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13 Feb 2018

Indian Trademarks 2017 – A Year in Review and Way Forward for 2018

Year 2017 has turned out to be one of the most happening years in the history of Indian Trademark Law, which is not only for the progression of Start-ups, but also for the awareness, digitalization, effective processing and speedy registrations of Trademarks. The former year having undergone a sea of change with respect to legislative changes, faster processing of applications and a more transparent and digital friendly approach towards protection of Trademarks, demands a quick recap on some of highlights of 2017.

Introduction of the Trademark Rules 2017

With an aim to make the process of registration of trademark faster, transparent and efficient, the Trademark Rules, 2017 was introduced. The amended Rules brought in various changes, the major one being simplifying process thereby reducing the number of forms from 74 to 8, based on the categories of requests. The new rules also increased the Official Fees by more than a 125 percent, while offering discounted fee for online filing and also for the startups, individuals and small enterprises applicants, purely to encourage digital filings and also making IP protection more affordable for the start-ups, individuals, SME and MSMEs.

Another important addition to the new rules includes introduction of process for registration of “well-known marks”. Some other significant changes include, submission of “User Affidavit” at the time of filing the trademark application, when an applicant claims use of the mark; no extension of time for filing evidences in opposition proceedings; limitations as to seeking adjournments for hearings; introduction of specific provisions for sound marks; and extending the window for filing renewal applications from 6 months to one year before the date of expiry.

Functioning of Trademark Registry

The past year has seen tremendous changes being implemented in the functioning of the Trademarks Registry.  The changes brought in by the Trademarks Registry to streamline the process includes, serving of Official Notices by e-mail; systematic and immediate uploading of all filing documents, communications, refusal orders in the e-register; improving the general soundness of official objections; steps to expedite the clearance in show-cause, opposition and rectification matters and facilitating communication through email for all official purposes. The time taken for registration of a trademark in case of an application with no objections/oppositions has been drastically reduced to about 6 months, which is a phenomenal improvement. Though this timeline is with respect to new trademark applications only, the Trade Marks registry is also expected to clear the old pending applications on priority.

Notable Case Laws

Some of the noteworthy trademark cases for the year 2017 would be:

Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd[1]: The Plaintiff (Toyota) sought to prevent the Defendants (Prius Auto) from using the trademarks “Toyota”, “Innova” and “Prius”. The Plaintiff claimed use as early as 1997, when they launched the world’s first commercial hybrid car called ‘Prius’ in Japan, followed by other countries like U.K., Australia, the U.S.A. etc. during the year 2000-2001. The registration of the trademark ‘Prius’ was obtained in different countries, and with the earliest being in 1990 (in Japan). In India, however, the car was released in the year 2009 and till then the plaintiff had not obtained registration of the mark ‘Prius’ in India. The Defendant on the other hand, had obtained registration for the mark ‘Prius’ in the year 2002 and had been continuously using the same since the year 2001, by regularly supplying auto accessories to various automobile giants. The Supreme Court of India, ruled in favour of the Defendants, observing that the Plaintiff had not supplied enough proof of spillover of reputation and goodwill of the Plaintiff’s mark Prius in the Indian market, prior to April, 2001. The Court noted that “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”. Although the advertisements and news publications, available online and on the Internet, showed use of the mark outside India, however, the Court could not hold the existence of the necessary goodwill and reputation of the product in the Indian market, at such point, i.e., in 2001, since in India, there was limited online exposure during the period. Therefore, the Court held 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”.

Patel Field Marshal Agencies Ltd v. PM Diesels Ltd. & Ors[2]: In another important case, the Supreme Court of India, held that if an aggrieved party does not approach the Tribunal for a decision on the issue of invalidity of registration, once the Civil Court is satisfied that an issue with regard to invalidity ought to be framed in the suit, in accordance with Section 111 of the Trademarks Act,1958, the right to raise the issue of invalidity will no longer survive and the concerned party cannot seek enforcement by recourse to or by a separate action under the provisions of Section 46 and Section 56 of the Trademarks Act,1958. Therefore, in cases where the parties have not approached the Civil Court, Sections 46 and 56 provide an independent statutory right to an aggrieved party to seek rectification of a trade mark. However, in the event the Civil Court is approached, raising the issue of invalidity of the trademark, such plea will be decided not by the civil court but by the Tribunal under the Act. If despite the order of the civil court the parties do not approach the Tribunal for rectification, the plea with regard to rectification would no longer survive.

Cipla Limited v. M/s Cipla Industries Pvt. Ltd[3]: The Bombay High Court analyzed the interplay between Sec 29(4) and Sec 29(5) of the Trade Marks Act, 1999, by using a literal interpretation rule to arrive at a conclusion that when a person is found using a registered Trade Mark as a ‘name’, viz., as a corporate or trading name or style, in goods dissimilar to ones for which Trade Mark is registered, proprietor of the registered Trademark is not entitled to an injunction on a cause of action in infringement under Section 29(5) of the Act.

Bigtree Entertainment v. Brain Seed Sportainment[4]: This case was instituted by “BOOKMYSHOW” against the defendants seeking interim injunctions against use of the domain ‘bookmysports.com’ on the ground that the term “BOOKMY” is exclusively associated with the plaintiff i.e. “BOOKMYSHOW”. The Delhi High Court dismissed the suit holding that the Plaintiff had not laid out any evidence to suggest that the term “BOOKMY” is only associated with the plaintiff’s business and none else, further since the words “BOOKMY” are descriptive in nature, the plaintiff’s trademark “BOOKMYSHOW” has not acquired any distinctive meaning in the minds of public.

Developments anticipated in 2018

Overall, the year 2017 witnessed positive developments however its effects, consequences and consistency are yet to be observed. Further, the Trademarks Registry has informed in one of the stakeholders meeting that the following suggestions and requests by the stakeholders will be considered for implementation in the year 2018, which includes:

  • Clearance of pendency other than show-cause notices and opposition matters to nil by end of March 2018 and to clear other pendency in next financial year;
  • Facility for uploading of withdrawal letter;
  • Proposed amendment in TM Act, 1999 to facilitate process of transformation of International Registration under Madrid Protocol into a national registration;
  • Clarification as to handling of opposition documents of application designating India under the Madrid Protocol;
  • Implementing video conference facility for trademark hearings; and
  • Upgrading of e-filing system to facilitate the attorney/agent to identify all new communications or notifications when any change in the status of trademark is carried out and also to provide multiple login credentials for multiple offices or attorneys under a firm.

Conclusion

The outbreak of recent developments in the trademarks regime, only for the better, coupled with the fast, improved and responsive pace at which the trademarks registry is working, have resulted in quicker, wholesome, well-balanced and applicant friendly registration processes in India. We can by far say that 2017 was not just another year for the Trademark Fraternity, due to the increased number of trademark registrars manifold; investing in the training and smooth functioning of the trademarks registry; and bringing to light the practicality of actually obtaining smooth registrations within 6 months, were all possible due to such factors. The only downside that still remains are the older applications, which are kept at bay and are taken up slowly. However, in light of these remarkable changes, we hope that the speedy disposal of such old and long pending Applications is not too far behind.

[1] Civil Appeal Nos.5375-5377 OF 2017 (SC)

[2] Civil Appeal Nos.4767-4769 OF 2001 & Civil Appeal No.19937 OF 2017 (SC)

[3] 2017 (69) PTC  425

[4] CS(COMM)327/2016 (Del)

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