Application of Prosecution History Estoppel in Trademark Infringement Proceedings

  • March 17, 2023
  • Drishti Kardam
  • Indiradevi Kollipara

The doctrine of prosecution history estoppel, which was initially prevalent in determining the infringement of patents, also has its uses in trademark infringement proceedings. It prevents individuals from claiming the advantages associated with a right waived on a previous occasion.

When applied to trademarks, the doctrine dissuades applicants from misusing the opportunity bestowed upon them to amend their claims of infringement by relying on the submissions made to the Registry while making the trademark application or during the examination. In this context, it is relevant to understand the estoppel concept, defined under Section 115 of the Indian Evidence Act, 1872. This section states as follows: –

“When one person has, by his declaration, act or omission, intentionally caused or permitted another person to believe a thing to be true and to act upon such belief, neither he nor his representative shall be allowed, in any suit or proceeding between himself and such person or his representative, to deny the truth of that thing.”

Although judges make infrequent use of the doctrine in disposing of trademark infringement cases, its significance in this domain cannot be understated. For instance, this doctrine was applied by the Delhi High Court in Mankind Pharma Ltd. v. Chandra Mani Tiwari & Anr.[1] Back when the plaintiff had applied for the registration of the mark ‘ATORVAKIND’, the examiner found that it was similar to the marks ‘ATORKIND’ and ‘ATORKIND-F’. In its reply to the examination report, the plaintiff contended that its mark was different from the cited trademarks. The defence proved that the plaintiff’s reply took the publici juris defence for the term ‘KIND’. Subsequently, the court held that the defendant’s use of the mark ‘MERCYKIND’ did not constitute trademark infringement, and accordingly, the plaintiff’s plea for injunction was dismissed.

Here are some instances wherein the doctrine of prosecution history estoppel can be applied, and prosecution history (I.e., history of the proceedings right from application filing to trademark registration) can be relied upon in trademark infringement cases: –

Trademark includes a generic or descriptive term

If an application is made for the registration of a trademark with a generic or descriptive term, subsequently, the claimant cannot assert in the infringement proceedings that the mark used by the defendant is generic or descriptive. This principle also extends to determining the scope of goods and services. If the claimant in the prosecution stage claims the difference in goods or services compared to another mark, then the claimant can be said to have misclassified the goods at the prosecution stage. However, if the claimant has stated that there exists a difference in goods or services amongst rival companies, then infringement suits will backfire against the claimant.

Failure to make disclosures

Claimants must disclose statements given in the prosecution case that are potentially contradictory to the infringement claims posed in the infringement proceedings. And failure to make said disclosure could lead to the claimant’s incrimination. In some cases, the failure of the defendant to challenge the claimant’s trademarks can lead to prosecution history omission, just as in the Dish TV[2] case.

One can conclude that the doctrine of prosecution history estoppel calls for cautious handling of arguments and submissions at every stage of the prosecution of trademark applications. The arguments should be made considering their implications in the future as it unlocks an ambit for approbation and reprobation, which in most cases is used against the proprietor of the IP.

References:

[1] 2018 SCC OnLine Del 9678.

[2] Dish TV India Ltd. v. Prasar Bharti, 2019 SCC OnLine Del 9141.

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The doctrine calls for cautious handling of arguments and submissions at every stage of the prosecution of trademark applications. The arguments should be made considering their implications in the future as it unlocks an ambit for approbation and reprobation, which in most cases is used against the proprietor of the IP.

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Online Gaming: Challenges in Protection of Intellectual Property

  • February 13, 2023
  • Mathews V C

IP protection is a crucial aspect of the gaming industry as it helps game developers in protecting their creations and ensures that they receive appropriate recognition and adequate compensation for their work. However, protecting IP rights can prove difficult in the digital world, especially in countries where IP laws are weak or nonexistent.

Introduction

The gaming industry in India has been growing and evolving rapidly over the past few years. According to estimates, the Indian gaming industry was valued at approximately US$1.1 billion in 2020 and is expected to reach US$2.1 billion by the end of this year. The massive growth in this domain could be attributed to the increase in smartphone use, growing middle-class population, easy access to high-speed internet connections, rise in disposable income, expansion of e-commerce, and extensive use of online modes of payments. These factors enable companies and investors to tap into opportunities offered by the industry.

The mobile gaming segment, which accounts for more than 70% of the total market value, is the largest and fastest-growing segment of the country’s gaming industry. Moreover, the esports market is proliferating, driven by investments and recognition of esports as a competitive sport.

Challenges Faced by Game Developers

The exponential progress in the field of gaming has brought about numerous challenges such as complications involved in the protection of Intellectual Property (IP), game cloning issues, etc. With the rise of digital distribution, it has become easier for rogue companies to copy popular games and market them as their own, thereby infringing on the original game’s IP and reputation.

One of the biggest challenges in protecting IP in online gaming is the issue of game cloning. Game cloning occurs when one company creates a copy of another company’s game and markets it as its own. This not only infringes on the original game’s IP, but it can also harm the reputation of the original game and the company behind it. Game cloning is particularly prevalent in the mobile gaming industry, where the low barriers to entry and the ease of access to development tools make it simple for companies to create a copy of a popular game. Game cloning may confuse consumers or users, resulting in a loss of revenue for the original game’s developers. Such cloning also harms the reputation of the original game. In some cases, game cloning can also lead to negative reviews and decreased ratings for the original game, further impacting its business performance and success.

Another challenge in protecting IP in online gaming is the issue of piracy. With digital games, it is easy for users to obtain and share illegal copies of the game, which can result in lost revenue for the game’s creators. This is particularly problematic for smaller game developers, who may not have the resources to invest in anti-piracy measures. While some companies have attempted to use digital rights management (DRM) technology to prevent piracy, this can also make the game less accessible for legitimate users and can result in technical issues.

Protection of Intellectual Property

To combat the challenges of protecting IP in online gaming, game developers can take several steps. Firstly, they can register their IP, including trademarks and copyrights, to have a more robust legal standing in the event of an infringement. Additionally, game developers can invest in anti-piracy measures, such as DRM technology, to prevent the illegal distribution of their games.

Another way to protect IP in online gaming is by enlisting the help of the gaming community and collaborating with its members. Game developers can work with players to report game cloning and piracy instances, allowing them to take swift action to protect their IP. Additionally, game developers can engage with players to gather feedback and improve their games, creating a loyal and engaged community invested in the game’s success.

Conclusion

Though the challenges of protecting IP in online gaming are complex and multi-faceted, game developers can mitigate these challenges and ensure the success of their games through IP registration, anti-piracy measures, collaborating with members of the gaming community, etc. The gaming industry is constantly evolving, and the challenges of protecting IP in online gaming will continue to change. In this rapidly changing marketplace, game developers must be proactive in protecting their IP to remain competitive and receive the recognition and compensation they deserve.

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Photo by Ron Lach : https://www.pexels.com/photo/group-of-teenagers-watching-a-man-play-game-on-computer-7849517/

Though the challenges of protecting IP in online gaming are complex and multi-faceted, game developers can mitigate these challenges and ensure the success of their games through IP registration, anti-piracy measures, collaborating with members of the gaming community, etc. The gaming industry is constantly evolving, and the challenges of protecting IP in online gaming will continue to change. In this rapidly changing marketplace, game developers must be proactive in protecting their IP to remain competitive and receive the recognition and compensation they deserve.

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Rooh Afza has Immense Goodwill: Delhi HC Rules in Trademark Infringement Case

  • January 9, 2023
  • Shreya Chaddha
  • Kanika Birje

The Delhi High Court gave its verdict in the trademark infringement battle between Hamdard National Foundation (India) and Sadar Laboratories Pvt. Ltd., and prohibited the latter company from using the mark “DIL AFZA” thereby protecting the trademark “ROOH AFZA”.

In a suit for trademark infringement by Hamdard National Foundation (India) against Sadar Laboratories Pvt. Ltd., the Delhi High Court held that the trademark “ROOH AFZA” possesses immense goodwill and that competitors must ensure that their marks are not similar to it. A two-judge bench, in its judgment[1] held that since the mark “ROOH AFZA” has been used for over a century, it can be considered a strong mark and, thus, restrained the Respondent from using the mark “DIL AFZA” until the suit is disposed of.

Hamdard National Foundation has filed the present appeal against the order[2] passed by a single judge bench of the Delhi High Court on 6th January 2022, rejecting an application for an interim injunction against Sadar Laboratories Pvt. Ltd. Both the marks are used with respect to sweet beverage concentrate. The Appellants claimed that the Respondents were infringing their marks “HAMDARD” and “ROOH AFZA”, and by selling these products under the mark “DIL AFZA,” they were passing off their products as those of the Appellants.

The Single Judge Bench held that the Appellants have to show that “AFZA” has a secondary meaning to claim exclusivity of their product. Therefore, the Court dismissed the application on the ground that they can claim exclusivity only for the mark “ROOH AFZA” as a whole and not just for “AFZA.”

Aggrieved by the order, the present appeal was filed by Hamdard National Foundation seeking a permanent injunction refraining the respondents from using the mark “SHARBAT DIL AFZA” or “DIL AFZA” on the ground that it is deceptively similar to the mark “ROOH AFZA.” The appellants further claimed that the use of this mark would deceive consumers and amount to passing off and also submitted that this would amount to dilution of the Appellant’s mark.

It was claimed that the marks “HAMDARD” and “ROOH AFZA” have been used for a wide range of products and constitute a well-known mark under Section 2(zg) of the Trademarks Act, 1999 owing to their widespread reputation and has therefore acquired goodwill with respect to the class of products pertaining to sweet beverage concentrates.

The Respondent submitted that by virtue of Section 29 of the Trademarks Act 1999, the allegations of infringement are not maintainable. It was submitted that the Appellants do not have an exclusive right over the word “AFZA” and that their mark has been coined by joining the terms “DIL” and “AFZA” and are not phonetically or visually similar. The Respondent submitted that there was no possibility of confusion between the two marks and every other aspect, such as the design and color scheme of “DIL AFZA” is also materially different from the Appellant’s mark. Therefore, there was no possibility of confusion between the two marks.

The Delhi High Court, after considering the arguments from both sides, stated that “AFZA” is an integral part of both “ROOH AFZA” and “DIL AFZA.” The word is neither descriptive nor normally associated with the product; hence, it is material in determining whether there is an infringement of the trademark. The Court further stated that the use of the word “AFZA” lends a certain degree of similarity, and the trade dress of both products is also similar, making the Respondent’s mark deceptively similar to that of the Appellants.

The Court reiterated that “ROOH AFZA” has been used for over a century and is entitled to protection. The mark is a source identifier with a high degree of goodwill and is susceptible to unfair competitive practices. The Court stated that prima facie, the Respondent’s mark lacks a sufficient degree of dissimilarity and hence set aside the order passed by the Delhi High court and passed an ad interim order restraining the Respondent from manufacturing and selling any product under the mark “DIL AFZA” belonging to Class 32 until the present suit is disposed of.

References:

[1] Hamdard National Foundation (India) & Anr vs Sadar Laboratories Pvt. Ltd. [Case No. FAO(OS) (COMM) 67/2022]

[2] Hamdard National Foundation (India) & Anr vs Sadar Laboratories Pvt. Limited [Case No. CS (COMM) 551/2020]

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Photo by Jessica Lewis: https://unsplash.com/photos/qscDBbXBGiI?utm_source=unsplash&utm_medium=referral&utm_content=creditShareLink

The Delhi High Court, after considering the arguments from both sides, stated that “AFZA” is an integral part of both “ROOH AFZA” and “DIL AFZA.” The word is neither descriptive nor normally associated with the product; hence, it is material in determining whether there is an infringement of the trademark. 

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A Perceptive Study of Indian Jurisprudence on the Religious Susceptibility Clause of Trademarks Law

Religion, since time immemorial, has influenced Indian law and society on a political, cultural, and economic level. The country’s rich religious and cultural history has, over the years, been both revered and celebrated around the world.

Our architecture, holy books, epics, symbols, and homonyms all reflect the country’s diverse and rich heritage that encompasses religion. The Indian Constitution further complements this heritage by vesting its citizens with the right to freely profess, practise, and propagate their religion under Articles 25-28,[1] subject to reasonable restrictions.

It is safe to say that religion is deeply intrinsic to Indian society, and inevitably, it has seeped through every facet of the Indian lifestyle, including trade and commerce. Religion, in India, is a sensitive subject, and the use of names of Gods and Goddesses, religious writings, figurines, and scriptures is subject to certain reasonable restrictions under the Indian Constitution as well as other domestic laws, including the trademark law.

Hence, while not entirely forbidden, the proliferation of hypersensitivity with respect to religion and religious scriptures and symbols dictates the jurisprudence around the usage of such marks under the Indian trademark law.

Trademark Law and the Bar of Religion

The use of religious symbols and figurines in commerce and business to draw clients has, over the year, proven to be an effective strategy to encourage growth, considering individuals place a high value on religious symbols and have a solid emotional and spiritual tie to items affiliated with their faith. Such usage, however, is also characterised by the nature of goods and services and the morality or immorality tag duly attached to said goods and services in contemporary society.

Section 9 of the Trademarks Act, 1999 stipulates Absolute Grounds for Refusal of Registration of a trademark.[2] Consequently, Section 9(2)(b)[3] specifically places certain restrictions on the registration of marks that are likely to hurt or insult the religious sensibilities of any class or section of society.

Additionally, the Manual of Trade Marks, Practice and Procedure by the Central Government,[4] in consonance with the provision as has been prescribed under Section 23(1) of the Trademarks Act, 1999,[5] further enumerates a list of notified prohibited trademarks which includes, interalia:

  • Words “Lord Buddha”, “Shree Sai Baba”, “Sri Ramkrishna”, “Swami Vivekananda”, “the Holy Mother alias Sri Sarada Devi”, “Balaji” or their devices and the Emblems of the Ramkrishna Math and Mission or colourable imitation thereof; or
  • Names and pictures of Sikh Gurus, viz. Guru Nanak, Guru Angad, Guru Amar Das, Guru Ram Das, Guru Arjun Dev, Guru Hargobind, Guru Har Raj, Guru Harkrishnan, Guru Tegh Bahadur and Guru Govind Singh;
  • Name and picture of Chhatrapati Shivaji Maharaj;
  • Name and/or picture of the deity of Lord Venkateswara and/or Balaji.

Indian Jurisprudence and the Contours of Religious Susceptibility

The use of names of Gods or Goddesses, religious symbols or figurines per se is not prohibited under the provisions of the Trademarks Act, 1999.[6] In Vishnu Cement v. B.S. Cement Private Ltd.,[7] for instance, the word “VISHNU” was granted registration in the absence of any device of Lord Vishnu, associated with the word mark, by associating the word mark with a personal name, and not a religious sentiment. Again, in Mangalore Ganesh Beedi Works v. District Judge,[8] a relatively liberal approach was taken by the Allahabad High Court in allowing the proprietor to use the trademark ‘GANESHA’ on beedi packets.

However, such usage in relation to certain goods or services may offend the religious sentiments of certain sections of society. In these situations, such marks would fall within the ambit of marks not eligible for registration. For instance, a trademark carrying the name and image of Goddess Meenakshi regarding fertilisers and manure was revoked under the erstwhile 1958 Act.[9] Similarly, in Amritpal Singh v. Lal Babu Priyadarshi[10] the mark RAMAYANA was found incapable of registration. The case acted as the first instance of a blanket restriction being imposed on the registration of the name of a religious book by interpreting the provisions under Section 9(2)(b) of the Trademarks Act, 1999, stricto sensu.

Interestingly, in all these cases, the courts have cited the need to prevent the monopolisation of names of gods and religious symbols and figurines, adding that these words lack enough distinctiveness and merely qualify as common words, which should not be allowed for registration. The Bombay High Court recently refused registration to the word “LAXMI,” citing the aforementioned, on the grounds that it was a common name and thus lacked any distinctiveness to merit registration.[11]   

It is pertinent to note from the aforesaid that the courts have refrained from defining strictly measurable thresholds when it comes to dealing with marks that might have a religious connotation, which is fair and understandable to an extent, considering the sensitive nature of such cases. However, the lack of consistency in the reasoning cited behind these decisions has raised some eyebrows, and the conflicting decisions have left much to be desired.

More recently, the Kerela High Court granted the Attukal Bhagawathy Temple Trust the registration of the “picture of Attukal Deity” and the title “Sabarimala of Women” under Class 42 – a residuary clause (for temple services, social services, welfare services, and cultural activities), citing the need to “prevent unauthorised use of the deity’s picture and title.”[12] The case stands as one of a kind, where a temple trust has been granted registration for carrying out services corresponding to the temple and in the name of a particular religion and goddess, thereby risking the exclusion of an entire sect of devotees from using the picture and title of their beloved deity.

While the grant of such a registration might be in contravention of Article 25 of the Indian Constitution, the decision also sets out a dangerous precedent, risking the monopolisation and commercialisation of services and other activities carried out in the name of faith, which is in stark contrast to the general position portrayed under the Trademarks Act, 1999, and the spirit of secularism as a whole.

 

Conclusion

While the intention behind the courts not defining a straight-jacket formula while dealing with marks that might have a religious connotation is laudable, considering the sensitive nature of such cases, the inconsistency behind the reasoning cited in some of these cases leaves a lot to be desired.

The use of names of Gods, Goddesses, religious writings, figurines, and scriptures is generally publici juris,[13] and registration of the aforesaid should be allowed only in exceptional cases where the prima facie evidence in favour of the usage by the proprietor is so strong in the public mind that the mark could be deemed to have garnered secondary distinctiveness, to the exclusion of all other parties, bar the proprietor.

No doubt, commercial interest forms the cornerstone of business in the contemporary world, but it’s important to remember that religion and business often don’t go hand in hand, and such commercial interest shouldn’t come at the cost of compromising the religious sentiments of the masses.

References:

[1] India Const. Arts. 25-28.

[2] The Trade Marks Act, No. 47 of 1999. India Code, § 9.

[3] The Trade Marks Act, No. 47 of 1999. India Code, § 9(2)(b).

[4] Manual of Trade Marks, Practice and Procedure by the Central Government, accessible at:  https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf.

[5] The Trade Marks Act, No. 47 of 1999. India Code, § 23(1).

[6] S.P. Chengalvaraya Naidu v. Jagannath, (1994) 1 SCC 1 (India). See also, Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., AIR 1955 SC 555 (India).

[7] Vishnu Cement v. B.S. Cement Private Ltd., 1998 (18) PTC 130 (India).

[8] Mangalore Ganesh Beedi Works v. Union of India, (1974) 4 SCC 43 (India).

[9] Sri Meenakshi Tamil Nadu Appl. 1976 IPLR 144 (India).

[10] Amritpal Singh v. Lal Babu Priyadarshi, (2015) 16 SCC 795 (India).

[11] Freudenberg Gala Household Product Pvt. Ltd. v. GEBI Products, MANU/MH/1859/2017 (India). See also, OM Logistics Ltd. v. Mahendra Pandey, 2022 SCC OnLine Del 757 (India) [Registration for the term ‘OM’, was refused] & Shree Ganesh Besan Mills v. Ganesh Grains Ltd., 2021 SCC OnLine Cal 3068 (India) [Registration for the term ‘GANESH’, was refused].

[12] Suo motu Proceedings v. Controller General of Patents, Design and Trademarks, 2013 SCC OnLine Ker 24367 (India).

[13] Bhole Baba Milk Food Industries Ltd. v. Parul Food Specialities Pvt. Ltd., CS (OS) No. 107/2010 (India). 

It is safe to say that religion is deeply intrinsic to Indian society, and inevitably, it has seeped through every facet of the Indian lifestyle, including trade and commerce. Religion, in India, is a sensitive subject, and the use of names of Gods and Goddesses, religious writings, figurines, and scriptures is subject to certain reasonable restrictions under the Indian Constitution as well as other domestic laws, including the trademark law.

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Fluid Trademarks- A Brand’s Alter Identity

Recently in September, 2022 Amul- the most prominent dairy brand in India released a doodle, featuring the famous “Amul girl” celebrating the return of eight Cheetahs in the Kuno National Park, Madhya Pradesh. Over the years, the Brand has managed to position Amul Butter as a household staple through its alternate identity- Amul Girl. The Mascot regularly makes clever puns on the day-to-day political and policy developments while communicating their product’s “utterly butterly deliciousness”.

Fluid Trademarks- A Brand’s Alter Identity

                                                                        Fig: The recent Amul Doodle[1]

Creativity involves breaking expected patterns to look at things differently. The notion of being creative and deploying “out of the box” marketing strategies to drive brand and consumer growth is not a new concept. The ever-increasing competition and the digital revolution have forced brands to go out of their way to stay afresh and ahead of the competition while maintaining their brand identity.

Fluid Trademarks are a relatively new, up-and-coming category of marks that businesses are increasingly using to differentiate their brands and products from the competition. The Morehouse defence[2] (along with Section 43(a) of the Lanham Act)[3]  defines fluid trademarks as marks that change over time (with respect to the original or registered mark) to increase customer engagement. Albeit not explicitly defined, the defence serves as an equitable doctrine that applies when an applicant owns a prior registration “for essentially the same (or substantially similar) mark and goods or services, and for which registration has not been challenged.”

 

What are Fluid Marks?

 

Fluid Trademarks essentially serve as an expansion of the base marks, which are registered and known to the public. What makes these marks “fluid” is the interplay between different iterations of the base mark, which is characterised by the use of creative yet diverse graphical and visual components while maintaining the core features of the base mark.

Many brands frequently deploy such marks to commemorate certain special occasions or landmark happenings, enabling them to keep in touch with the ongoing trends and strengthen brand awareness by promoting interaction with the consumers.

For instance, Google’s ‘Doodle’ could be termed the quintessential fluid trademark, where different variants of the Google logo have been used over the years to mark or memorialise national/international events and festivities. Absolut Vodka is another brand that has been commercialising various iterations of its mark by launching special edition bottles to commemorate events. Some other examples of Fluid Marks being deployed by renowned brands in their marketing strategy include Nike’s ‘Just Don’t Do It’ Swoosh, BMW’s spaced logo citing ‘thanks for keeping distance’ during Covid-19, and Starbucks’ ‘Masked Mermaid’.[4]

While it is appreciable that brands are deploying newer strategies to connect with their consumers, the use of Fluid Trademarks presents some pertinent roadblocks when it comes to IP protection that these brands need to take note of.

 

Protection of Fluid Marks

 

Although there are no explicit provisions or synonymous precedents citing protection for fluid trademarks in India, registering each iteration of the base mark, which would just be deployed occasionally by these brands, would not make much business sense since it would not be cost-effective in the long run.

Section 15 of the Trademarks Act,[5] 1999 accords protection for a series of trademarks, but it is pertinent to highlight here that the section is effective only when all the variants of the base mark could be anticipated in advance,[6] which is not the case with Fluid Trademarks because of their dynamic nature.

Existing commercial identity and recognition of the base mark do accord common law protection to Fluid Marks. Still, it is pertinent for brand proprietors to consider the following essentials while endeavouring for the protection of Fluid Trademarks:

  • Protection for Unregistered Marks: Regardless of whether the brands have moved towards protecting their ‘fluid’ marks or not, the common law still subjects these marks to some sort of protection. In Proctor and Gamble v. Joy Creators,the Delhi High Court held that explicit resemblance need not be a ground to constitute an infringement of the trademark. Substantial resemblance to the primary features of the mark in question might be enough criterion to accord protection to the primary mark.
  • The Degree of Variation: The degree of variation of the base mark should be such that the mark retains its source-identifying features while simultaneously being different enough to command distinguished protection. The public should be able to identify the brand owner based on such iterations of their marks.
  • Likelihood of Confusion: Multiplicity of the base mark to an extent, such that it loses its source-identifying features, might expose the base mark to losing its distinctiveness, thereby putting the base mark at risk of not being synonymous with the proprietor anymore. Hence, the source-identifying features of the base mark should remain intact in the fluid mark to enable the public and trade to associate the fluid mark and the base mark with the proprietor.
  • Copyright Protection: Newer and fundamentally distinct iterations of the base mark may be afforded special protection under the Copyright law since the brands would be subjected to certain rights for their marks even if they are not registered. However, in establishing whether the proprietors would be entitled to a copyright on the mark, the burden of proof shall lie entirely on the proprietors themselves, and hence it would be advisable to maintain a record of the entire creative process, artwork and other resources, that went into the creation of the mark, to establish ownership.
  • Continuing Commercial Use and Identity: The base mark should be subject to constant and uninterrupted commercial use, and there should be no demonstration of abandonment of the base mark. While the base mark should be distinctive and recognised across the market, the unregistered ‘fluid mark’ should also be inherently distinctive and have acquired a secondary meaning within the public.[7]

The importance of having the base mark registered for the fluid mark to have any chance of protection was highlighted in the recent case of McGurr v. North Face Apparel Corp.[8], where the US-based artist, Futura, was denied protection for his recognisable, signature stylised atom design because the base mark, i.e., the shape of an atom, was not registered. The District Court for the Central District of California noted that legally recognising fluid trademarks “would give new meaning to federal trademark law with far-reaching consequences.” The court rather recognised copyright law as a more robust source of protection for entities facing similar situations.

 

Conclusion

 

Fluid Trademarks might be the future of brand building. They have indeed emerged as an excellent tool for businesses across the globe to engage and interact with their customers while simultaneously allowing them to keep in touch with ongoing trends. But as long as the legislature or the judiciary steps up and develops a robust set of guidelines for their protection, it would be feasible to work with an experienced IP attorney who could assist applicants to come up with a smarter plan of action for the protection of their dynamic and ‘fluid’ marks.

References:

[1] https://indianexpress.com/article/trending/trending-in-india/amuls-latest-topical-celebrates-arrival-of-big-cats-in-india-8158728/

[2]  Morehouse Manufacturing Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969) (United States).

[3] The Lanham Act, 1946, § 43(a), 15 U.S.C. §§ 1051-1141 (2006).

[4] These famous logos have been remade for the Coronavirus Age, Media Marketing, Accessible at: https://www.media-marketing.com/en/news/famous-logos-remade-coronavirus-age/

[5] The Trade Marks Act, No. 47 of 1999. India Code, § 15.

[6] Draft Manual of Trademarks, 2015. Accessible at: https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf

[7] Louis Vuitton Malletier v. Dooney & Burke, Inc, 454 F.3d 108 (2d Cir. 2006) (United States).

[8] McGurr v. N. Face Apparel Corp., 2021 U.S. Dist. LEXIS 196568 (United States).

Image Credit: Photo by Eva Bronzini

Fluid Trademarks essentially serve as an expansion of the base marks, which are registered and known to the public. What makes these marks “fluid” is the interplay between different iterations of the base mark, which is characterised by the use of creative yet diverse graphical and visual components while maintaining the core features of the base mark.

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Securing your Data with the Trade Marks Registry

Data privacy has been a cause of concern for individuals and corporates, however, when sharing personal information with government authorities, we tend to overlook this concern. Has one ever wondered how secure her confidential, proprietary, or personal information is while sharing it with a government agency like the Trade Marks Registry?

Indian Intellectual Property Offices come under the Ministry of Commerce and Industry; therefore, they are under the control of the Central Government. The Trade Marks Registry, established in 1940, primarily acts as a facilitator in matters relating to the registration of trademarks in India.

The Trade Marks Registry (TMR) is a public filing system. That means once a trademark application is filed with the TMR, a lot of information is placed on record, including the applicant’s and its representative’s personal data, such as mailing address, and the proof of use of the trademark. The digitization of the Registry in 2017 prompted the current practice of recording information on a public access system.

 

Fundamental Concerns

Mailing Address: Open and easy access to such personal information exposes an applicant to scams and other unwanted solicitations. For instance, scam emails (that appear to have been sent by the TMR seeking maintenance fees) from third parties attempt to deceive applicants into paying additional fees. Everyone recalls how anyone who filed an international application between 2005 and 2015 was duped by international scammers who obtained their information from the WIPO. By oversight, many people were duped into paying huge amounts of money.

If an attorney represents an applicant, the TMR does not send correspondence about the trademark application directly to the applicant. In such cases, the Registry directly communicates with their authorised attorneys. Hence, if an applicant receives any mail relating to their trademark, they should consult their attorneys, who may evaluate it to guarantee that a scam letter is not mistaken for real contact.

Documents to support the use of the mark: Applicants are frequently required to submit documentary evidence to support their applications and commercial use of their marks. Such evidence is often public, but an applicant might disclose information they would not intend to make public, such as bills, financial papers, reports, and other confidential information. There is no mechanism to have them masked or deleted from the TMR’s database if such information is uploaded or disclosed.

 

Initiatives by the Trade Mark Registry

In recent times, the TMR has adopted the practice of restricting public access to evidentiary documents submitted during opposition/rectification proceedings that the competing parties upload on the TMR. However, similar documents filed during any other stage, such as filing and pre-opposition prosecution, are still exposed to public access, even if they are documents or information relating to commercial confidence, trade secrets, and/or any other form of confidential, proprietary, or personal information.

However, the advantage of such an open and publicly available database is that it serves as a countrywide “notice,” which means that an alleged infringer of your trademark cannot claim ignorance of your brand. However, disclosure of such information exposes applicants to email scams and other unwanted solicitations and can also harm their competitive position in the market.

In September 2019, on account of various representations made by numerous stakeholders regarding the TMR’s display of confidential, proprietary, and personal information,[1] a public notice was issued by the Registry, inviting stakeholders’ comments on the aforesaid concerns.

The TMR proposed the classification of such documents into two categories:

  • Category I: Documents that are fully accessible and available for viewing or downloading by the public.
  • Category II: Documents for which details will be available in the document description column, but viewing and downloading will be restricted.

 

Roadblocks and Viable Course of Action

Notably, the Right to Information (RTI) Act, 2005, obligates public authorities to make information on their respective platforms available to the public in a convenient and easily accessible manner. There are some notable exceptions to this rule, i.e., information related to commercial confidence and trade secrets is exempted from being disclosed or made accessible to the public in so far as their disclosure leads to a competitive handicap for the disclosing party. Personal information is also exempted to the extent that its disclosure leads to an invasion of privacy or if it has no relation to public activity or interest.

Hence, it is crucial to understand that while such a classification, as has been suggested by the TMR above, might seem like a good initiative on the surface, the lack of any concrete boundaries assigned to the terms “confidential” or “personal” information leaves the Registry with unquestioned discretion to generalise datasets and to restrict access to documents on the TMR website. A simple example could be data collected by the TMR through pre-designated forms, including Form TM A, Form TM O, etc. Most of these forms generally mandate the submission of certain personal information, including the proprietor’s name, address, telephone number, etc. However, this cannot simply mean that the TMR denies the general public access to such trademark application forms, as this would defeat the primary goal of advertising such marks on the Registry, which is to seek any opposition or evidence against such marks. Thus, while the objective behind such a classification of documents might be well-intended, restriction of access to certain documents might lead to a conflict of interest for the TMR, and it might end up over-complicating the due-diligence processes, leading to increased costs and resources.

Such generalised classifications are, hence, only viable in theory. The TMR might end up entertaining hundreds of RTI applications if it decides to limit access to certain documents, which might be necessary for proper due diligence and prosecution. The free and open availability of documents enables the public to have smoother and easier access to essential records and credentials of the trademark proprietors, thereby allowing the masses to have a better understanding of the prosecution history of important trademarks of the target company.

In the long run, a rather sustainable alternative for the TMR might be introducing a multi-factor authentication system for the parties interested in carrying out due diligence or prosecution against a mark. A multi-factor authentication system for gaining access to the records and documents on the Registry might lengthen the entire process in the short run. Nonetheless, the move could be game changer in the long run because it would allow the Registry to restrict access to confidential and personal data of its users to parties with an original or vested interest in the registration of a mark.

Such an approach would not only enable the Registry to provide open and efficient access to necessary documents to the parties who have an original or vested interest in the registration of a mark, but it would simultaneously vest it with the flexibility to protect the sensitive, confidential, as well as personal data of its users from scammers or non-interested parties.

 

Privacy-by-Design

A Privacy-by-Design approach is the future of the modern-day web, and as long as the Registry does not implement more elaborate internal safeguards on its website and databases to protect the privacy and integrity of public data contained therein, it is always recommended that applicants work with an experienced trademark attorney who can assist applicants in reducing the exposure of their information to individuals or a class of individuals with ulterior motives and mitigating the harm associated with the usage of their data.

References:

[1] Public Notice dated 06/09/2019 re Categorization of Documents on the TMR. Accessible at: https://ipindia.gov.in/writereaddata/Portal/Images/pdf/Catergorization_of_Docs.pdf.

The Trade Marks Registry (TMR) is a public filing system. That means once a trademark application is filed with the TMR, a lot of information is placed on record, including the applicant’s and its representative’s personal data, such as mailing address and the proof of use of the trademark. 

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Gems vs James Bond: Delhi High Court Rules in Favour of Cadbury

In a long-pending case of trademark infringement dispute between Mondelez Indian Foods Pvt. Ltd, formerly Cadbury India Limited (Plaintiff) and Neeraj Food Products (Defendants), the Delhi High Court issued a permanent and mandatory injunction against the Defendant for trading “James Bond”- a chocolate product which bore deceptive similarity to Cadbury’s trademark “Gems”. The Court also imposed a fine of INR 15 Lakhs on the defendant for the copyright infringement.

The lawsuit was filed in August 2005 against the defendant, the sole proprietorship of Mr. Charan Das. Plaintiff 1– Cadbury India Ltd. and Plaintiff 2– Cadbury Schweppes Overseas Limited claimed ownership of the mark ‘CADBURY GEMS’ or ‘GEMS’. The Plaintiffs claim that the defendant launched a chocolate product under the name ‘JAMES BOND’ with the identical colour scheme, layout, and arrangement as the ‘CADBURY GEMS’ or ‘GEMS’ products.

Further, the Plaintiffs also claimed that the product “James Bond” also stood in infringement of the copyright and trademark registration, under its former name, Hindustan Cocoa Products Ltd., bearing registration numbers A-50680/90 and A-49975/89 in respect to a character referred to as “Gems Bond”, often used in various marketing campaigns of their product.

                                           Figure: Packaging of Cadbury Gems and James Bond[1]

Hence, the lawsuit sought a permanent and mandatory injunction and damages for trademark and copyright infringement, passing off, unfair competition and other relief.

The Court observed that the packaging of the Plaintiffs’ ‘GEMS’ product is very unique, with illustrations of colourful button chocolates on a blue/purple base with the mark ‘GEMS’ depicted in a number of colours and a splash in the middle, which is very well known to the young and the old alike.

Numerous “GEMS” advertisements feature the phrase “GEMS BOND,” and some examples have also been made public. The defendant’s packaging features colourful button chocolates and the mark “JAMES BOND”/”JAMEY BOND” with the same blue/purple foundation. The trademark “GEMS” appears on a brown background on both the plaintiff’s and the defendant’s products. The label and packaging for the Plaintiffs’ product share the same colour palette as the Defendant’s product. Additionally, the marks are misleadingly and confusingly similar. Therefore, the court categorised the situation as an instance of res ipsa loquitur.

The Court referred to the Supreme Court’s decisions in Corn Products Refining Co. v. Shangrila Food Products Ltd., (1960) 1 SCR 968 and Parle Products (P) Ltd. v. J.P. & Co., Mysore, in which the contention of the test of infringement and deceptive similarity of competing marks (1972) 1 SCC 618 was settled, wherein it was observed that “the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them and the Court has to see the similarities and not the dissimilarities.”

The Court also placed reliance on the decision of ITC Ltd. v. Britannia Industries Ltd. 2016 SCC OnLine Del 5004, in which it was observed that “Where the product is eatable like a biscuit, the colour and the colour scheme of the packaging play an important role in the consumer making an initial choice and in enabling a discerning consumer to locate the particular brand of a manufacturer.”

Further, while discussing the concept of ‘initial interest in the same judgment, the Court relied on Baker Hughes Limited v. Hiroo Khushalani, while observing, “In some cases, however, it is also possible that a purchaser, after having been misled into an initial interest in a product manufactured by an imitator, discovers his folly, but this initial interest, being based on confusion and deception, can give rise to a cause of action for the tort of passing off as the purchaser has been made to think that there is some connection or nexus between the products and business of two disparate companies.”

However, that may not be entirely true when it comes to products like biscuits. The packaging of a biscuit does become associated with the manufacturer or brand. The colour of the wrapper would certainly play an important role.

In the present case, the Court opined, inter alia, that the product- ‘GEMS’ is also usually liked and consumed by small children in both urban and rural areas. Therefore, in such a case, the test shall not be limited to that of absolute confusion, but even the likelihood of confusion shall be deemed sufficient. Hence, the product’s layout and the colour combination of the packaging play a vital role when making a purchase. Moreover, chocolates are not merely sold in retail stores or outlets but also at roadside shacks, paan shops, patri vendors, kirana stores and stalls outside schools, etc. Thus, considering that the class of consumers the product is targeted at is children, the likelihood of confusion stands high.

In conclusion, it can be inferred by the Delhi High Court’s decision that the test for the likelihood of confusion stands on several factors, including the product category in dispute and the consumer demographic it appeals to. As observed by the Court, ‘almost everyone’s childhood is associated with Cadbury Gems’; the product was popular amongst many consumers of all ages and across socio-economic backgrounds. Further, the strikingly similar colour scheme of the packets and layouts and the phonetic sounds of the two products were enough to inspire a “likelihood of confusion” at the point of purchase by the consumer, which led the Court to take a firm stand in favour of the Plaintiff.

References: 

[1] https://www.livelaw.in/pdf_upload/pms26072022sc3932018182501-427663.pdf

Image Credits: Photo by Hans Schwarzkopf from Pixabay 

It can be inferred by the Delhi High Court’s decision that the test for the likelihood of confusion stands on several factors, including the product category in dispute and the consumer demographic it appeals to. As observed by the Court, ‘almost everyone’s childhood is associated with Cadbury Gems’; the product was popular amongst many consumers of all ages and across socio-economic backgrounds.

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Green Intellectual Property

The damage to the environment has over the last decade or so been a topic of paramount importance. Changes to the same can now be felt closer to home rather than in some remote corner of the globe. The Intergovernmental Panel on Climate Change (IPCC) released a report in 2021 stating that climate change is “widespread, rapid, and intensifying”. We are at the precipice of an important stage in the history of our planet. Never before has technology reached the levels that we have now. It is time to optimally harness technology to protect the environment to sustain future generations. With the literature currently in the media, there is definitely awareness of the damage being caused.

Green technology and innovation thereof will be of paramount importance, and Intellectual Property (IP) rights play a major role. The term ‘Green Intellectual Property’ refers to the protection of innovations in the field of green technology. The UN Rio Declaration on Environment and Development of 1992 stated that Green Technology means “environmentally sound technologies that protect the environment, are less polluting, use all resources in a more sustainable manner, recycle more of their wastes and products, and handle residual wastes in a more acceptable manner than the technologies for which they were substitutes“.

WIPO is playing a huge role in the acceleration of Green IP through WIPO Green (https://www3.wipo.int/wipogreen/en/). “WIPO GREEN is an online platform for technology exchange. It supports global efforts to address climate change by connecting providers and seekers of environmentally friendly technologies.”

India, with a huge focus on agriculture, could see smart agriculture come to the forefront. We could also see the rise of water and soil conservation mechanisms, soil re-carbonization and carbon sequestration, etc. In fact, since 2016, over half of the patents granted in India were related to green technologies. In sheer numbers, 61.186 patents were granted in this field, and over 90% of these technologies addressed waste management and alternative energy production methods.[1]

Green IP is likely to lead to the rise of a huge amount of innovation. With innovation comes patent protection. Secrecy may be maintained to maximise market position for innovative technologies that will result in the rise of trade secrets. The aesthetic appearance of new innovations will come under the ambit of protection of design rights. Design rights may also be a valuable right as the use of 3D printing grows as a potentially more sustainable manufacturing technique. The rise of Green IP will also result in the rise of certified trademarks. Software and data evaluation will also play a decisive role in improving existing technologies in an environmentally friendly way. We will also see the rise of technology transfer licensing agreements as companies look to leverage technology developed by others to their advantage. Thus, the importance of Green IP will percolate to an increase in IP protection as well.

For those who are trailblazers in the field, having an IP checklist and an IP strategy will be of importance. Apart from this, the Indian government may also need to look at more subsidies and rebates for the development of Green IP. In a recently published report, Green Future Index 2022, India was ranked among a contingent labelled as “climate laggards”. The country’s COVID-19 recovery plan favours traditional industries, which is hampering the move to greener policies.

Nevertheless, subsidies in official fees for start-ups and MSME’s have pushed these industries to protect their intellectual property. Such a change can also be effected with rebates for the filings for Green IP. With the problems brought about by damage to the environment being closer to home, it is time for India to be at the forefront of the development of Green IP.

References:

[1] https://timesofindia.indiatimes.com/india/every-2nd-patent-granted-since-2016-relates-to-green-tech-most-linked-to-waste-alternative-energy/articleshow/89420047.cms

Image Credits: Photo by JudaM from Pixabay 

For those who are trailblazers in the field, having an IP checklist and an IP strategy will be of importance. Apart from this, the Indian government may also need to look at more subsidies and rebates for the development of Green IP.

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Squaring the Snags of Online Hearings

The Indian Trademarks Registry (“TM Registry”) had always extended the facility of virtual hearings much before the onset of the pandemic. However, not many IP attorneys and Trademark Agents preferred to utilise this resource due to issues surrounding the system and the process.

Recently, the Delhi High Court, in the case of Pawandeep Singh v. The Registrar of Trademarks & Anr., W.P.(C)-IPD 7/2022 & CM 30/2022, pointed out numerous inefficiencies in the virtual hearing system of the Trademarks Registry and instructed the concerned authorities to streamline and optimise the current system.

The petitioner in this matter had filed a writ petition against the orders passed by the Registrar of Trademarks in respect of Application No. 3981639 for the mark “SWISS”. The grouse of the petitioner was that the order was passed without affording a hearing to the petitioner, which violated the principles of natural justice.

The agent who had logged in for the hearing was kept in the virtual waiting room at the time of the hearing and was not admitted. Hence, the petitioners were not allowed to put forth their oral arguments. However, it was officially recorded that submissions were heard. The petitioner informed the Hearing Officer via email regarding the situation, but no response was received. The petitioner was further surprised when he received the refusal order.

The ‘Hon’ble Court, based on the submissions made by both the parties, recorded the following observations:

  1. The cause list for hearings at the Registry is published monthly.
  2. The TM Registry’s virtual platform allows only three people to be present in the hearing at any given time, and the remaining attendees are kept in the waiting room.
  3. An order that the Hearing Officer passes has two parts, the templated portion and the non-templated portion where the Hearing Officer types out the order. The templated piece is not editable and states that the matter was set down for hearing and, eventually, the hearing took place on a particular date.

In this matter, the Hearing Officer did admit that the petitioner in the present case was not heard, and the templated portion of the impugned order is contrary to the fact. The illegality is compounded when the order captures that the hearing took place, whereas the counsel was kept waiting in the waiting room but was not admitted.

The Court remarked and directed that the Controller General of Patents, Designs & Trademarks must devise a proper mechanism for holding show cause hearings by including the following features:

  1. Publication of cause list notices daily.
  2. Utilising a platform with an open link.
  3. Matters should be called serial number-wise for certainty and convenience of the applicants.
  4. Removal of templates from the order statements which may vary on a case-to-case basis.
  5. Some extra space is made available for Senior Examiners to put their brief reasons for allowing or refusing the application.

The Court held that a proposal on behalf of the Controller General of Patents, Designs & Trademarks in respect of holding show cause hearings on the points outlined above should be placed on record within two weeks. It may also consult the IP fraternity and stakeholders if required.

The matter has also brought to the forefront the inefficiencies of the online hearings, which stakeholders have long since been bringing to the attention of the Registry. With online hearings gaining prominence, the suggestions of the Court are the right steps towards a more efficient and transparent system that will stand the test of time.

Image Credits: Photo by Sora Shimazaki from Pexels

With online hearings gaining prominence, the suggestions of the Court are the right steps towards a more efficient and transparent system that will stand the test of time.

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