Chander Lall and Nancy Roy of Singh & Singh Lall & Sethi discuss some of the key decisions passed by courts in India over the past year.
An “all-rounder” is a popular term in cricket as a person who can bat and bowl reasonably well. When used in relation to toothpaste, however, the Delhi High Court, in a decision affirmed by the Appeal Court (Division Bench) and the Supreme Court of India, held that use of words such as “Allrounder” and “All Round Protection” is trademark use and constitutes an infringement of the registered trade mark “Allround”. The Division Bench in its decision, in fact, in a lighter vein, commented that perhaps an “all-rounder” is a term more closely associated with cricket than toothpaste.
A single judge of the Delhi High Court, while granting an injunction to Anchor, held that taglines and slogans enjoy the same protection as a trade marks. The court held that P&G could not claim as a defence that its use was not trademark use, on account of the fact that they themselves had applied for registration of the two marks used by them (ie, “All Around Protection” and “Allrounder”). The court held that the defendants cannot approbate and reprobate at the same time. On the use aspect also, the court found that the manner that these taglines were used by P&G, it constituted trademark use and not descriptive use.
This decision was affirmed by the Division Bench (Procter and Gamble Manufacturing (Tianjin) Company Limited and others v Anchor Health and Beauty Care Private Limited 2014 Indlaw DEL 1931) as well as the Supreme Court. The Division Bench categorically held that use of taglines such as All Around Protection in advertising constitutes trademark use and further observed that “advertisements grab attention and are sometimes better known than the branded products themselves; such slogans/taglines/expressions are marketing and communication tools par excellence and directly impact the consumers by encouraging them to choose certain goods or services over others”.
This decision was also affirmed by the Indian Supreme Court.
What do you do when a competitor chooses to copy all your brands and keeps applying for its registrations without commencing use of the marks? So if you own the Johnnie Walker brand you are saddled with applications for marks such as Bon-E-Walker, Bonnie-V-Walker, Petewalker, Peter Walker, Uncle Walker, Walker’s Choice and Captain Walker. If you also own the mark Smirnoff you will have to deal with applications for marks such as Balkanoff, Amarnoff, Czarnoff, Rhumnoff and Noff. If it’s Captain Morgan, then the applications will be for Captain, Captain Fisher, Captain Greene, Captain Daniel, Captain Scott, Captain Marvwell… the list is almost never ending.
The strategy of this predatory company was to regularly make such filings by paying around US$50 as the filing fee. If the marks got accepted, owing to a poor examination, and did not get opposed by the brand owner, the marks would proceed to registration. If they did not get accepted or were opposed, the predator would simply let the application be abandoned and make a fresh filing. Resultantly, the brand owner was saddled with literally hundreds of oppositions and the onerous task of carefully watching the Register and initiating cancellations if the mark had slipped through the watching process.
In a decision [Diageo Brands BV & Ors V Khoday Breweries Ltd & Ors (CS (OS) No. 2510 of 2015) decision dated 3 September 2014] a single judge of the Delhi High Court restrained the defendants from using, attempting to use or asserting any rights to use any similar trademark as that of Diageo. Though the court did not directly enjoin the defendant from filing trademark applications, the order restraining the defendant from asserting any right in such marks had the same effect. An appeal was preferred against the said decision which was dismissed by the Division Bench of the Delhi High Court.
In a writ petition filed by the Intellectual Property Attorneys Association (IPAA), (of which Chander Lall is the current president) the Delhi High Court has restrained the Trademarks Registry from acting beyond the powers conferred upon it by the statute [IPAA v Union of India & Anr – WP(C) No.3679/2014]. Vide an office order, Controller General of the Patents, Designs and Trademarks had instructed its officers not to allow amendment for substantial alteration inter alia statement of use of mark in a pending application. This was a cause of great concern to the clients and, of course, attorneys representing such clients. A representation sent by India’s Intellectual Property Attorneys Association (IPAA) to the Controller General against the same was rejected. Aggrieved by this arbitrary decision, the IPAA filed a writ petition challenging the said office order. Quashing the order passed by the Controller General, the Delhi High Court while criticising the decision of the Controller General, directed him to consider such requests for amendments case-by-case and held that there can be no blanket order against allowing applications seeking amendment in the period of use in an application for registration of a trademark.
Indian courts recognise use of a domain name as metatags as infringement of trademarks. The courts have become proactive in recognising different ways of committing acts of infringement in the age of fast-growing technology. The Bombay High Court in People Interactive (I) Pvt Ltd v Gaurav Jerry [Suit (L) NO. 622 OF 2014] recognised that the use of a registered trademark/domain name of a person as a meta tag by another for diverting web traffic amounts to infringement of trademark. In another decision, Mattel, Inc and Others v Jayant Agarwalla and Others [2008 (38) PTC 416], the Delhi High Court had found the defendants guilty of infringement by using metatatags and hyperlinking. A division bench of the Madras High Court also passed against Google against their use of third-party trademarks in their Adtext. The issue of use of a third-party trademark by Google in their Adwords program is under challenge before the Delhi High Court.
The question of deciding jurisdiction in disputes pertaining to infringement/passing off through e-commerce is no longer res integra. The Delhi High Court, in the case of World Wrestling Entertainment, Inc v M/S Reshma Collection [FAO(OS) 506/2013, held that because of the advancements in technology and the rapid growth of new models of conducting business over the internet, it is possible for an entity to have a virtual presence in a place which is located at a distance from the place where it has a physical presence. The availability of transactions through the website at a particular place is virtually the same thing as a seller having shops in that place in the physical world. The Court held that virtual presence is as good as physical presence.