India

Contributing firm Anand And Anand Advocates

Authors Munish Mehra Associate Priyanka Kher Associate

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1. Legal framework • the district court’s jurisdiction to decide infringement and passing-off actions; and • stringent penalties for offences. National The Act 1999 brought the Indian The act has also removed the provisions on statutory framework into line with worldwide defensive registration. trends and met India’s obligations under the Agreement on Trade-Related Aspects of International Intellectual Rights (TRIPs). Innovative India is a party to the following international interpretations of the Trademarks Act 1999 by the treaties and conventions: courts have expanded the scope of • the Paris Convention for the Protection of rights and developed jurisprudence on Industrial Property; trademark law. • the TRIPs Agreement; • the Vienna Codification for Graphic Marks The Trademarks Act 1999 came into force in (although India is not a signatory); and 2003, repealing the Trade and Merchandise • the Nice Classification (Seventh Edition) for Marks Act 1958. It introduced sweeping Classification of Goods and Services changes to trademark law, including (although India is not a signatory). provisions for: • the registration of service marks and collective marks; 2. Unregistered marks • the filing of multi-class applications; • the recognition of shapes, goods, packaging and colour combinations as registrable Protection subject matter; In addition to statutory protection to registered • the abolishment of Part B of the register and trademarks, the act protects unregistered marks. of the need for disclaimers; This has its roots in the traditional • an increased term of registration and renewal system under the tort of . In a suit for from seven to 10 years; passing off, the court may grant injunctions and • the recognition of the concept of well- either damages or account of profits, with or known marks; without an order for delivery of infringing labels • simplified registration criteria; and and marks for destruction or erasure. • the clarification of what constitutes an unregistrable mark. Although registration under the Trademarks Act is prima facie evidence of the validity of a The new act also provides for: trademark, registration cannot trump rights in a • a broader scope of infringement for prior mark. registered marks; • the assignment of unregistered trademarks Passing off is essentially an attempt to cause without goodwill; confusion in the minds of consumers by • non-registered licensing of a registered attempting to pass off one’s own goods as those trademark; of another, with a view to benefiting from the • the establishment of the Appellate goodwill and reputation enjoyed by that other Board to hear appeals party. To succeed in a passing off action based on from the registrar; use of a given mark, the plaintiff should be able

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to show that the disputed mark has, through use It is immaterial whether the plaintiff and in India, become distinctive of its goods, so that defendant trade in the same field or the same Indian trade and consumers will assume that any or similar products. Injunctions have been goods bearing the mark are those of the plaintiff. granted in passing-off actions even where the plaintiff and defendant traded in entirely There are three essential elements to a passing- different products. For example, in Daimler off claim: Benz Aktiegesellschaft v Hybo Hindustan (AIR • misrepresentation; 1994 Del 239) the plaintiff owned the • damage; and MERCEDES BENZ trademark in relation to • goodwill. vehicles. The court granted an injunction restraining the defendant from using the In passing-off actions where there has been no trademark BENZ, as well as a “three-pointed direct misrepresentation, establishing a star in a ring”, in respect of undergarments. likelihood of deception or confusion generally requires the existence of two factual elements: Use requirements • that a name, mark or other distinctive feature The amount of use required to establish used by the plaintiff has acquired a unregistered rights is not quantified. The party reputation among the relevant class of that asserts the unregistered rights bears the purchasers; and burden of proving that its mark is well known in • that members of that class will mistakenly India or enjoys a reputation or goodwill that infer from the defendant’s use of an could have facilitated passing off or confusion identical or sufficiently similar name, mark and/or deception. or other feature that its goods or services are from the same source as or connected to the plaintiff’s. 3. Registered marks

The seminal case on deceptive similarity in a passing-off action is Cadila Health Care v Cadila Ownership Pharmaceutical Ltd (2001 PTC (SC) 561), in Section 18(1) of the Trademarks Act provides that which the two marks for which similarity was any person that claims to be the owner of a alleged were FALCITAB and FALCIGO, and trademark that it uses or proposes to use may where the Supreme Court identified the apply to the registrar in the prescribed manner following criteria: for registration of the mark. This provision • the nature of the marks (ie, whether they are essentially has three elements: word, label or composite marks); • ‘any person’, which would include • the degree of resemblance between the marks; partnership firms, associations, companies – • the nature of the goods for which they are whether incorporated or not – and public used as trademarks; and private trusts; • similarities in the nature, character and • a claim to ownership; and performance of goods of rival traders; • use or intention to use. • the class of purchasers who are likely to buy goods bearing the marks; Section 24(2) of the act also provides for joint • the method of purchasing the goods or ownership of a trademark. The trademark placing orders; and applicant must have a legitimate claim of • other circumstances that may be relevant. ownership over the mark. This may be based on:

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• use of the mark in relation to particular A trademark is registrable if it satisfies the goods by the applicant itself or its following conditions: predecessors in rights, interest and • It is capable of being represented graphically; title; or • It is capable of distinguishing the goods • its intention to make use of the mark. or services of one person from those of others; and A person may become the owner of a trademark • It is used in relation to goods or services either by virtue of use or by registration of the for the purpose of indicating a connection mark. Where use of the mark is merely proposed, in the course of trade between the goods or the applicant cannot claim proprietary rights services and the owner or authorized user until such time as it initiates use or becomes a of the mark. registered owner. In establishing the second criterion above – The term ‘trademark’ includes collective marks distinctiveness – descriptive marks are usually and certification marks. weakest, with the degree of distinctiveness becoming increasingly strong for suggestive, As a signatory to the Paris Convention, India arbitrary, fanciful and invented marks observes the national treatment principle, respectively. However, even descriptive words which requires that the law make no may acquire a sufficiently high degree of discrimination as to nationality. The national distinctiveness through use. The nature of the treatment rule also extends to nationals of goods or services for which the mark is used countries that are not signatories to the Paris affects how distinctive it is. Convention, provided that they are domiciled or have an industrial or commercial The advantage of this regime is that anything establishment in a convention country. that is not prohibited from registration is registrable if it satisfies these requirements. This Scope of protection has significantly increased the scope of Protected: Under Indian trademark law, the registrable marks. definition of a ‘trademark’ for the purpose of registration is sufficiently wide to cover any of Not protected: Section 9 of the Trademarks Act the following elements: sets out absolute grounds for refusal, which are • any name, including personal names and based on objections inherent in the mark itself surnames, and signatures; that make it unregistrable. • any invented word or arbitrary word that is not directly descriptive of the character or The existing act incorporates the registration quality of the goods or services; requirements in the definition of a ‘trademark’. • letters, numerals or any combination thereof; In addition, a clear distinction is made between • devices, including fancy devices or symbols; Sections 9 and 11, which enumerate absolute and • monograms; relative grounds for refusal of registration • colour combinations or even a single colour respectively. The main difference between in combination with a word or device; absolute and relative grounds is that registration • shapes of goods or their packaging; of a trademark may be refused on absolute • three-dimensional marks; and grounds due to a defect or deficiency inherent to • sound marks when represented in the mark itself, while registration may be refused conventional notation or described in words. on relative grounds due to a defect or deficiency

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in the mark in relation to an existing mark. Examination Section 11 is thus a complementary section that Where a trademark application is filed in the lays down grounds for refusal that include prescribed format, it will first be allocated an identity or similarity with: application number. The mark is then examined to • an earlier mark registered for identical or see whether it satisfies the registration similar goods or services; or requirements. The act has streamlined the • an earlier well-known trademark used for registration procedure and an examination report is dissimilar goods or services. issued within one month of filing the application.

Under Indian law, statutory recognition has been Any objections raised by the registrar are given to the modern concept of trademark communicated to the applicant, which may dilution. If use of a later mark takes unfair submit a written response within one month of advantage of or is detrimental to the distinctive receiving notice (this period may be extended) or character or repute of an earlier trademark, there alternatively apply to the registrar for a hearing. may be a case for infringement. The registrar will communicate its decision to the applicant in writing; if the applicant is 4. Procedures dissatisfied with this decision, it may request an appeal within the prescribed timeframe.

Searches Opposition The Trademarks Act requires that the proposed Once the applicant has overcome all objections applicant file the prescribed form to obtain a raised by the registrar, the application proceeds search report from the registrar. A trademark to publication in the Trademarks Journal, with search carried out for a proposed trademark does an endorsement stating either that it has not cover trade names. Graphic mark searches are been accepted or that it is being published not available as the Trademarks Office has not so before acceptance. far released for public use its database of device marks, marks or any graphic depiction of After publication in the Trademarks Journal, marks under the Vienna Codification. any person has three months (which may be extended by a further month at the The applicant is entitled to a refund of fees if, registrar’s discretion) to file a notice of after the registrar issued a search report allowing opposition to registration. the mark’s application, he subsequently objects to the application on the grounds that the In PN Mayor v Registrar of Trademarks (AIR 1960 trademark resembles a mark that was on record Cal 80), the court held that the opponent need not on the date of the search but was not disclosed in be the owner of an earlier registered trademark: the search report furnished to the applicant. even a customer, purchaser or member of the public who is likely to use the goods may object The Trademark Rules provide for an expedited to registration of a trademark on the grounds of search report upon payment of five times the possible deception or confusion. ordinary fee for such search. Upon such payment, the search results are made available The question of acceptance or refusal of the within seven working days instead of the usual trademark application will be considered 30 working days. only once the opposition proceedings have

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been completed. The onus is on the applicant an application to the registrar seeking the deletion to establish that it is entitled to register of a trademark from the register in respect of the the trademark. goods or services for which it is registered.

Registration Further, a trademark may be removed from the If an application has been published as accepted register on the grounds of non-use if: and is not opposed, or if any oppositions are • it was registered without any good-faith decided in favour of the applicant, the mark will intention to use and has not been used in due proceed to registration. course; or • it has not been used for a continuous period If the application has been published before of over five years. acceptance and is not opposed during the opposition period, the registrar will then Unlike an opposition, which may be instituted consider afresh whether to accept the by ‘any person’, an application for rectification application; if he decides in the affirmative, the can be made only by an ‘aggrieved person’. mark will be registered. The fact of registration must be published in the Trademarks Journal. Invalidation: Under Section 58 of the Trademarks Act, a registered owner can apply to correct Once an application has been accepted for errors and make alterations to existing entries. registration and any oppositions have been The registrar may make necessary further decided in favour of the applicant, the registrar is amendments or alterations to the registration obliged to register the mark. certificate. Such additions or alterations should not substantially affect the identity of the Removal from register registered trademark. The power conferred on Cancellation/surrender: Indian law allows for the the registrar by Section 58 is purely discretionary. cancellation of a registered trademark where the owner files an application under Section 58(1)(c). The introduction of an entirely new element to the A cancellation application in this respect may be mark in the guise of an amendment or alteration filed on Form TM-35. Although there are no would be open to objections under Section 9 or 11 stringent provisions to this effect, this procedure or any other provisions of the Trademarks Act and is availed of in the following circumstances: its supplementary rules, and is not permitted. • to avoid revocation proceedings where the owner is no longer interested in the mark; or • where a new application that the owner 5. Enforcement intends to file would also cover the existing registration. In such cases the applicant agrees to cancellation of the existing mark if The applicable laws in relation to IP enforcement and when the new mark is registered. The in India are the Code of Civil Procedure and the registrar may accept an application for Penal Code. The Code of Civil Procedure registration on condition that the applicant provides for civil remedies and enforcement moves for cancellation of the existing through civil courts, while the Penal Code registration before the new mark is registered. provides for penal remedies.

Revocation: Section 47 of the Trademarks Act Under the Trademarks Act, infringement of a provides that any aggrieved person may submit registered trademark has been defined to

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include the use of an identical or similar mark The act also empowers courts to proceed ex parte in relation to goods or services that are not against defendants in cases where they fail to similar to those for which the trademark is appear. In such circumstances, ex parte orders registered, if: may be issued for: • the registered trademark has a reputation in • injunctions; India; and • discovery of documents; • the use of the infringing mark is likely to • preservation of infringing goods; and result in unfair advantage or be detrimental • prevention of the defendant from disposing to the distinctive character or repute of the of or dealing with its assets in a manner that registered mark. may adversely affect the trademark owner’s right to recover damages, costs or other A registered mark is also infringed by the use of pecuniary remedies. an identical or similar mark as: • a trade name or part of a trade name; or Case law • the name of the business concern or part of Indian trademark law has evolved considerably the name of the business concern dealing in over the last decade. Court decisions have goods or services in respect of which the contributed significantly to various aspects trademark is registered. of trademark law. Key decisions include the following: Jurisdiction • The test for infringement (Durga Dutt Indian trademark law represents a departure Sharma v Navaratna Pharmacy Laboratories from the traditional procedural law on court AIR 1965 SC 980) – the court held that jurisdiction. It provides that in case of the onus to prove infringement is on the infringement of a registered trademark or plaintiff. In addition, resemblance passing off, jurisdiction shall vest in the court between marks may be phonetic or visual within whose local jurisdiction the plaintiff and establishing resemblance is a question actually and voluntarily resides, carries on of fact. business or personally works for gain. This is • Colour combinations as trademarks (Colgate in marked contrast to the law applicable to Palmolive Company v Anchor Health and Beauty other statutes (except law), which Care Pvt Ltd 2003 (27) PTC 478 (Delhi)) – the provides that a suit must be instituted in a court stopped the defendant from using red court within whose local jurisdiction the and white in its packaging as the plaintiff defendant actually and voluntarily resides, had proprietary rights over the combination carries on business or personally works used for toothpaste. for gain. • John Doe orders (Ardath Tobacco Company Limited v Bhai CS (OS) 141/2004; The Lance Relief Armstrong Foundation Inc v P Bagga CS (OS) The types of relief that a court may grant for 729/2006; Polo/Lauren Company v Dharmendra infringement and passing off have also been CS (OS) 667/2006) – these decisions were the enlarged under the Trademarks Act, as follows: first under Indian law in which the court • permanent or temporary injunctions; granted an injunction restraining both named • compensatory or punitive damages; defendants and unknown infringers (known • rendition of accounts; and as ‘Ashok Kumar’). • delivery up of the infringing goods, labels • Transborder reputation (NR Dongre v and marks for destruction or erasure. Whirlpool Corporation (1996) 5 SCC 714; MIV

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Holding mbH & Co v Mistrale Publishing Pvt relied on the doctrine of material differences, Ltd (2005) (30) PTC 377 (Del)). wherein substantial differences (eg, the • Prior use (Milment Oftho Industries v Allergan absence of a warranty, insufficient Inc (2004) (28) PTC 585 (SC)) – this was a instructions or inadequate labelling) were dispute between a foreign and an Indian considered material differences, and thus pharmaceutical company on the use of the legitimate reasons to ban grey market goods. mark OCUFLOX for medicine. The court • Community service (The Polo Corporation v held that the ultimate test to determine Jerry Arora CS (OS) 1354/2006) – the plaintiff reputation rested on evidence to show who sued the defendant for infringement of the was first in the market. marks POLO and RALPH LAUREN. The • Delay and acquiescence (Midas Hygine Delhi High Court ordered the defendant to Industries Pvt Lltd v Sudhir Bhatia 2004 (28) do 50 hours of community service in an old PTC 121 (SC)) – in clear cases of trademark persons’ home and 50 hours in an infringement, delay in bringing an action orphanage. In Dharampal Premchand v Tara does not preclude an injunction. In Dr Zarda Factory (CS (OS) 2/2006), relating to a Reddy’s Laboratories Ltd v Reddy Pharmaceutical trademark used for tobacco products, the Limited (2194/2003) and Amar Nath court ordered the defendant to buy 50 Chakroborty v Dutta Bucket Industries (2005 spittoons for a cancer hospital. (30) PTC 46 (Cal)), despite a delay of five • Shape marks (Zippo v Anil Moolchandani (CS years in filing the court granted an injunction (OS) 1355/2006)) – the High Court of Delhi to prevent the defendant using MAJ after it extended trademark protection to shape held there to be passing off due to marks. It held that protection is granted where similarities between the marks MAJ and TAJ. the shape mark enables the public to • Effect of registration (Koninklijke Philips distinguish the product from other commercial Electronic NV v Smt Kanta Arora 2005 (30) products and to conclude that all the goods PTC 589 (Del)). bearing it originated under the control of the • Use of a prefix (V & S Vin Spirit AB v Kullu shape mark owner, to which responsibility for Valley Mineral Water Co 2005 (30) PTC 44 (Del)). their quality can be attributed. • Non-use defence (Fedders Lloyd Corporation Ltd v Fedders Corporation 2005 (30) PTC 353 (Del)). Damages • Trademark in film title – (Sholay Media Recently a damages culture has emerged in IP Entertainment v Mr Parag Sanghvi (CS (OS) litigation in India, whereby the Indian courts, 1892/2006) – this case concerned the remake particularly the Delhi High Court, have handed of Indian film Sholay. The defendant was down a series of decisions granting compensatory restrained from infringing the plaintiff’s as well as punitive and exemplary damages to registered trademarks in the title and the plaintiffs for the infringement of their IP rights. The film’s key character Gabbar Singh and/or any trend of awarding punitive and exemplary other deceptively similar marks or names. damages started with the decision in Time • Parallel imports (Bose Corporation v Mehta CS Incorporated v Lokesh Srivastav (2005 (30) PTC 3 (OS) 337/2006; General Electric v Altamas (Del)), where the court awarded both Khan CS (OS) 1283/2006; Samsung Electronic compensatory damages and punitive damages for Co Ltd v KL Lalani CS (OS) 1600/2006) – in infringement of the trademark TIME together with these judgments the High Court of Delhi the red border. The court awarded the plaintiff restricted parallel importation of goods Rs500,000 to compensate for loss of reputation and under trademark law. In Samsung the court an additional Rs500,000 in punitive damages.

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Including interest; the total damages award stood Assignment and transmission at Rs1.6 million. The court held that the defendant’s The Trademark Act clearly states that the magazine, which used the Hindi transliteration of assignment of a trademark must be executed in the word ‘Time’ with the distinctive red border, writing by act of the parties concerned. was a slavish imitation of the plaintiff’s trademark Transmission includes transmission by operation of and held the defendant liable for infringement. law, devolution by the personal representative of a deceased person and any other mode of transfer. The welcome trend of awarding compensatory as well as punitive and exemplary damages was Licensing given further impetus by virtue of the following The Trademarks Act provides for the definition decisions of the Delhi High Court: of ‘permitted user’ in relation to a registered • Adidas-Salomon AG v Jagdish Grover (2005 (30) trademark, as defined in Section 2(1)(r). This PTC 308 (Del)) – the defendant was includes use by a registered user as well as by an manufacturing and retailing clothing under unregistered user with the consent of the the mark ADIDAS. The court permanently registered proprietor in a written agreement. enjoined it from doing so and ordered it to hand over its accounts and all products However, as stated in Section 53 of the act, a bearing the mark, and to pay damages of person using a registered trademark under an Rs500,100 and 9% interest. agreement without being recorded as a registered • Buffalo Networks Pvt Ltd v Manish Jain (2005 (30) user would not be entitled to institute PTC 242 (Del)) – the court awarded Rs1 million proceedings for infringement of the mark. in damages for the dilution of trademarks with respect to the domain name ‘tehelka.com’. For unregistered marks, the law remains the • Tata Sons Limited v Fashion ID Ltd (2005 (30) same as laid down by the Supreme Court in PTC 182 (Del)) – the court awarded Rs100,000 Cycle Corporation of India Ltd v TI Raleigh for infringement of the plaintiff’s registered Industries Pvt Ltd, which allowed the use of the domain name ‘tatainfotecheducation.com’. mark RALEIGH by an unregistered licensee to • Microsoft Corporation v Yogesh Popat (2005 (30) inure also to the benefit of the proprietor, PTC 245 (Del)) – the court awarded Rs1.975 provided that de facto quality control on the million in a software piracy case. production of the licensee’s goods was being • Microsoft Corporation v Kamal Wahi (CS (OS) exercised by the licensor. 817/2004) – the court awarded Rs2.362 million in a software piracy case. • Amar Nath Sehgal v Union of India (2005 (30) 7. Areas of overlap with PTC 253 (Del)) – the court awarded Rs5,000 for breach of an artist’s . It is possible for a single object to avail of different forms of IP protection. Although each 6. Ownership changes – legalization category of IP law is aimed at a particular type of requirements intellectual property, , copyright, and trademark law occasionally intersect.

The Trademarks Act does not require the The copyright and trademark regimes may both legalization of documents; mere notarization apply to the same item. For instance, the artwork is sufficient. in a package design may be protected by

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copyright, while the overall look and feel of the judiciary to afford the same degree of protection package may be protected as (a form to domain names as to trademarks. The Supreme of trademark). Court held, among other things, that domain names are business identifiers and should be Design registration and trademark registration protected as far as possible by the law of passing may both be obtained for the same subject matter. off. The court also stated that domain names For example, where the unique design of a bottle require specific protection under the law of is granted design protection, the same shape may passing off since they are not limited territorially also obtain protection under trademark law, and as a result may not be adequately protected provided it has acquired distinctiveness and its by national laws such as the Trademarks Act. registration is not expressly prohibited under the provisions of the Trademarks Act. In Pfizer Products Inc v Altamash Khan (2006(32) PTC 208) the Delhi High Court for the first time ordered the interim transfer of a domain name, 8. Online issues ‘viagra.in’.

India has now adopted the ‘.in’ Dispute The Indian courts have woken up to the reality Resolution Policy to adjudicate disputes under that significant business is carried out on the the ‘.in’ domain. The policy is based on the Internet and that such business may give rise to Uniform Dispute Resolution Policy. In order to various forms of IP infringement. The very first succeed the complainant must satisfy the decision on the protection of IP rights on the following criteria: Internet came in Yahoo! v Akash Arora (PTC 1999 • The registrant’s domain name is identical 201), in which the Delhi High Court held that a or confusingly similar to a name, trademark domain name serves the same function as a or in which the complainant trademark and is therefore entitled to equal has rights; protection. As the domain names of the plaintiff • The registrant has no rights or legitimate and defendants were nearly identical and interests in respect of the domain name; and phonetically similar, there was every possibility • The registrant’s domain name has been that internet users would be confused and registered or is being used in bad faith. deceived into believing that the domain names had a common source or a connection. Such disputes are adjudicated by arbitrators, who may be chosen by the parties. The The court further observed that a disclaimer used arbitrators must conduct the arbitration by the defendants was not sufficient because the proceedings in accordance with the Arbitration nature of the Internet is such that use of a similar and Conciliation Act 1996. domain name cannot be rectified by a disclaimer and that the fact that the word ‘yahoo’ is included in the dictionary was irrelevant. The name had acquired uniqueness and distinctiveness and was associated with the plaintiff.

In Satyam Infoway Ltd v Siffynet Solutions Pvt Ltd (2004 (28) PTC 566 (SC)) the Supreme Court of India affirmed the inclination of the Indian

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