Facets of Conceptual Similarity and Semantic Similarity in Trademark Infringement Cases

  • April 13, 2023
  • Shreya Chaddha
  • Shreyali Yadav

In this article, we aim to anatomize the facets of conceptual similarity and semantic similarity vide the many judgments that have envisaged their principles and other cognate principles that arise when the question of conceptual similarity is effectuated between rival trademarks.

Introduction

The idea that rival marks should be assessed as a whole rather than in terms of their individual components is a well-established and widely accepted tenet of trademark law. Confusion, likelihood, similarity, etc. – these terms are allied to the concept of trademarks. An infringement action calls for a comparison of trademarks based on various factors. One crucial factor, and very often not considered part of strategies, is “conceptual similarity”. A test to the latter’s effect, namely the conceptual similarity test, compares competing marks based on the underlying idea or concept that the marks imply or portray. To portray instances, what has been the idea behind the inception of the impugned mark? Whether solely a word mark has been used or a logo/device has also been attached to the word mark? Like many other facets of trademark law that have been established through judicial acumen, the test of conceptual similarity is also one such. 

Similarity vis-à-vis trademarks: Conceptual Similarity and Semantic Similarity

The concept of similarity is extremely crucial to the edifice of trademark law. As per Section 2(h) of the Trademarks Act, 1999, the marks will be deemed to be deceptively similar if the resemblance is likely to deceive or cause confusion. The said section implies that the resemblance should be such that it produces a hazy understanding of the rival mark being that of the victim mark. While certain marks are visually and/or phonetically similar, some marks do not fall in the latter category; however, they are still considered infringement. Here is where conceptual similarity steps in.

The conceptual similarity test compares competing marks based on the underlying idea or concept they indicate or project. The main issue in such a test is whether or not the average man might be misled or confused by two conceptually similar marks because of their similarity. This concept can be better explained with the help of the Delhi High Court judgment in the case of Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd[1].  The marks in the present case were “OFFICER’S CHOICE” and “COLLECTOR’S CHOICE/OFFICER’S SPECIAL”. While a prima facie view herein would indicate a lack of phonetic similarity, the conceptual similarity test brings in a pivotal and exciting aspect to consider the words’ semantic synonymity. Citing the decision in the case of Corn Products v. Shangrila Foods[2] (wherein the marks “GLUVITA” and “GLUCOVITA” were considered), the semantic similarity was relied upon to decide on the basis for infringement beyond the normal binds of visual or phonetic similarity.

The above-mentioned case is a pioneer in the establishment of principles pertaining to semantic similarity. It has, for instance, referred to various case studies, for instance, the “Distinctive Brand Cues and Memory for Product Consumption Experiences[3]“, wherein one line is of utmost relevance to this article – that the conceptual background behind the brand name is what triggers the recollection of memory in a consumer, and not the brand name in itself. Further, the word “Collector” can be seen as a hyponym of the word “Officer”, in common parlance, both signifying a “Person holding an office of authority”.

Thus, since both trademarks in the current case are used in the same context for one single product, that is whisky, when a consumer is forced to decide on a purchase and is presented with the product of the appellant with the mark “Collector’s Choice”, the word “Collector” will cause him to think of the cue “Person holding an office of authority,” which is related to the word “Officer”. This signal may induce the consumer to mistakenly believe that the appellant’s whisky is the respondent’s or cause a false recollection that may confuse consumers. Thus, this concept of semantic synonymy is highly relevant to trademark jurisprudence and can be subdivided as follows.

Expanding horizons of synonymy

The general understanding of synonymy is the phenomenon of two or more different linguistic forms with the same meaning. To this extent, synonymy can further be categorized. For example, synonyms of different degrees signify words with the same (although extended) meanings, but the degree of effectuation differs. For instance, fury, rage, and anger are synonyms with the same extended meaning of emotional excitement induced by intense displeasure. In contrast, anger is used commonly without a substantial degree of intensity, rage focuses on a loss of self-control, and fury empathizes with a rage so violent that it may approach madness. Similarly, are concepts of synonyms with different emotions, styles, collocations, etc.

What becomes vital in each case, thus, is to establish the degree of synonymy with respect to other factors of similarity, which has been highlighted in the recent case of Metis Learning Solutions Private Limited v. Flipkart India Private Limited and Ors.[4] The court held that conceptual similarity could not be judged in isolation, and the overall phonetic, visual or structural similarity is also required to be seen holistically.

In Make My Trip (India) Private Ltd v. Make My Travel (India) Private Limited[5], the Court had to examine any deceptive similarity between the marks MakeMyTrip and MakeMyTravel. From a prima facie view, one part of the mark “MAKEMY” is identical, visually and phonetically, and hence, warrants no application of conceptual similarity. The test comes into the picture by comparing the rival marks’ latter half – “TRIP” and “TRAVEL”. While these two words are neither identical visually nor phonetically, they are synonyms and convey a similar idea with respect to the services they provide. Thus, the marks could be considered deceptively similar for establishing an infringement action.

Hyponymy & Hypernymy: An extended branch of conceptual similarity

Alongside synonymy are two other important concepts we must look at – hyponyms and hypernyms. As per the Oxford English Dictionary, a Hypernym is a “word with a broad meaning constituting a category into which words with more specific meanings fall; a subordinate”. An example of this effect would be that ‘colour’ is a hypernym of ‘blue’, ‘dog’ is a hypernym of the breed ‘dachshund’, etc. On the contrary, a Hyponym is a “word of more specific meaning than a general or super-ordinate term applicable to it”; for example, ‘Spoon’ is a hyponym for ‘cutlery’, etc. Having a basic conceptual understanding of Hypernyms and Hyponyms, we now look at their relevance in trademark infringement actions.

What hyponyms and hypernyms do is create a sense of inclusion. Sharing a hyponym in the form of a conceptual background would make the consumer think of the same thing, making it harder for him to remember the name of his favoured brand. Similarly, when two or more brand names are similar, for example, men’s perfume brands being called rugged and macho, while the meaning of each of these terms may vary according to the situation, in the context of men’s perfumes, they all refer to masculinity, and hence, are very likely to confuse the relevant category of consumers.

Conclusion

Time and again, courts have taken the lead and strived to bring into the picture the diverse ways trademark infringement can occur. Nevertheless, a restricted and cautious approach must be followed in applying the concepts of conceptual similarity (including hypernyms and hyponyms), semantic similarity and synonymy. Best explained using an example, let us consider the men’s perfume example. Would trademark protection of synonyms cover all equivalent words, preventing the naming of any masculine fragrances after any phrase synonymous with “Tough”? Such situations may lead to malpractices such as monopoly, squatting, etc. Thus, to protect words that share a sense relation, a restrictive application must be made, preserving only those sense relations of the term where the context in which they are applied to the brand name is the same, causing identical concepts to be conveyed to consumers.

References:

[1] Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd, FAO (OS) 368 and 493/2014.

[2] Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142.

[3] International Journal of Research in Marketing [22 (2005) 27-44].

[4] Metis Learning Solutions Private Limited v. Flipkart India Private Limited and Ors., CS (COMM) 393/2022 and Crl. M. A. 12694/2022.

[5] Make My Trip (India) Private Ltd v. Make My Travel (India) Private Limited, 2019 (80) PTC 491 (Del).

Image Credits:

Photo by Robert Anasch on Unsplash

In Make My Trip (India) Private Ltd v. Make My Travel (India) Private Limited[5], the Court had to examine any deceptive similarity between the marks MakeMyTrip and MakeMyTravel. From a prima facie view, one part of the mark “MAKEMY” is identical, visually and phonetically, and hence, warrants no application of conceptual similarity. The test comes into the picture by comparing the rival marks’ latter half – “TRIP” and “TRAVEL”. While these two words are neither identical visually nor phonetically, they are synonyms and convey a similar idea with respect to the services they provide. Thus, the marks could be considered deceptively similar for establishing an infringement action.

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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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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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Navigating the Legal Quagmire of Limitations on Trademark Oppositions

Though the pandemic seems to be receding across the world, the problems that it has created seem to be multiplying, and the legal system has been grappling trying to address the issues affecting business. The High Court of Delhi, in a recent judgment, Dr. Reddys Laboratories Limited vs. the Controller General of Patents, Designs and Trademarks, sent shockwaves through the system.

The petitioners had filed writ petitions against the haphazard manner in which the Controller General of Patents, Designs and Trademarks (“CGPDTM”) had handled the filing of Trademark opposition proceedings during the pandemic. The petitioners were aggrieved when they discovered that opposition proceedings couldn’t be initiated on the online portal of the Trademarks Registry post the statutory timelines of four (4) months, as prescribed under Section 21 of the Trademarks Act, 1999. However, the Supreme Court in Suo Moto Writ (Civil) No. 3 of 2020, titled In Re: Cognizance for Extension of Limitation, had extended the statutory time period in India. Additionally, the Trademarks Registry also refused to accept such oppositions when filed manually. Further, the Trademarks Registry went on to issue the Certificates of Registration even though they were aware of the requests to initiate opposition.

The Supreme Court had clearly stated in the aforementioned order that “the time period between March 15, 2020, and February 28, 2022, has to be fully excluded for the purpose of calculating limitation under all enactments and statutes, both before judicial and quasi-judicial bodies.” The CGDPTM had also reaffirmed the above order vide its notice of January 18, 2022. The petitioners argued that the non-acceptance of the oppositions was in contravention of the Supreme Court order, especially as it had been reaffirmed by the CGDPTM as well.

The officials of the CGDPTM also informed the court that more than 4 lakh registration certificates had been granted during this period. Further, vide an affidavit submitted by the CGDPTM, it was affirmed that 113517 oppositions were filed between the periods of March 24, 2020, and February 28, 2022. It was also mentioned that “6,000-7,000 oppositions have been filed during the pandemic period beyond the four-month period of limitation, and the same have also been entertained.” Thus, the CGDPTM has been accepting oppositions in a very haphazard manner, undermining the rights of those who wished to initiate opposition actions and has also issued Certificates of Registration, granting challengeable rights to applicants.

As the limitation period in terms of the orders of the Supreme Court would have been extended for filing oppositions to the said applications until the expiry of 90 days from March 1, 2022, i.e., till May 30, 2022, the High Court of Delhi has instructed as follows:

  • Opponents must send emails expressing their interest in opposing any of the marks until May 30, 2022. On receipt of any such email, even if the mark currently stands as opposed, the CGDPTM is to facilitate the filing of the opposition either through the online platform or by accepting the same manually.
  • If the mark stands registered, and in the absence of any request to oppose the marks by May 30, 2022, the mark will continue to stand registered.
  • For those marks that stand as registered, if the opposition is received by May 30, 2022, the Certificates of Registration shall stand suspended till the opposition is decided upon.

The High Court of Delhi has also gone on to caution the CGDPTM and instructed them to develop a mechanism to dispose of the huge backlog of opposition currently pending at their end.

Right holders, especially those who are in receipt of the Certificates of Registration, will need to keep their fingers crossed that no oppositions are filed by May 30, 2022. Furthermore, infringement proceedings may not be initiated against infringing parties until the May 30, 2022 deadline.

The haphazard handling of the opposition proceedings in this time period has created both a logistic nightmare as well as hampered the rights of numerous applicants. With more skeletons coming out of the closet of the CGDPTM, it remains to be seen how they are handled. The High Court of Delhi needs to be lauded for taking such a sensitive issue and handling it at the earliest.

Exciting times to navigate through the curveballs thrown by the CGDPTM. 

Image Credits: Photo by Markus Winkler on Unsplash

The haphazard handling of the opposition proceedings in this time period has created both a logistic nightmare as well as hampered the rights of numerous applicants. With more skeletons coming out of the closet of the CGDPTM, it remains to be seen how they are handled.

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PhonePe Vs. BharatPe Case: No Exclusivity Over a Part of a Mark, Not Even by Misspelling It

Registration of the (whole) mark does not confer an exclusive right over a part of a registered mark. Similarly, no exclusivity can be claimed over a descriptive mark or a descriptive part of the mark, not even by misspelling it. This was the ruling of the Delhi High Court in a recent Trademark Infringement & Passing Off matter between PhonePe Pvt. Ltd. (Plaintiff) & Ezy Services & Anr. (Defendants). Hon’ble Justice C. Hari Shankar affirmed some of the fundamental principles of the Trademark Law, which have been asserted by various Courts from time to time.
PhonePe’s Perception:

PhonePe in its plea before the Delhi High Court stated that: a consumer of average intelligence and imperfect recollection, on seeing the defendants’ mark BharatPe would immediately associate it with PhonePe.

Well, how often is our intelligence questioned and challenged, even without our knowledge? Considering the deep inroads that technology has made into our lives now, I reckon all of us are reasonably aware of the prominent digital wallets in the market. Knowing that, it is contestable how many of us would have wondered about any association between these two marks purely based on the similarity in their suffix “Pe”.

Background:

The plaintiff had filed a suit before the Delhi High Court seeking a permanent injunction and other remedies against the defendants’ use of ‘Pe’ or any deceptive mark identical and/or similar to the plaintiff’s trademark ‘PhonePe’. The plaintiff alleged that the use of the word “BharatPe” itself, infringed the plaintiff’s registered trademark and amounted to passing off.

The plaintiff in its suit claimed that “Pe” is an essential, dominant, and distinguishing feature of the plaintiff’s registered trademarks. Plaintiff further claimed that “Pe” is an invented word, not to be found in the English dictionary and when combined with “Phone”, which is an ordinary dictionary word with a well-known meaning, “Pe” becomes the dominant and essential feature of the plaintiff’s trademark “PhonePe”.

Court’s Findings and Rulings:

The Hon’ble Delhi High Court’s decision in this matter seems to be premised based on following three principles, which have already been established earlier in multiple Judgments by various Courts:

a) The Anti-Dissection Rule:
The Hon’ble High Court observed that the registered mark ought not to be dissected for the purpose of comparison with the conflicting mark. However, the Court acknowledged the exception of “dominant mark” test, under which, if any part of the plaintiff’s mark was found to be dominant, the Court was required to examine whether such dominant part of the plaintiff’s mark was infringed by the defendant’s mark.

The plaintiff contended that “PhonePe” was a combination of the words “Phone” and “Pe”, where “Phone” was a common dictionary word and the suffix “Pe” was not a dictionary word, which made it the dominant feature of the plaintiff’s trademark. Similarly, in the defendant’s trademark, the word “Bharat” was publici juris and “Pe” formed the dominant element of the mark “BharatPe”. However, the Court was not convinced on the argument and did not find “Pe” to be the dominant part, therefore, the marks were not allowed to be dissected for the comparison.

The Court ruled that while applying the above principles to the facts in hand, the following positions emerged i.e. (i) “PhonePe” and “BharatPe” were both composite marks. (ii) the marks could not be dissected into “Phone” and “Pe” in the case of the plaintiff and “Bharat” and “Pe” in the case of the defendants; and (iii) the plaintiff could not claim exclusivity over the word “Pe”, as it was merely a misspelling of the word “Pay”, hence no infringement could be claimed on the basis of part of a registered trademark.

b) Separate Registration of a Part of a Composite Mark:
The Hon’ble Court further observed that since the plaintiff did not have any registration over the suffix “Pe”, therefore, it could not claim any exclusivity on the same. As a result, the question of infringement did not arise because of the alleged similarity between the non-essential, unregistered part of the composite mark.

In the cases of South India Beverages1 and P.K. Overseas Pvt. Ltd.2, the Delhi High Court explained the relation between the anti-dissection principle and the “dominant/essential feature” principle. The division bench relied on a passage from McCarthy on Trademarks and Unfair Competition, earlier cited in the case of Stiefel Laboratories3, which stated that “The rationale for the rule is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole, not by its component parts. However, it is not a violation of the anti-dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole”.

c) Non-exclusivity of Descriptive or Generic Marks or Parts of Marks:
The Hon’ble Court observed that a party cannot claim exclusivity over a descriptive or generic mark or a part of the mark that is considered descriptive. The Court went on to observe that the plaintiff could not claim that the mark was non-descriptive merely by misspelling the descriptive word. However, the Court admitted an exception to this principle in situations where the descriptive or generic mark had acquired distinctiveness or secondary meaning.

The Court further observed that had the plaintiff been able to establish that the word “Pe” had acquired distinctiveness and secondary meaning, it might have been able to make out a case of infringement. However, in this case, the plaintiff’s use of the mark “PhonePe” was only since 2016 and even the defendants claimed to have extensive use of their mark “BharatPe”. Therefore, the plaintiff had not been able to make out a prima facie case.

In the case of Marico Limited4, the Court dived deep into the concept of acquired secondary meaning of a descriptive mark and held that while deciding whether a descriptive mark is registrable or not the “Courts should ordinarily lean against holding distinctiveness of a descriptive trademark unless the user of such trademark is over such a long period of time of many-many years that even a descriptive word mark is unmistakably and only relatable to one source i.e. the same has acquired a secondary meaning”.
1 South India Beverages v. General Mills Marketing, AIR 1965 SC 980
2 P.K. Overseas Pvt. Ltd. v. Bhagwati Lecto Vegetarians Exports Pvt. Ltd., 2016 SCC OnLine Del 5420
3 Stiefel Laborataries v. Ajanta Pharma Ltd, 211 (2014) DLT 296
4 Marico Limited v. Agro Tech Foods Limited, 2010 (44) PTC 736 (Del.) (DB)
The Marico case also discussed the nature and character of a misspelt word when used as a trademark and held that “if partly tweaked descriptive words and expressions of English language are claimed to be coined words, the same would result in a grave and absurd situation because a non-tweaked word being a completely descriptive word will in fact be deceptively similar to the tweaked descriptive English language word or expression of which registration is obtained”.

Conclusion:

The Hon’ble Court ruled that there was no case for grant of interim injunction against the defendants. The Court observed that except the common word “Pe” (suffix) it cannot be established that the marks “PhonePe” and “BharatPe” are confusingly or deceptively similar. Barring the suffix “Pe” these are two different words altogether with no commonality whatsoever.

The important legal positions that emerge from this decision are:
(i) In accordance with the “anti-dissection” rule, it was held that the composite marks were to be considered in their entirety rather than truncating or dissecting them into individual components/elements.
(ii) The registration of a composite mark cannot confer any exclusive rights over any part of such registered mark unless otherwise, such part is the dominant part of the registered mark.
(iii) No exclusivity can be claimed, over a descriptive mark, or a descriptive part of a mark, not even by misspelling it, unless otherwise the descriptive mark or descriptive part has attained distinctiveness, or it has acquired a secondary meaning.

This case has surely reaffirmed some of the basic principles of trademark laws that prohibit adaptation and exclusive claim over descriptive and generic marks or part of the mark.
Read about the important legal positions that emerge from the PhonePe V. BharatPe decision in this article.

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BigBasket Vs. Daily Basket Saga

Perils of using generic/descriptive terms as a “Trademark”

On February 21, 2021, when Ramesh Vel, the founder of a Coimbatore based startup “Daily Basket” tweeted about BigBasket’s alleged bullying through a cease & desist notice, no one ever thought that it would become such a big issue. Even before the news could spread, Daily Basket was prompt enough to create a page https://bbisabully.com/ to put forth their perspective and even posted a copy of the notice. They did not stop at this but went on to launch an online campaign #BoycottBigBasket.

This prompt and aggressive move surely garnered sympathies as well as support for Daily Basket and BigBasket was at the receiving end as it was perceived as a bully in the entire episode. Though it may not have caused any impact on BigBasket’s revenue, the Company cannot deny that the episode did put a dent in its brand reputation.

The Notice:

The cease & desist notice dated Feb 17, 2021, was sent to the startup Letsdaily India Private Limited, asking them to refrain from using the mark “Daily Basket” and any other name or a mark containing the term “Basket” and also sought Rupees Two Lakhs towards the cost of the legal notice.

Who owns/claims what?

Before analyzing the matter, let us understand the claims and ownerships over the subject marks.

Looking at the trademark database, BigBasket seems to have registered several variants of its brand “BigBasket” in various classes i.e. 29, 30, 31 & 35 (food & related goods and online marketplace). However, the record does not show or mention any use or registration of the term “Basket” by BigBasket independently.

Daily Basket claims to have started its business around August 2020 but there is no record of any trademark application/registration by them.

The term “Basket”:

Currently, there are two “Basket” marks that seem to have been registered in India; one being in Class 35 where the application is dated 2014 (appl. no. 2779571) and the other one in Class 31 where the application is dated 2017 (Appl. no. 3470365).

The mark “Daily Basket”:

With regard to the mark “Daily Basket”, currently there are 3 marks in the records of Trademark Registry in Class 35. The first “Daily Basket” mark (appl no. 1807585), which was filed way back in 2009, could not proceed to registration and the same stands abandoned.

The other “Daily Basket” mark (appl. no. 3042971), which stands “registered”, was filed in the year 2015. The third “Daily Basket” mark, which was filed in the year 2017, (app. no. 3491637) was refused registration due to various reasons including the presence of conflicting marks in the same class.

Interestingly, during the prosecution of the last two marks, the examiner did not cite “BigBasket” as a conflicting mark even though BigBasket’s trademarks were on record or registered during that period and in the same class – related to the same or similar services.

Other similar marks with prefix/suffix “Basket”:

There are over a dozen trademarks with suffix/prefix “basket” including, Oven Basket, Nature’s Basket, Ocean Basket, Fresh Basket, Health Basket etc. which appear to be in existence (registered or filed or used) on the Trademark Registry’s record as early as 1999 which is way prior to BigBasket’s coming into existence i.e., 2012.

Similarly, there are another over a dozen marks with prefix/suffix “basket” including Fbasket, EBasket, 4Basket, NutBasket, Medbasket, TekBasket, MilkBasket, Badi Basket, Aqua Basket, Pure Basket, Spin Basket, Eco Basket etc. which were registered post BigBasket’s trademark registration and most of them are in use and in relation to the goods/ services in Class 29, 30, 31 and 35.

BigBasket’s Claim – fair or unfair?

As per the cease & desist notice, BigBasket’s primary objection was over Daily Basket’s use of the term “Basket”. A simple comparison between the two marks (as shown in https://bbisabully.com/)makes it clear that there exists no similarity between the two logos. Therefore, the main issue in the subject matter was over the term “Basket”.

Without dwelling deep into the Trademark Law, which has already been done in many of the previously authored articles, it is abundantly clear that a term like “Basket” (in class 35) would be considered a descriptive mark hence non-registrable (we need not get into the nitty-gritty of how the other two “Basket” marks were registered).

Further, even though BigBasket has been threatening and opposing registration of various other marks with Prefix/Suffix “Basket”, the fact that it did not even attempt to register the mark “Basket” itself makes the strength of the contention fairly obvious.

What goes against BigBasket?

A plain reading of the cease & desist notice explains the seriousness of the matter. It is beyond anyone’s understanding how and on what ground one would claim exclusive ownership over the term “Basket” especially when a) you don’t have any registration over it; b) there are several already registered marks (similar) some of them being prior to even their commencement of business, and c) the mark being a descriptive one.

Perhaps, no one can deny the fact that BigBasket’s claims were far-fetched and demands overly ambitious. It is quite possible that they would not have been apprised with the basic principles of trademark law or rather the whole approach was very casual in nature.

It happens in many cases where the trademarks applications are opposed and users are threatened with legal notices even when there is no strong case. This is because, in India, it is not a common practice to fight back or take legal action for groundless threats.

What are the lessons learnt?

Getting involved in personal capacity must be avoided when a matter can be and should be handled by experts who know the ins and outs of the legal implications. In the instant case, the founder of Daily Basket got involved personally and used digital and social media to level allegations. The fact that BigBasket chose to respond in a clarification mode also did not go down well and the whole matter got murkier.

Had this been handled by their lawyers instead (considering the substance in the notice), it would have simply been concluded without any clamour and commotion. Involvement of founders or CEOs is advisable and welcome only in closed-door negotiations or dispute resolutions but definitely not in public forums.

Is it wise to adopt a generic mark?

Adoption and registration of generic and descriptive marks always have consequences, both in the short term as well as the long term. In the short term, it is an uphill task to get these marks registered, whereas in the long term one must keep contesting the use/registration of similar marks by third parties.

There is always a fraction of people who would advise you to adopt a generic/descriptive mark which makes the marketing team’s job much easier, but everyone does not get lucky and neither does everyone has deep pockets. The “Bookings.com” case is a good example where the matter went till US Supreme Court before the mark was registered and even then, they did not get the right to refrain others from using similar marks.

Similarly, in the recent Judgment of PhonePe Vs. BharatPe, the Hon’ble Delhi High Court asserted that no exclusivity can be claimed over a descriptive mark, or a descriptive part of the mark unless the descriptive mark or descriptive part has attained distinctiveness, i.e. it has acquired a secondary meaning.

The content of this Article does not necessarily reflect the views / position of Fox Mandal but remain solely those of the authors.

 

 

Know all about the validity of the claims made by both BigBasket and Dailybasket from a trademark registration perspective.

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Trademark Bullying: A Legal Means to Illegal Ends

The law of Trademark Protection was developed to grant exclusive proprietary right to Trademark owners, the monopoly of the Trademark owners over their trademarks and safeguard the collective goodwill. In a nutshell, Trademark Protection originated to restrain the sale of counterfeit products under an existing reputed brand name, but what happens when the same owners who are protected go above and beyond their legal capacity to protect their mark? The exact term for such an act is “Trademark bullying”.
Off late it has become a persistent problem with big companies, whereby they try to strong-arm small enterprises for business gains. Proprietors having high stakes go out of their way to protect their marks, even though the target entities do not use marks that are remotely similar to theirs. When a proprietor becomes an aggressive protector of his Trademark, lines between actual infringement and absurd contestations blur. To understand whether the same is bullying or an actual trademark infringement we will have to understand what constitutes bullying and the subtle difference between infringement and trademark bullying.

Definition & Ingredients

Definition of Trademark Bullying
The United States Patent and Trademark Office (USPTO) has defined trademark bullying as “the act where the trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.”1 The practice of a proprietor being overprotective of their mark and enforcing trademark rights beyond the required limit and scope of trademark law is called Trademark Bullying. 2 For instance when a powerful company or a big MNC like Amazon or Apple, that has immense funds, files a suit against local or smaller companies for infringement. Legal proceedings have a humongous cost attached to them and cannot be afforded by everyone. A small company that does not have adequate finances to fight a legal battle tends to budge under the influence of these powerful companies and give up on using their mark along with the products and services used under the mark, which they are legally entitled to. However, these threats are more than often groundless and baseless.

The course of action for entities that suspect infringement should be to verify whether the rival mark is actually similar to the proprietors’ mark. The next step would be to understand the trade circle, the market area and the similarity in the goods and services and further understand whether there is actual infringement or dilution. Similarly, one needs to determine whether there is a likelihood of confusion that might arise when a man with average intelligence looks at the rival marks. After the conclusion of the said due diligence, the proprietors would be in a position to understand whether they need to proceed with a legal action.

Who is a Trademark Bully and What Constitutes Trademark Bullying?
Various elements are to be considered before concluding whether it is a good faith trademark enforcement or bullying. A bully is someone who crosses the outer limit of “likelihood of confusion” en route to its trademark enforcement by prosecuting proprietors that are using an allegedly similar mark for non-competitive goods and services. In the case of deceptively similar marks and competitive goods and services, any act of aggressive enforcement will fall within the ambit of good faith litigation, and it holds true even if the mark is relatively weak but the market segment is competitive. Likewise, when owners of dissimilar marks enforce their rights against marks in the use of non-competitive goods, it is trademark bullying. But what happens when the owner of deceptively similar marks tries to enforce their rights against non-competitive goods and services? The owners in such scenarios seek to rely on the related goods or complementary goods doctrine, which tries to establish a link between two non-competitive goods. Since such links are difficult to establish, the enforcers usually rely on unfounded claims of “famous and well-known trademark”.

Modus Operandi of Bullying and the Effect on Small Entities Big companies have been observed to follow a similar pattern when they try to eradicate their competition out of the markets. They send out a common cease and desist notice which contains threats in legal language alleging trademark infringement and dilution. They also mention that they have been successful in prosecuting other enterprises using similar trademarks and then initiate either opposition proceedings or rectification proceedings against the small enterprise.3

The effect on the small enterprises that do not have any economical or legal support is they sit for a settlement wherein they are asked to withdraw their marks and the same is accepted by the small enterprises. The small enterprises tend to incur a huge financial cost of rebranding, removal of products from the markets, and loss of reputation because of the suit.

Comparative Analysis of Judicial Approach to Trademark Bullying in India and the US

The Approach by US Courts
While in India the cases which surround the issue of trademark bullying are still fewer, the instances are much higher in the United States. Here are a few cases that helped the courts of the United States to look at the situation of trademark bullying from a different perspective.

In Monster v. Vermonster, the manufacturer of a renowned energy drink “MONSTER”, Hansen Beverage Co., sent a cease-and-desist notice to Rock Art Brewery for using “Vermonster” to market its brewed beer. Rock Act Brewery was a small company that sold its beer in a few states in the United States of America. Hansen asserted a likelihood of confusion over the term Vermonster for beer and Monster for an energy drink.

Even though the marks were completely dissimilar and unique in their own way, Rock Art was asked to comply with the notice, however, the proprietors of Rock Art stood against the bullying and issued a public statement and started advertising as well as marketing their product. They also took to social media which persuaded Hansen to back down and come to a settlement.4

After this particular case the U.S. Commerce department in coordination with the USPTO came up with a report which addressed the wrongful harassment of small entities by big companies.5

In Apple v. Prepear, Apple being a leading producer and seller of electronic products tried to manipulate a small entity – Prepear, a recipe sharing application, into letting go of their mark. At the outset, the logo of Prepear and Apple are pretty distinctive with Prepear having a drawing of a pear outlined in green against a white background and leaf facing downward and the logo of Apple being a half-eaten apple with the leaf facing upward. Further, the goods and services provided were also dissimilar.

Prepear took to social media to fight against the bullying and shared how Apple had managed to do the same with other entities who has created a fruit logo. Prepear also stated that they had to let go of various employees because they could not afford their pay alongside defending the costly suit. Although this case has not been decided yet, it is clear that both the logos are dissimilar, and the goods and service offered are also distinctive therefore there should be no cause of confusion for any man with average intelligence. Nonetheless, the factors that are to be taken into consideration while deciding whether there is a plausible infringement or bullying are fairly obvious.

Indian Jurisdiction
Indian legislators had forethought the possibility of such misuse and provided a viable resolution under section 142 of the Trademark’s Act, 1999 which outlines the law against groundless legal threat.

The provision states that when a person through circulars, advertisement, or otherwise threatens another person with an action or proceeding for infringement of a registered or alleged to be registered trademark, the aggrieved person may bring a suit against such person and obtain a declaration to the extent that such threats are unjustified.

The available legal remedy for such threats is that an injunction may be issued in favour of the aggrieved party to restrain the other person from the continuance of such threats and also to recover damages. This remedy is available for only those whose trademarks are registered.

One of the first case that may be identified as bullying in India is Milmet Oftho Industries and Ors v. Allergan Inc [(2004)12 SCC 624], wherein the Indian Pharmaceutical company Allergan sold a drug named ‘Ocuflux’. The Appellant, an international pharmaceutical company sold a drug with a similar name in different countries and therefore sought a passing off suit against Allergan. The Supreme Court held that “if multinational companies do not have any intention of coming to India or introducing their products in India, they should not be allowed to throttle Indian Companies if the Indian Company has been genuinely using their mark in India and developed the product and was the first in the market”.

Another notable case is Jones Investment Co v. Vishnupriya Hosiery Mills [2015-4-L.W.30], where the Appellant was an American company which had been using the trademark ‘Jones New York’ internationally for manufacturing and producing clothing, hosiery and footwear. The respondent on the other hand was a small textile firm based in Erode, a city in Tamil Nadu. The Respondent had filed an application for their mark ‘Jones’ in relation to the textile products, which was opposed by the Appellant and the Registrar of Trademark had dismissed the same which gave rise to an Appeal.

The Appellants contended that they had transborder reputation and that the respondents did not have enough sales of their products and therefore, would not be able to compete with the Appellant. However, the IPAB took a similar stand which was taken by the Supreme Court in the previous cited case and stated that “a multinational company cannot claim infringement of trademark by a local Indian company purely based on international presence, unless they can expressly establish that their presence extends to India or precedes that of the Indian company.”

In a similar case of Bata India Limited Vs Vitaflex Mauch GmbH (CS(OS) No. 1112/2006), wherein the plaintiff instituted a case against the defendant for restraining them from making baseless groundless threats of legal proceeding. The main question that the court had to deal with was whether the legal notice sent by the defendant amounted to a legal threat and if the plaintiff was entitled to injunction and damages. The Delhi High Court held that the legal notice amounted to threat and the same was unjustifiable, therefore, the defendants were ordered to restrain themselves from issuing any further baseless threats.

The recent spat between BigBasket and DailyBasket is the latest example of prevalence of Trademark Bullying in India. BigBasket slapped DailyBasket with a cease-and-desist notice directing DailyBasket to (1) Stop business operation under the trademark “Daily Basket” and the domain name dailybasket.com ,and transfer the same to Big Basket; (2) discontinue the mobile application; (3) discontinue use of similar domain or trademark with the term “Basket” as a dominant feature of the domain name or the trademark; and lastly, (4) Pay INR 2,00,000.00/- as legal fees. This would be a fit case of bad faith enforcement, since the term “Basket” can be easily regarded as a term common to trade, and hence any proprietor in the trade of consumer goods is free to use it.

Although India had already made a provision for such threats, the act does not clarify what amounts to groundless and baseless threat. However, the above judgments decided by the Court and IPAB are clear on a few elements including whether the marks are actually similar and cause confusion, whether the international companies have an intention to bring their product into the country, first to use over first to file, etc. which have been taken into consideration when assuming if the same is to be considered as bullying or infringement. The Indian judiciary has not second guessed in slamming MNC’s and other powerful companies when it was clear that the local businesses were being wrongly and illegally affected by the infructuous cease and desist notice being sent to them.

The Road Ahead
Every legal notice of cease-and-desist would not amount to trademark bullying. The dynamics of each case are different, making the court re-think every scenario and look-out for the issue of trademark bullying or to check whether the plaintiff is seeking an injunction to avoid the actual consequence of an infringement. The primary purpose of the provision under the trademark act was to make sure that small entities and local businesses do not lose out on what they are legally entitled to own. However, there are ways in which the issue could be further curbed i.e. by providing resources to small entities including legal aid camps, creating awareness, law firms taking initiative and handling more pro bono cases etc. Small entities off late have sought some respite by resorting to social media wherein their plight is understood by a community of like-minded people who support through backlash at bigger companies which harms their reputation and goodwill gained over the years. While the laws in US on standard of proof for claims of trademark dilution shows a way to restrain trademark bullying on superficial claims of famous and well-known trademarks, the laws in India are still not clear on how far a litigant may go on such unfounded claims before being termed as a bully.
This article tries to explain what constitutes bullying and the subtle difference between infringement and trademark bullying.
  1. https://www.uspto.gov/sites/default/files/trademarks/notices/TrademarkLitigationStudy.pdf
  2. https://kilpatricktownsend.com/~/media/Files/articles/2013/Replacement%20Expert%20QA%20on%20Trademark%20Bullying_4-524-3478.ashx
  3. https://www.manupatrafast.com/NewsletterArchives/listing/SAIPTech%20Singh%20Associates/2017/Sep/IPR-Alert-September17.pdf
  4. http://http//www.youtube.com/watch?v=R4atuh53N7M
  5. https://www.uspto.gov/sites/default/files/trademarks/notices/TrademarkLitigationStudy.pdf
  6. https://www.change.org/p/apple-save-the-pear-from-apple-end-apple-s-aggressive-opposition-of-small-businesses-with-fruit-logos?redirect=false

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2020 In Rewind: Trademarks In India

  • 18 February, 2021
  • Archana Bhageerathi

The entrepreneurship space has seen major evolution with conducive policies and enabling technological environment in the past few years. Specifically, the digital landscape has levelled up in traffic and capabilities owing to the pandemic last year and everything moving online. With that, the intellectual property and technology laws are grappling to catch up to the developing situation and adequately protect the rights of the stakeholders in the sector. Until that happens effectively, the courts are taking a pro-active step to align the developments with the legal intentions and business requirements. With this in view, we witnessed some interesting case updates that took place in the field of trademarks and domain name disputes in the past year. Here is a brief of the key trademark-related updates in India that took place in the year 2020.

I.LEGISLATIVE DEVELOPMENTS

There was no significant legislative development in the trademark practice, apart from the Trademark Registry’s decision to go completely virtual with respect to prosecution hearings. The Trademark Registry and the Intellectual Property Appellate Board (IPAB) much like all the judicial and quasi-judicial bodies across the country, for the time being, has done away with the physical mode of hearing, and it is taking up matters via video conference.

II.SIGNIFICANT CASE LAWS

Here is a recap of key cases within the domain:

Amazon Seller Services Pvt. Ltd. & Ors. v. Amway India Enterprises Pvt. Ltd. & Ors. FAO(OS) 133/2019 |31-01-2020

In this case, the division bench of the Delhi High Court had set aside the lower court’s order restraining Amazon from allowing the sale of products of Amway India, a Direct Selling Entity, from its platform. Amway India filed a trademark infringement suit against Amazon on the ground that the e-commerce giant is liable as an intermediary for allowing and continuing to allow Amway India’s products (which it alleged were counterfeited products) to be listed on the former’s website by one of Amway’s direct seller. The lower court found Amazon liable for trademark infringement for non-observance of Direct Selling Guidelines and failing to demonstrate due diligence.   

The Division bench while setting aside the lower court’s order ruled that Direct Selling Guidelines are merely advisory to State Governments and Union Territories and they are not binding laws, and hence, it cannot be enforced against e-commerce intermediary. The Court further refuted the claim of trademark infringement on the ground that India follows the principle of international exhaustion of Trademarks, meaning once a good is lawfully acquired by the Direct Seller, the rights over the said good (including right re-sell) vested in the Direct Seller. Hence, Amazon as well as the seller were saved under the second sale exception to trademark infringement under section 30 (4) of the Trademarks Act, 1999.

Imagine Marketing Pvt. Ltd. V. Exotic Mile (CS(COMM) 519/2019) | 21-01-2020

The Plaintiff, commonly known in the market as “BoAt”, consumer electronics brand, sought an injunction against the Defendants from using the mark “BOULT” for the manufacture and sale of electronic audio gadgets mainly earphone, headphones, etc.

The Delhi High Court (single bench) had passed an interim injunction restraining the Defendant from using the mark “BOULT” ruling that it was deceptively similar to “BoAt” and that even their taglines were similar to each other. However, the Division Bench ordered a stay on the injunction order by stating that “prima facie there is no similarity visually or phonetically between the original Plaintiff and the Defendant.”

The matter is now evenly poised, and we await to see if the Division Bench would have a different take on its opinion after hearing the arguments.

Reckitt Benckiser (India) Pvt. Ltd v. Mohit Petrochemicals Pvt. Ltd. CS(COMM)No.141/2020 & I.A.Nos.4034-37/2020 | 28-05-2020

In an infringement suit filed by Reckitt Benckiser, the Delhi High Court while imposing Rupees One Lakh on Mohit Pharmaceuticals, permanently restrained them from selling hand sanitizers under the brand name “Devtol” which was considered deceptively similar to the Plaintiff’s well-known trademark “Dettol”.

M/s ITC Limited v. Nestle India Limited 2020 SCC OnLine Mad 1158 | 10-06-2020

ITC had launched its Sunfeast Yippie Noodles in two varieties – one of which was “Magic Masala”. Defendant i.e., Nestle had adopted the name “Magical Masala” for one of their instant noodle product. Since Plaintiff had not registered the expression “Magic Masala” as a trademark, it filed a passing-off suit against Defendant. Defendant affirmed that they were using the term “Magical Masala” as a flavour descriptor. The Defendants further contended that “Magic” and “Masala” were the two most common terms that were used in the culinary industry and therefore could not be monopolized.

The High Court of Madras held that the expressions “Magic” and “Masala” were common terms that were used on a day-to-day basis in the Indian food industry and Indian culinary, therefore the same could not be monopolized by the Plaintiff or the Defendant. The court further opined that even Plaintiff had used the term “Magic Masala” as a flavour descriptor rather than a trademark or a sub-brand. Therefore, the court concluded that ITC had used the term “Magic Masala” in a laudatory manner and the same could not be monopolized.  

Hindustan Unilever v. Endurance Domain and Ors. 2020 SCC Online Bom 809 | 12-06-2020

In this case, Plaintiff approached the Bombay High Court seeking to suspend domain names with Plaintiff’s HUL trademarks which were registered under the authority of Defendant, a domain name registrant. Even though the Court was quick to grant relief to the defendant, it opined that Domain name registrants were neither equipped nor authorized to indefinitely suspend domain names once registered, since there was no human element involved to oversee the legitimacy of domain names.

The Court ruled that deciding what should or should not be suspended (or blocked) is a serious judicial function that could be arrived at only by assessing and balancing rival merits. Moreover, the Court observed that anyone can use a VPN to bypass a proxy server or firewall and have access to such blocked websites by masking the originating country IP of the user, hence, such ‘access blocking’ only offers a hollow and faux sense of safety to the Registrant. Besides, holding the Registrar liable if he is unable to effectively block access would expose the Registrar to the constant threat of contempt proceedings.

International Society for Krishna Consciousness (ISKON) v. Iskon Apparel Pvt. Ltd and Ors. 2020 SCC Online Bom 729 | 26-06-2020

In a trademark infringement and passing off suit instituted against the Defendant’s use of ISKON APPAREL, the Court while restricting Defendant from using the same ruled that ISKON is a well-known mark. This was a follow-up to Plaintiff’s pleading that the trademark “ISKON” be declared a well-known trademark. Plaintiff submitted that it was the first to create the name in the year 1996 in New York and over time it has created a global presence which is inclusive of India and the brand was not restricted to only one particular good or service but was into the diverse range of goods and services. The court after scrutinizing the evidence submitted by Plaintiff ruled that the brand name “ISKON” fell under the ambit of a well-known mark under the Trademark Acts of 1999.

Louis Vuitton Malletier vs Futuretimes Technology India Pvt Ltd CS(COMM) 222/2020 | 03-07-2020

Louis Vuitton had filed a civil suit against the Defendants, an e-commerce platform named Club Factory to restrain the sale of any counterfeit goods comprising their trademark. The Plaintiff prayed that the Defendants be restrained from selling any product with Plaintiff’s trademark, including “LOUIS VUITTON”, “LV Logo”, Toile monogram pattern, Damier pattern and/or LV flower pattern, or any other similar pattern that would constitute an infringement of the Plaintiff’s registered marks. The Delhi High Court, acting on it, issued summon notice to the Defendants. We wait to see if this case takes the same route as the case of Amazon Seller Services Pvt. Ltd. & Ors. v. Amway India Enterprises Pvt. Ltd. & Ors. FAO(OS) 133/2019, to base the outcome on the evidence of counterfeited products or if it holds Club Factory liable in case the Defendant fails to demonstrate the minimum standard of due diligence as required from an intermediary. 

Arudra Engineers Pvt. Ltd. v. Pathanjali Ayurved Ltd. & Anr. 2020 SCC OnLine Mad 1503 | 17-07-2020

Defendant, Patanjali, was restrained from using the word “Coronil” to market its product i.e., immunity booster tablets which Defendant claimed to have passed the test of clinical trials to cure coronavirus. The Court held that since Plaintiff had acquired registration of the trademark ‘CORONIL- 92 B’ in 1993 and had been using the same in relation to Acid inhibitor for industrial cleaning, Defendant’s action amounted to infringement under Section 29(4) of Trademarks Act, 1999. The court also opined that Patanjali’s use of the word ‘Coronil’ could deceive the consumers with respect to the likelihood of curing coronavirus through the tablet. Hence, considering the reputation of Plaintiff’s registered trademark and the larger public interest, the Court restrained Plaintiff from marketing its product under the name “Coronil”.  

Plex, Inc v. Zee Entertainment Enterprises Limited 2020 SCC OnLine Bom 989 | 01-10-2020

The Bombay High Court refused to grant an interim injunction as sought by Plaintiff (Plex) against ZEEPLEX, a pay-per-view service launched by Zee. The Court reasoned that Plaintiff’s case of passing off failed the trinity test since it was unable to establish any reputation, the similarity in services, and anticipated injury due to the adoption and use of ZEEPLEX, while Defendant had a long-standing reputation in India.    

Delhivery Private Ltd. v. Treasure Vase Ventures Private Ltd.  CS (COMM) 217/2020 | 12/10/2020

In an infringement suit by the logistics company “Delhivery” against the user of the mark “Deliver-E” for identical services, Delhi High Court held that Delhivery was a generic name describing the kind of service it provided i.e., delivery, and hence, it did not have the characteristics of an enforceable trademark.

Anil Rathi v. Shri Sharma Steeltech CS(COMM) 654/2019 | 23-10-2020

The Delhi High Court ruled that the use of the personal name, surname, or family name under Section 35 of Trademarks Act, 1999 was limited to personal use only and such rights did not extend to granting licenses to third parties for commercial use. In the instant case, Plaintiff had approached the Delhi High Court seeking an injunction against the use of the surname “RATHI” as a trademark by Defendant. The Court observed that there was a family arrangement in place which regulated the use of the family mark, and the act of Defendant of licensing the mark to third parties was in clear violation of the said arrangement, making Defendant liable for trademark infringement.

The PS5 Case Trademark Squatting Case: TM Opposition by Sony Interactive Entertainment Inc [Opposition No. 1040632] against TM Application PS5 [Application No. 4332863] filed in Class 28 by Hitesh Aswani

Sony’s launch of its latest edition of gaming console Play Station 5 of PS5 in India was halted when it discovered that an infamous trademark squatter named Hitesh Aswani had surreptitiously filed a trademark application for “PS5” on October 29, 2020, for the identical specification of goods that were covered under Sony’s PS4 trademark registration bearing application no. 2481440. Sony, understandably, filed an opposition against the said trademark, and the Applicant withdrew his application.

Sony filed its earliest trademark application for the mark “PS5” in Jamaica before Hitesh Aswani on October 03, 2019. Sony used the Jamaican application as the basic application to file international registration through the Madrid Protocol, claiming priority of October 03, 2019.

This was a textbook case of trademark squatting. Sony had priority over the squatter, and it is a settled position of law that priority trumps everything else as per law in India. Further, the mala fide intention of the squatter was evident from the almost verbatim replication of the specification of goods covered under Sony’s PS4 trademark registration.

This case reached its logical conclusion when Hitesh Aswani withdrew his application as well as the opposition which paved the way for Sony to register its mark in India and proceed to launch the product in India.

Sassoon Fab International Pvt Ltd. v. Sanjay Garg & Ors. [IPAB] ORA/171/2020/TM/DEL | 04-12-2020

In one of the most noteworthy cases that came up before the Intellectual Property Appellate Board (IPAB), the registration of the mark ‘N95’ bearing App No. 4487559 registered in Class 10 in favour of Mr. Sanjay Garg was stayed. IPAB observed that the N95 was prima facie a generic term that was used to provide the quality of the masks hence it was hit by Section 9 of the Act. Since Plaintiff had filed a rectification petition against the registration of the said mark before filing the instant petition, IPAB deemed it necessary to stay the operation of the Registration until the Rectification Application was finally decided and disposed of.     

Gujarat Cooperative Milk Marketing Federation Ltd. & Anr vs. Amul Franchise.in & Ors CS(Comm) 350/2020

This case concerned fraudulent registration of multiple websites with the term “AMUL” as prefix/suffix. In this case, the Delhi High Court directed the Registrar of Domains to suspend/block domain names containing the term “Amul”. The Court also restrained the Registrar from the further offering for sale of such domain names so ordered to be blocked.

The Delhi High Court rejected the Registrar’s contention that due to lack of adequate technology it cannot ensure that these websites containing ‘AMUL’ therein would not be made available for sale and suggested that the Registrar could utilize the same filter it employs to ensure that websites under obscene and/or words denoting illegality are not available for sale. This decision is in stark contrast with an earlier single judge bench order of the Bombay High Court dated June 12, 2020 – Hindustan Unilever Limited v. Endurance Domains Technology LLP, 2020 SCC OnLine Bom 809, wherein it held that Domain name registrants are neither equipped nor authorized to indefinitely suspend domain names once registered, since there is no human element involved to oversee the legitimacy of domain names.

CONCLUSION

Despite the majority of the judicial pronouncements being related to COVID-19 and lockdowns, 2020 will be the year that the Trademark Authority tightened its grip on trademark squatting, a way to curb the sales of counterfeit products on e-commerce platforms. Also, the IPAB’s order to put a stay on the registration of “N95” for medical equipment and apparatus exhibited the dismal examination standards at the Trademarks Registry since the term ‘N95’ is generic to medical products and no amount of use can justify the registration. We witnessed a handful of contrasting rulings in the year 2020 and a couple of disputes are lined up to be adjudicated in the year 2021. These are a few topics that are revisited time and again to not only protect the proprietors of the registered trademarks but also make sure that no defendant is being harassed unnecessarily by registered proprietors.  

 

Image Credits: Photo by Riccardo Annandale on Unsplash

Despite the majority of the judicial pronouncements being related to COVID-19 and lockdowns, 2020 will be the year that the Trademark Authority tightened its grip on trademark squatting, a way to curb the sales of counterfeit products on e-commerce platforms. 

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