of TTAB proceedings. In certain circumstances, federal district courts may be bound by TTAB determinations that trademarks are confusingly similar under the doctrine of issue preclusion. Issue preclusion prevents the same issues from being litigated more than once, saving time and resources.
As the Court explained, “[t]he full story [of the parties’ dispute] could fill a long, unhappy book.” By 2003, the year B&B filed its opposition with the TTAB to stop Hargis from obtaining a federal trademark registration for a SEALTITE mark, the parties had been litigating trademark infringement claims for eight years. B&B, the owner of a federal registration for SEALTIGHT for metal fasteners used in the aerospace industry, asserted that Hargis’ SEALTITE mark for fasteners used in building construction created a likelihood of confusion.
B&B won the TTAB opposition proceeding, and Hargis was denied federal registration of the SEALTITE mark. The TTAB determined that the SEALTITE mark was likely to cause confusion with the prior-registered SEALTIGHT mark. The TTAB made the determination based on a multi-factor likelihood of confusion analysis that examines the similarity of the marks, the goods, the customers and the trade channels, among other considerations.
In this case, the TTAB only decided the narrow issue of the right to own a federal trademark registration. In contrast to a federal court, the TTAB cannot order a party to stop using a mark. Following its loss at the TTAB, Hargis continued use of its SEALTITE mark. In subsequent infringement proceedings, B&B argued that the TTAB’s finding of a likelihood of confusion between the parties’ marks should stand, and that Hargis should not be able to re-litigate the issue. Both the district court and the Eighth Circuit rejected B&B’s argument and found that issue preclusion did not apply.
The Supreme Court reversed the Eighth Circuit and held that “[s]o long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply.” The Court gave several reasons for this decision, including its observation that “the same likelihood-of-confusion standard applies to both registration and infringement.”
The case is now remanded to the lower court to determine if issue preclusion should apply on these specific facts, and thus the fight over the SEALTIGHT and SEALTITEmarks is likely to continue. The Court also explained that “for a great many registration decisions [from the TTAB] issue preclusion obviously will not apply because the ordinary elements will not be met.”
For example, the Court recognized the ordinary elements will not be met when the owner of a mark uses its mark in ways that are materially different from the trademark uses disclosed in a trademark application for registration. The TTAB decision will not have a preclusive effect “if the TTAB does not consider the marketplace usage of the parties’ marks[.]”
The impact of B&B Hardware on brand owners may be minimal. TTAB proceedings are routinely suspended for federal litigation involving the same parties and the same marks; however, parties that participate in a TTAB case will need to carefully evaluate the potential for issue preclusion in a subsequent action. Indeed, as the Court explained, “[w]hen registration is opposed, there is a good reason to think that both sides will take the matter seriously.”
For trademark owners that disagree with a TTAB decision, they can pursue a de novo review of the TTAB decision before either the Federal Circuit or a U.S. District Court. Otherwise, there is a possibility that issue preclusion may impact subsequent infringement litigation involving the same marks.
Because of the value of even the simplest phrase, celebrities today are utilizing copyright and trademark law to protect their intellectual rights in instances rarely before noticed. It is Copyright and Trademark Law which requires their lawyers to send cease and desist letters to unsuspecting entrepreneurs. A balance needs to be restored so celebrities can proceed against large scale pirates even if they don’t aggressively seek to protect their intellectual property rights in every case.
Recently Publicized Trademark and Copyright Actions by Attorneys for Celebrities
Individuals and small businesses have recently been surprised to receive cease and desist letters from entertainers like Taylor Swift and Katy Perry for everything from TaylorSwift song lyrics on a coffee cup to a 3D print of the left shark in Katy Perry’s Super Bowl performance. So what’s up with that?
It’s been said that entertainers are now blurring the lines between copyright, trademark and patent law simply to make more money or to prevent others from making money off of them. However, there actually is precedent for making claims that a musician’s lyrics are protected under trademark law and that other images created by a performer and likewise associated with that entertainer are protected under copyright law.
The cease and desist letter sent by Taylor Swift’s attorneys to prevent her lyrics from being printed on coffee cups sold to the public is an example of how entertainers today are seeking to protect their work from being infringed by others under trademark law.
It would be difficult today for any lyricist or musician to claim that they discovered, invented or created the grouping of any few words in a song title or the song’s lyrics for the very first time and that no one ever before them had come along to do so. Although at some point, someone must have said each phrase in any language for the very first time, it’s doubtful they ever became so well known for having used the phrase that others would immediately associate the phrase with that person.
Today, while the lyrics of a songwriter would be a valid work that could be copyrighted so as to entitle the musician to bring suit for copyright infringement against anyone using them in a copyrightable work themselves, with the exception of the fair use doctrine (which is an entire subject on its own) for slight uses, the average person on the street would not expect that the lyrics could be trademarked so as to prevent the use of even a one-line lyric on a coffee cup. But they can. They can be trademarked as well as copyrighted. So what is going on here?
The theory behind an assertion that lyrics or a slogan, or a phrase can be trademarked is that the lyrics have become so distinctly associated with the entertainer themself or their song in the case of lyrics, that they have acquired secondary meaning, thus allowing the performer the right to protect the phrase in any type of commerce, such as on coffee cups or other goods.
Is it really worth it to trademark a phrase that you’re associated with? Consider the trademarked phrase, “Let’s Get Ready to Rumble.” It’s been reported that this one simple phrase has generated $400 million to it’s owner, Michael Buffer.
Is such a legal assertion going to hold water for the local street performer or even an emerging artist on a singing competition on television. In nearly every instance, the answer would be no. But for someone of Taylor Swift’s stature, or Katy Perry’s or the Beatles? Yes.
But why should it be necessary for such artists who are most assuredly making more money than we can imagine need to prevent a small entrepreneur from making a small amount of money from coffee cups with a songwriter’s lyrics on them? Because trademark law in the U.S. requires them to do just that if they want to protect their works.
Trademark law require a quick response from the owner of a work in which they assert ownership to prevent the unauthorized use of their work. This is normally achieved by use of a “cease and desist” letter to the alleged infringer of their work. It’s not a lawsuit, but it’s a none-too-polite way of warning the alleged infringer that if they don’t stop using the person’s work in commerce, a lawsuit will follow, which can be far more expensive to defend in most cases, with the risk of a judgement for damages, than stopping what it is they’re doing that has brought the ire of the work’s owner, in this case the lyricist or performer.
The typical cease and desist letter, whether it’s used to stop an alleged trademark infringement or an alleged copyright infringement, warns the alleged infringer that their continued use or sale of the alleged infringing products may subject them to a judgement for actual damages, statutory damages, and punitive damages as well as immediate and permanent injunctive relief if they are found to have infringed the owner’s copyright or trademark. What such a letter also fails to mention, is that the attorney fees and costs in defending such a lawsuit may be so expensive as to even force them into bankruptcy.
Even if the claim that’s made by the attorneys for the artist in a cease and desist letter is bogus, specious at best, in most cases it simply isn’t worth it for the individual or a small business to wage the fight against a deep-pocketed performer just to win a small victory that obtains only the right to sell an item rather than the damages the performer could win for the infringement of their work.
The cease and desist letter sent by Katy Perry’s lawyers to the owner of an online store selling 3D printed replicas of the left shark in Katy Perry’s Super Bowl performance was based on an assertion by her lawyers that the sale of 3D print of the shark costume were infringing Katy Perry’s rights under U.S. copyright law.
Perhaps to the surprise of Katy Perry’s lawyers, in this case, they received a response from an NYU law professor representing the owner of the online store.
The law professor tweeted that he felt the left shark was not copyrightable because it qualified as a “useful article” which is not protected the same way as an artistic work. The law professor also sent a letter in response to Katy Perry’s lawyers, questioning whether the singer’s lawyers had over-asserted the strength of their client’s rights.
In his letter, the professor wondered what Katy Perry could possibly have to gain from their declared war on the left shark internet meme. He asked why the lawyers for Katy Perry could feel that the costume of a shark is copyrightable in view of the fact, he stated, that the U.S. Copyright Office has made it clear that costumes are not. It should be noted however, that another law professor has also weighed in on the subject stating that an animal costume can be copyrighted, so long as it is not generic.
Regardless, the law professor representing the online store owner made it clear that his client just wanted to go back to his business and would be grateful if Katy Perry’s lawyers would just back off. As the law professor said, going ahead with a dubious copyright claim would not benefit Katy Perry. He also questioned whether the NFL rather than Katy Perry had ownership of any copyright interest in the costume.
But indeed, if Katy Perry did design the costume or had a designer transfer their copyright interest to her, and if she felt she might use it in future shows and possibly even sell replicas herself at concerts, even if the NFL had control over the content of the Super Bowl halftime show, this is what copyright law also requires of anyone owning a copyright - a quick assertion of their rights upon learning of any infringement of them.
To a performer in today’s spotlight across all mediums of the universe which can be very bright indeed, the performer’s intellectual property is their most valuable asset. In 1985, Michael Jackson bought the publishing rights to most of the Beatles songs for a mere $47.5 million. Today this amount looks ridiculously small, and in fact it was even then. The purchase of the Beatles catalogue meant that Jackson was free to license any song previously owned by the former music publishing arm of The Beatles to any brand he chose.
Jackson was later able to sell his rights to Sony for $95 million and still acquire half ownership in Sony/ATV Publishing as well, a company which today is worth billions. (ATV had previously purchased the Beatles catalogue from Northern Songs, the Beatles publishing arm.) Due to a notoriously terrible contract John Lennon and Paul McCartney signed at the start of their career, Northern Songs owned the publishing rights to over 250 Beatles songs, including all of their hits at height of Beatlemania.
The online store owner attempting to sell Katy Perry’s shark costume perhaps summed up the perspective of the small entrepreneur who receives cease and desist letters today with a few choice words. He said it appeared to be easier to deal with world leaders like Kim Jong Un or Chris Christie and that he would go back to making pieces about them and other world leaders (although we’re not sure Chris Christie would qualify as such). His final thought on the subject was more astute - “All this lawyer crap is very stressful.”
Dealing with lawyers preventing a small business person from making a little money can indeed be very stressful. But this is what trademark and copyright law requires of the attorney who has been tasked with protecting every possible intellectual property asset of their client. The lawyer may not like putting the strong arm on a business person just trying to make a living, but for the business person who now has to give up a line of products he or she may have invested some money in producing, and who may have done so without thinking of the consequences when they should have known better, there is considerably more stress felt upon receipt of a lawyer’s cease and desist letter.
While the seller of the coffee cups with Taylor Swift lyrics printed on them and the maker of the 3D prints of the left shark in Katy Perry’s Super Bowl performance may not have anticipated they were infringing anyone’s copyright or trademark interest, neither should Taylor Swift nor Katy Perry be criticized when trademark law and copyright law requires them to have their lawyers do exactly what they did, namely to aggressively protect their clients’ intellectual property rights.
Is it necessary for a lyricist or songwriter to prevent their lyrics from being sold on any type of item? Under trademark law as it exists today, probably so, if the lyrics are so distinctly associated with the songwriter and performer that they have acquired secondary meaning under the law.
Is it necessary for a performer to prevent others from selling the same costume they create or have someone else create for them to use in a performance? Under copyright law, probably so as well, if the artist wants to retain the exclusive right to use the costume in future performances thus acquiring an even stronger acquired secondary meaning that will allow that artist to copyright the costume and later sell it themselves as a Halloween costume.
If Jimmy Buffet had a Parrothead costume, which for all we know he may have, and he used it in his performances, no one would question his right to have it copyrighted. The name, Parrothead, is already trademarked by Jimmy Buffet and his company, Margaritaville Enterprises, for various products.
Today, however, the brand of a performing artist, sports figure or model is so much bigger than just their music, their achievements on the field or their photos, it’s everything else that allows them to market themselves across all the different platforms available to them today. And that is why too a celebrity must also be careful not to appear to be petty at the expense of the little person.
Unfortunately for the celebrity, in today’s world when their every action and those of their attorneys are publicized, even when they do exactly what is required of them by trademark and copyright law, their actions can appear to be unjustified.
While it may be important to protect one’s intellectual property, because of he importance of their brand’s image, a celebrity would not be wise to sic their lawyers on an autistic little girl’s lemonade stand selling hand drawings of their celebrity client to help pay for her mother’s cancer treatment. And let’s be clear, we know of no such instance having occurred to date and we doubt any celebrity would ever knowingly have their attorneys take such an action.
We should also make it clear that copyright and trademark laws are essential and are crucial to protecting the rights of the creative artist who develops a screenplay or produces a film, writes music or a book or creates a line of clothing or jewelry or anything else due to their talent as artists and creative people against those who would sell pirated copies of their films, produce knock offs of women’s handbags or designs of clothing, or of an artist’s paintings. Our firm, just like any other firm who practices copyright and trademark law will proceed against such a copyright or trademark infringer without a second thought.
But there must obviously be some balance between protecting one’s intellectual property while allowing the little person to sell a product that has only a tangential relationship with a celebrity. What is thus needed is a change in the law that allows both parties to coexist peaceably and which does not, by their coexistence, cause the celebrity to forfeit their intellectual property rights if they choose to allow the little girl at her lemonade stand to sell her drawings without receiving a letter from an attorney.
Perhaps when the copyright and trademark laws are rewritten, that balance and peace between the celebrity and the little guy or girl will be restored while still allowing the creative artist’s lawyers to proceed with all the resources at their disposal against pirates who would seek to profit in large scale off the back of the creative artist.
Qualcomm could face another regulatory headache in China, this time over a trademark dispute with a Chinese company that is asking the local government to intervene and fine the U.S. company US$100 billion for alleged infringement.
Last month, the chip company agreed to pay Chinese authorities a US$975 million fine for alleged monopolistic business practices relating to its patent licensing business.
Both Shanghai-based Genitop and Qualcomm have been battling over the trademark "Gaotong", which the two companies use as their Chinese brand names.
Genitop claims that it owned the trademark first in China and its products are continually mistaken for Qualcomm's. "People believe we are the fake Qualcomm, or that we maliciously try to depend on the Qualcomm name," Genitop said in a statement. In Chinese, Gaotong means "high communication".
Genitop develops telecommunications gear and chips, and first registered for the Gaotong trademark back in 1992, the year it was founded, it said Tuesday.
Qualcomm has allegedly "bullied" Genitop by refusing to respect the trademark laws, and has instead tried to buy from the Chinese company the trademark rights to Gaotong for 2 million yuan (US$326,000).
Genitop has already filed a trademark infringement lawsuit against Qualcomm in Shanghai, demanding 100 million yuan in compensation. But it will also ask China's State Administration for Industry and Commerce to penalize the U.S. chip vendor for 15-years of trademark infringement.
Qualcomm did not respond to a request for comment.
It's not the first time a U.S. technology company has faced a trademark dispute in China. Back in 2012, Apple agreed to pay a company US$60 million for ownership of the iPad trademark, following a prolonged legal dispute. This came after the Chinese company wanted a $400 million settlement.
Wednesday, February 11, 2015
Gucci has been accusing Guess of trademark violations for years, and on Friday the Court of Paris reached a decision in the matter that has already been addressed in Italian and American courts.
The French court ruled in Guess's favor, finding no trademark infringement, no counterfeiting and no unfair competition between the luxury Italian label and American mall brand. Gucci's request for €55 million (about $62 million USD) in damages was denied and instead the company was ordered to pay Guess €30,000 about ($34,000 USD). The court also nullified Gucci's trademark of three of its "G" logos. In a statement, a representative for Gucci responded saying the company strongly disagrees with the verdict and "will certainly and immediately bring an appeal against the decision."
This marks Guess's second victory against Gucci so far. However, in 2012, a New York court ruled that Guess was guilty of copying four of the five trademarked logos Gucci addressed in its claim. According to the judge's decision in that case, the logos in question were the following:
a) the green-red-green Stripe mark
b) the repeating GG pattern
c) the diamond motif trade dress, which is the repeating GG pattern with a pair of inverted Gs in each corner rendered in a brown/beige color combination,
d) the stylized G design mark
e) the script Gucci design mark
In a dramatic court case that involved tears and shady e-mails, Guess only ended up having to pay $4.7 million in damages, which was nothing compared to the $124 million Gucci was seeking and small change when you consider that Guess made nearly $2.7 billion in revenue in 2011.
Two major points weakened Gucci's case and contributed to the small payout. First, the judge noted that Gucci could not have been ignorant of Guess's designs until it finally filed the case in 2009, especially since both brands had similar advertising budgets and stores near each other, often in the same mall. (Guess was founded in 1981 and started producing the designs in question around 1995) And secondly, the judge ruled Guess had diluted Gucci's logos, not counterfeiting them, saying, "courts have uniformly restricted trademark counterfeiting claims to those situations where entire products have been copied stitch-for-stitch."
Sunday, December 28, 2014
Sunday, September 7, 2014
Things aren't always sweet in the candy industry.
That much is evident from a wide-ranging lawsuit The Hershey Company just filed in federal court, accusing a importer of infringing its trademarks for the candy maker's best-known products.
Essentially, Hershey claims LBB Imports LLC is bringing in foreign-made candy with packaging and labeling that mimics that of Hershey's well-known brands - Reese's, York, Malteser, Cadbury, Kit Kat and Rolo.
LBB's actions, which continue despite protests by Hershey, are confusing consumers and illegally eating into Hershey's multi-billion share of the candy market, according to the lawsuit filed in U.S. Middle District Court in Harrisburg.
Hershey also accuses LBB of breaching earlier agreements to stop infringing on its famous trademarks. The importer, which has offices in California and New Jersey, has even started marketing a new catalog with its allegedly infringing products, the suit states.
Hershey doesn't list a specific damage amount in the suit, but is is seeking triple damages from LBB, based on an accounting it asks the court to order of the profits the importer has made through the alleged infringements.
The stakes could be quite high, given the profits Hershey lists in the suit for its own products. Sales of the Reese's line alone have exceeded $7 billion in the U.S. in the last five years, Hershey reported, while the Kit Kat and Cadbury products have had sales of around $1 billion and $500 million during the same period. Yearly sales of York and Rolo products each exceed $100 million annually, according to the suit.
Hershey controls all those marks either directly or under license.
LBB is violating those protections both by word and appearance, Hershey contends. LBB's Cadbury, Rolo and Kit Kat imports bear the same name as Hershey's products, according to the suit while the LLB's Yorkie and Maltesers products are only slight name variations from Hershey's York and Malteser lines.
Packaging color schemes also are too close to be legal, Hershey contends. For example, it argues, packaging of LBB's Toffee Crisp product bears the same licensed "Orange Mark" color scheme of Hershey's Reese's line.
Hershey is asking Judge John E. Jones III for an order blocking continued alleged infringement. It wants the judge to direct LBB to turn over its products for destruction and pay for "corrective advertising" to address the harm Hershey contends that LBB has caused to its marketing efforts and sales.
The Hershey Co. is no stranger to trademark infringement battles and is known for fiercely protecting those marks.
The firm has waged such battles with arch rival Mars Inc., with candidates forLancaster County sheriff and the Maryland state Senate who used images similar to company products in their campaigns, with a Michigan furniture company and with Williams-Sonoma over a cake pan design that Hershey claimed looked too much like its signature chocolate bar.
Thursday, January 30, 2014
Exclusive rights over yoga and pranic exercises, which are derivatives of ancient technique of yoga in India, cannot be claimed under the Copyright Act, the Delhi High Court has held.
The court made the observations while rejecting the plea of Philippines-based Institute for Inner Studies seeking to restrain some persons from teaching the 'asanas' (postures) claimed to be developed by the founder of the institute.
The court relied upon the position of law on the matter in the US and noted that the court there had denied protection to Yoga asanas in case of Bikram Choudhary who is also teaching modern yoga techniques in the US.
A bench of justice Manmohan Singh also held that the expression 'Pranic Healing' cannot be monopolised as trademark by the institute.
"The expression 'Pranic healing' as on the date of the application for the registration was prima facie non distinctive and was the name of the art or technique of doing exercise which was a facet of Yoga.
"The expression was not capable of distinguishing the services of the plaintiff from others due to its wide spread use in the field dating back from centuries ago," the bench said in its 150-page judgement.
The court delivered the judgement on a petition filed by the Institute, which was established by Late Samson Lim Choachuy, Master Choa Kok Sui, on April 27, 1987 and has trusts in various cities in India and the sub-continent.
The institute had moved the high court seeking prohibitory orders against one Charlotte Anderson and others from practicing pranic healing and conducting courses of the asanas adapted by the Master "without proper guidelines and issuing certificates or using literature" of the Master.
"The trade marks which have secured by the plaintiffs in India are all secured post the year 2000 as is evident from the list.
"If the expression Pranic Healing was the name of the art or technique of Yoga in the year 1906 finding place in the books in the field of Yoga, it prima facie appears to be highly doubtful as to how the expression is either inherently distinctive or for that matter capable of distinguishing the goods of one person from that of another.
"Having not made a truthful statement as to proprietorship of the mark pranic healing, the plaintiffs have secured the registration of the expression from the Registrar of the trade mark without informing about the correct proprietorship of the mark applied for on the date of the application."
Sunday, December 22, 2013
The Bombay High Court has said if two parties got the registrations of trademarks done using identical prefix, they could use the same for all purposes and its exclusive use by only one owner was not allowed. While relying on the Trademarks Act, the court said use of such registered trademarks by another registered owner cannot be treated as "infringement".
The court was hearing a plea by Pune resident Pritikiran Katole against a district court's order restraining him from using the trademark of 'Godwa' tagged with his businesses. The lower court had observed that it was "breach of registered trademark" used by the applicant Harsha Katole. Pritikiran moved the High Court against the order.
Taking into consideration the Act's provisions, Justice Anoop V Mohta said, "The main objection with regard to the word 'Godwa' although both the parties got registration under the provisions of the Trademarks Act, 1999, just cannot be the issue to pass such injunction order against the registered trademark owner. Such two persons cannot prevent each other from using the same registered trademark. The section itself contemplates that such registered trademark need to be treated as in their individual capacity `the sole registered proprietor'."
Justice Mohta observed that both the parties had been using the word 'Godwa' for long and were aware of each other's usage in their respective publication businesses. The court observed that Harsha had been using the title since 2008 and Pritikiran since 2006. However, no steps were taken by the former.
Pritikiran's counsel gave an undertaking to the court that the his client would not use the word 'Godwa' in the style or the design of the words that he had been using and also the manner of writing. In addition, the emblem registered by Harsha would not be used.
Monday, November 25, 2013
Saturday, October 26, 2013
Trademark is the identification mark of any company or organization. A customer relates any trademark with the quality of products and reputation of the company that is using it. It is a distinctive name, word, phrase, symbol, logo, design, image, or a combination of these elements that identifies a product, service or firm that has been legally registered as the property of the firm. Trademarks grant the owner the right to prevent competitors from using similar marks in selling or advertising.
There are few important functions of trademark:
A trademark can be used for identifying and distinguishing a particular seller’s goods from others. Trademark also shows the origin of the goods i.e. a customer can identify the manufacturer and also assume about the quality of goods that all goods bearing the particular trademark are of a particular quality desired by the customers. Trademarks are widely used for the advertisement purposes also which helps to customers in associating any good with the quality, reputation and goodwill of any company. So it is very important for any organization to take precautions while allowing any one to use its trademark because the name and reputation of the company is directly associated with the trademark.
Various new concepts have been emerged in relation to trademark due to the technological revolution in the communication, media and other areas and due to the increased knowledge and perception of individuals, business enterprises are showing more interest in registering non conventional marks such as colour marks, shape marks, smell marks, sound marks, advertisement slogans, trade dress etc. to capture the market.
How it can cause damage to a Company:
If any organization is using the registered trademark of another company without permission, that means it is not only committing a crime but also causing damage to the business of the company and damaging the brand name of that company. The organization might be using others trademark to use its market reputation and market stake to enhance its own business without extra efforts. But such companies are not using the exact trademark of other company but they generally go for use of similar marks and here the problem came in to existence. These kinds of activities mainly fall under two heads Infringement and Passing Off.
Section 29 of the Trademark Act-1999 talks about various aspects related to infringement as given in S.29(1) that a registered trade mark 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.
Other subsections describe that in course of the use of the trademark it is said to be infringing the rights of other company due to use of similar or identical trademark using for marketing of similar kind of goods and services or use of identical or deceptively similar trademark for any other kind of goods and services. It is further given in the Sub Section (9) of this section that the infringement can also be done by the spoken use of those words as well as by their visual representation.
The specific description of passing off is not given in the trademark act but the courts have drawn its meaning from common law that if the infringement of trademark done in such a manner where the mark is not only deceptively similar to the trademark of other company but also creating confusion for the customers, which ultimately results in damage for business of the company.
Differences between Passing Off and Infringement:
They are slightly different to each other:
· Statutory remedy is available for infringement whereas the action for passing off is a common law remedy.
· For infringement it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark but in the case of a passing off action, the need is to prove that the marks are identical or deceptively similar which is likely to deceive or cause confusion and damage to the business of the company.
· When a trademark is registered, registration is given only with regard to a particular category of goods and hence protection can be given only to these goods and action of infringement would be taken but in a passing off action, the defendant’s goods need not be the same, they may be related or even different.
Courts have given several judgements in these kinds of disputes where the infringement and passing off of trademark were in question. Few of them I am discussing in this paper where courts have dealt with these questions and formulated several concepts related to them.
Cases of Infringement;
No one can use the trademark which is deceptively similar to the trademark of other company. As in the case of Glaxo Smith Kline Pharmaceuticals Ltd. v. Unitech Pharmaceuticals Pvt. Ltd.  the plaintiff claimed that defendants are selling products under the trademark FEXIM that is deceptively similar to the plaintiff’s mark PHEXIN, which is used for pharmaceutical preparations. The defendants are selling anti-biotic tablets with the trademark `FEXIM' with the packing material deceptively similarly to that of the plaintiff, whereby intending not only to infringe the trademark but also to pass off the goods as that of the plaintiff as the two marks are also phonetically similar. The Court restrained the defendant from using the trademark `FEXIM' or any trademark deceptively similar to the trademark of the plaintiff `PHEXIN', any label/packaging material deceptively similar and containing the same pattern as that of the plaintiff.
If a party using the deceptively similar name only for a single shop and not spreading its business by use of that particular name then also that party could be stopped from using the trade name of other company. This is given in M/s Bikanervala v. M/s AggarwalBikanerwala  where the respondent was running a sweet shop in with the name of AGGARWAL BIKANERVALA and the plaintiff was using the name BIKANERVALA from 1981 and also got registered it in the year 1992. Hence they applied for permanent injunction over the use of the name AGGARWAL BIKANERWALA for the sweet shop by the defendant. Court held in favour of the plaintiff and stopped defendant from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in food articles for human consumption under the impugned trade mark/trade name/infringing artistic label 'AGGARWAL BIKANER WALA' or from using any trade mark/trade name/infringing artistic work containing the name/mark 'BIKANER WALA/BIKANERVALA' or any other name/mark/artistic work which is identical or deceptively similar to the plaintiff's trademark 'BIKANERVALA'.
If the trademark is not registered by any party but one party started using it before the other then first one would have the legal authority on that particular mark. As in the case ofDhariwal Industries Ltd. and Anr. v. M.S.S. Food Products  where appellants were using the brand name MALIKCHAND for their product and the respondents were using the name MANIKCHAND which is similar to the previous one and both parties have not registered their trademarks. Court held in this matter that even though plaintiff have not registered their trademark they are using it from long time back and hence court granted perpetual injunction against the respondents.
Even if a company is not doing business in country, but it is a well known company or well known goods, then also it would be entitled to get authority over its trademark. As given in case of N.R. Dongare v. Whirlpool Corp. Ltd.  where the defendants have failed to renew their trademark ‘WHIRLPOOL’ and in the mean time the plaintiffs have got registration of the same. In this case court said that though there was no sale in
India, the reputation of the plaintiff company was traveling trans border to India as well through commercial publicity made in magazines which are available in or brought in India.
The “WHIRLPOOL” has acquired reputation and goodwill in this country and the same has become associated in the minds of the public. Even advertisement of trade mark without existence of goods in the mark is also to be considered as use of the trade mark. The magazines which contain the advertisement do have a circulation in the higher and upper middle income strata of Indian society. Therefore, the plaintiff acquired transborder reputation in respect of the trade mark “WHIRLPOOL” and has a right to protect the invasion thereof.
Cases of Passing Off;
Even if the goods are not same or similar to each other, then also no one can use the registered trademark of a company for any kind of goods which may result in the harm to the business and reputation of the company which is the owner of the trademark. In Honda Motors Co. Ltd. v. Mr. Charanjit Singh and Ors  defendant Company was using the trade name HONDA for ‘Pressure Cookers’ which they are manufacturing in India and even when their application for registration of this trademark had been rejected by the registrar they continued using it and again applied for registration and hence plaintiff has brought this plaint. Plaintiff is the well known company having presence all over the world in the field of Motor Cars, Motorcycles, Generators and other electronic appliances. They are doing business in India in association with the Siddharth Shriram Group with the name Honda Siel Cars India Ltd. Plaintiff has established that his business or goods has acquired the reputation and his trade name has become distinctive of his goods and the purchasing public at large associates the plaintiff's name with them. The use of trademark HONDA by respondents is creating deception or confusion in the minds of the public at large and such confusion is causing damage or injury to the business, reputation, goodwill and fair name of the plaintiff. Hence court has restricted the defendants from using the trademark HONDA in respect of pressure cookers or any goods or any other trade mark/marks, which are identical with and deceptively similar to the trade mark HONDA of the plaintiff and to do anything which amounts to passing off to the goods of the plaintiff.
In the case of Smithkline Beecham v. V.R. Bumtaria  the plaintiff applied for permanent injunction to restrain the defendant from infringing the trademark, passing off, damages, delivery etc. of its registered trademark ARIFLO, used in respect of the pharmaceutical preparations. Defendants were using the similar name ACIFLO for their product of the same drug in
India. Plaintiffs were not doing business in India for the particular product and argued that since their advertisements are been published in medical journals hence they have a transborder reputation and defendants should be stopped to use the similar trademark which creating deception in customers.
Court said that mere publication of an advertisement in a journal cannot establish a trans-border reputation. Such reputation if any is confined to a particular class of people, i.e., the person subscribing to the said specialized journals and the same can’t be said to be extended to the general consumers. Thus any adverse effect on the firm in such a case can’t be amounted to the offence of “passing off”.
Though the dispute resulted in compromise where the defendant agreed and accepted the plaintiffs’ exclusive right on the use of mark i.e. ARIFLO in
India and abroad and further agreed to not to manufacture pharmaceutical preparations under the mark ACIFLO or any other mark identical or similar to ARIFLO.
The literal meaning of Trade Dress is - the overall image of a product used in its marketing or sales that is composed of the nonfunctional elements of its design, packaging, or labeling (as colors, package shape, or symbols). That means there is a specific way of writing any product name, its unique background and other remarkable signs. The concept of trade dress has much importance in a country like
India where one third of the population is still illiterate. Trade dress helps the illiterate people who cannot read the trademark on the product as well as the manufacturers to reach the people easily.
Delhi H.C. had dealt with this concept in a detailed manner in the case of Colgate Palmolive Company and Anr. v. Anchor Health and Beauty Care Pvt. Ltd.  where the plaintiffs have filed the case for the ‘passing off’ of trademark and the dispute was on the colour scheme and combination of colours in a significant manner. Colgate Company was the plaintiff and questioning the use of a mark on dental product which is the combination of ‘red’ and ‘white’ in proportion of 1/3:2/3 respectively and the way of writing the name of product was also in dispute. Plaintiffs were using the mark of particular fashion from 1951 and the respondents started using it in 1996. Plaintiffs have filed the application to stop the respondents from using the particular mark.
The plaintiffs showed to the court that the look of trade dress of the two articles, one manufactured by the plaintiff and another by the defendant from the point of view of not only unwary, illiterate customer/servants of the household but semi-literate also as the trademarks "Colgate" and "Anchor" are written in English language cannot be distinguished by ordinary customer. There is every likelihood of confusion as to the source on account of the similarity of substantial portion of the container having particular colour combination and also shape of the container. Such an action on the part of infringing party also has an element of unfair competition.
Court said in this matter that may be, no party can have monopoly over a particular colour but if there is substantial reproduction of the colour combination in the similar order either on the container or packing which over a period has been imprinted upon the minds of customers it certainly is liable to cause not only confusion but also dilution of distinctiveness of colour combination. Colour combination, get up, lay out and size of container is sort of trade dress which involves overall image of the product's features. There is a wide protection against imitation or deceptive similarities of trade dress as trade dress is the soul for identification of the goods as to its source and origin and as such is liable to cause confusion in the minds of unwary customers particularly those who have been using the product over a long period.
If a product having distinctive colour combination, style, shape and texture has been in the market for decades it got attached with the reputation and goodwill of the company which could be earned at huge cost.
In the present dispute if an illiterate servant or village folk goes to the shop with the instruction to bring Colgate Tooth Power having a container of particular shop with trade dress of colour combination of Red and White in 1/3 and 2/3 proportion he will not be in position to distinguish if he is handed over "Anchor" Tooth Powder contained in a container having the identical trade dress and colour combination of "Red and White” in that order and proportion. Confusion is much large as to source and origin as the difference in name will not make any difference to such a customer and the goods of the defendant can easily be passed off as goods of the plaintiff.
Court said that significance of trade dress and colour combination is so immense that in some cases even single colour has been taken to be a trademark to be protected from passing off action. Except where the colour cannot be protected as the blue colour is for the Ink and red colour is for the lipstick or similar cases. Court said that it is been established that the defendants are using the trade dress of plaintiffs for their containers and hence Court had allowed the application of plaintiffs and restrained defendants from using the colour combination of red and white in the disputed order on the container/packaging of its goods.
By this discussion we can draw following inferences:
· Registered trademark is the property of the holding company and it is directly associated with the name, reputation, goodwill and quality of products of a company.
· A company can not use the trademark of another company.
· No one can use even the similar trademark which is creating deception or confusion for the customers.
· No one can use the trademark of a company, which is well known and having a transborder reputation, even if it is not registered in
· Mere advertisement in a particular journal does not create transborder reputation.
· Trade dress is also a part of trade mark and no one can use the specific writing style, definite colour combination and identifiable background for packaging and labeling a product.
· Mere a single colour can also be treated as a trade dress for a specific product.
· Trade dress is also a part of trade mark and no one can use the specific writing style, definite colour combination and identifiable background for packaging and labeling a product.
· Mere a single colour can also be treated as a trade dress for a specific product.
Source : ,http://www.legalserviceindia.com/article/l226-Trademark-Infringement-&-Passing-Off.htm