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India: Covid -19 Update: Extension of Deadlines to May 18, 2020

May 4, 2020, 3:57 am
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The Indian Intellectual Property Office (IPO), vide public notice date May 4, 2020, has extended the due dates as follows:
For cases with deadlines falling between March 25 and May 17, 2020: New deadline is May 18, 2020.
For cases with deadline on or after May 18, 2020: There is no change.
As you may know, the Government of India had announced a countrywide lockdown beginning March 25, which was extended till May 03, 2020 on 14th April, 2020. The Government of India on May 1, 2020 had announced an extension of countrywide lockdown until May 17, 2020.
The office of CGPDTM, considering the fact that all the IP offices in India are located in Red Zones (Hotspots), issued a notification confirming that all due dates with respect to timelines/periods prescribed under the IP Acts and Rules towards completion of various acts/proceedings, filing of any reply/document, payment of fees, etc, stand extended and the new deadline for all such above-mentioned cases shall be 18th May, 2020.
Our teams are working remotely with robust IT systems in place and we continue to serve clients in the usual manner. Please note that e-filing services of the IPO remain unaffected during the lockdown.

Please feel free to contact us for any clarifications and we shall keep you posted on any further developments.
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WINES AND SPIRITS IN THE REALM OF GEOGRAPHICAL INDICATIONS (GIs)

May 6, 2020, 4:06 am
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Most of the times the quality of certain goods such as agricultural produce, foods and spirits, are valued by customers primarily because of the exceptional natural conditions of their region or country of origin, or because of their traditional production methods. The quality of such products can be gauged from its geographical place of origin and manufacture. Geographical indications (GIs) are the names assigned to places used to recognise products which have such ascription to the place of origin and manufacture (for example, “Tequila”, “Scotch whisky”, “Roquefort”, “Polish Cherry” or “Champagne”). A Geographical Indication tag undoubtedly increases the appeal of such goods and distinguishes it from others offered on the market.
On the world scale these are modulated by the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights2 and in India we have the Geographical Indications of Goods (Registration and Protection) Act, 1999, respectively, to manage and regulate the Geographical Indication tags. One of the significant reasons as to why the Geographical Indication tags have cumulated interest from countries across the world is their potential to be a powerful marketing tool. This not only speeds up the exports promoting economic growth but also concurrently preserves the cultural heritage of a country.
With respect to alcoholic beverages, Agreement on Trade-Related Aspects of Intellectual Property Rights provides for additional protection at two levels. As enshrined in Article 22 of this agreement, the first is the basic level or a minimal standard of protection where all geographical indications must be protected against use which would mislead the public or constitute an act of unfair competition.
The second is a higher standard of protection specifically for wines and spirits provided for in Article 23 of Agreement on Trade-Related Aspects of Intellectual Property Rights. In the special case of wines and spirits, Article 23.1 of Agreement on Trade-Related Aspects of Intellectual Property Rights prohibits the use of translations of geographical indications or attachment of expressions such as ‘kind’, ‘type’, ‘style’, ‘imitation’ to products not originating from the place indicated, even where the true origin is clearly indicated. Thus, ‘Champagne style sparkling wine, made in the USA would be prohibited even though this is clearly not deceptive.3 Another example of the same would be to refer to a product as “Scottish-type whisky” or “Scotch whisky flavour drink” when it is not whisky from Scotland, since it would be deceptive in nature.
The scope and significance of Geographical Indications is evinced through the nature of protection accorded to them. In 2009, a trademark application “Lambrusco dell’Emilia Canottieri” was filed before the Spanish Trademark and Patent Office (OEPM) in relation to wines falling in the international class 33. Although the trade mark did not entirely reproduce the protected denominations, its registration would have been in conflict with the earlier protected designation of origin ( PDOs) . Indeed, the scope of protection of a GI is not limited to the exact reproduction of the protected geographical name but it also prevents its partial reproduction and the use of names directly or indirectly evoking the denomination. Furthermore, the applicant was not a producer respecting the relevant PDO specifications and, as a consequence, he was not entitled to use the denomination in a label.
POSITION IN INDIA
The Scotch Whisky Association (“SWA”) a UK based organization that works for the advancement of global interests and profile of Scotch Whisky filed a case in the Delhi High Court in 20064. It filed a case against Golden Bottling Limited for manufacturing a “Red Scot” whisky alleging that the name of the whisky gave the consumers the impression that the whisky originated in Scotland and that it was in fact the real Scotch Whisky. The court, after analysing the definition of “Scotch Whisky” under the UK Scotch Whisky, Act, 1988 and Rule 3 of the Scotch Whisky Order, 1990 agreed that Scotch Whisky was a Geographical Indication. Since, Scotch Whisky was not registered as a GI in India back then, the court was unable to uphold the Geographical Indication tag. The court relying on Section 20(1) of the Indian GI Act, 1999, which prohibits any person from instituting any proceedings to prevent or to recover damages for the infringement of an unregistered Geographical Indication, held the Defendant guilty only of the tort of passing off. Further the court restrained the Defendant from using “Scot” or “Scotch” to market its products. Subsequently, the Government of India, vide a 2010 notification, recognized Scotch Whisky as a Geographical Indication.
As of today, foreign liquor varieties having the Geographical Indication recognition in India includes the “Peruvian Pisco” (2009), “France’s Champagne” (2010), “Napa Valley wine of the United States of America” (2010), “UK’s Scotch Whisky” (2010), “Cognac of France” (2011), “Porto of Portugal” (2011), “Douro wine of Portugal” (2011), “Tequila of Mexico” (2012), “Presecco of Italy” (2016), and “Irish Whiskey” (2019). Similarly, the Indian alcoholic beverages with Geographical Indication tag are “Feni of Goa (2009)”; “Nashik Valley wine of Maharashtra (2010)”; “Judima rice wine of Assam” is still awaiting the final registration.
India has metamorphosed into a lucrative hub for the global alcohol industry. The spurge of popular European wine brands are making a beeline for geographical indication (GI) registration in India is a testimony to the growth of the Indian consumer landscape for niche wines and spirits. The proposed deduction of import duty in India on wines and spirits as a part of negotiations under the free trade agreement with the European Union has also led to a greater interest of wine companies in the Indian market Owing to the unprecedented applications by wine producing giants across the globe , foreign products now outnumber Indian brands in requests for GI registration in India. It is quite interesting that out of the 227 applications pending registration before the GI Registry office, 125 are from European Union by wine and spirits brands. Hence, it is evident that the growing potential of the Indian wine market, which logs an annual growth of 20-30 %, is luring European wine brands.
The list of European wine brands seeking GI registration has some popular ones like Bordeaux and Burgundy from France, Manzanilla and Cava from Spain, Rheinhessen and Mittelrhein from Germany , Montepulciano d’Abruzzo and Chianti from Italy, Retsina of Attiki of Greece Tokaj of Hungary and Commandaria of Cyprus.
CONCLUSION
It is clear from the Court of Justice of the European Union’s judgment that the protection of Geographical Indications is important for brand owners, the market and consumers. However, the answers given by the Court of Justice of the European Union do, to a certain extent, limit the ability of holders of Geographical Indications to enforce their rights against third parties using an indication which, while not identical or similar, alludes to the Geographical Indication or the country to which that indication relates.
Despite this limitation, the enterprises should bear in mind that protection of geographical indications is quite broad. They are protected not only in the case of direct or indirect use to refer to unprotected products, but also with respect to many other practices such as improper exploitation or allusion, as well as false or misleading indications of place of origin, properties or characteristics that could create a false impression as to the origin of the product.
1 Associate, Chadha and Chadha
2 ‘Agreement on Trade-Related Aspects of Intellectual Property Rights’, WTO, https://www.wto.org/english/docs_e/legal_e/27-trips.pdf.
3 http://docsonline.wto.org.
4 Khoday Distilleries Limited v. The Scotch Whisky Association and others, Appeal (civil) 4179 of 2008.
The article was originally published on www.lexology.com on April 03, 2020 and can be accessed here.
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THE EVOLUTION AND GROWTH OF THE CONCEPT OF TRANSBORDER REPUTATION IN INDIA

May 7, 2020, 12:07 am
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Introduction
Trans-border reputation can be understood to be present when “a product and its trade name transcend the physical boundaries of the geographical region and acquire a trans-border or overseas or extra territorial reputation not only through import of goods but also by its advertisements.”[1]
The origin of trans-border reputation in India can be traced back to the modern policies of liberalisation, privatisation and globalisation introduced in the 1990’s that opened up the Indian economy, making it vulnerable to competition from international companies by blurring the concept of physical borders.
In the present era of digitalization and incessant use of the internet, easy travel and fast fashion, wherein goods and services are available for consumption across countries, the concept of territorial markets has ceased to exist, and we all identify ourselves as global consumers in a common marketplace.
In view of the above, it became incredibly difficult for bona fide businesses to protect their rights in their marks across countries; and despite spending considerable effort and money on marketing, advertisement and brand promotion, businesses often find their trade marks being diluted as a result of infringement and passing-off across jurisdictions.
Until the current Trade Marks Act, 1999 (hereinafter referred to as ‘the Act’) came into force, foreign marks in India did not enjoy any specific statutory protection under the Act and had to rely on the common law action of passing-off in order to safeguard their rights. However, in line with the TRIPS Agreement as well as the optional guidelines promulgated by WIPO's Joint Recommendation on the protection of well-known marks, the Act introduced the concept of well-known marks into Indian Trade Mark law. Section 2(1)(zg) of the Act defines well-known trade marks as ‘a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.’ Further, protection is granted to well-known trade marks under the Act under Sections 9 and 11.
The concept of transborder reputation also involves a thorough understanding of the concept of reputation and goodwill, which though used interchangeably, have been interpreted differently by courts. Goodwill can be understood as an asset of a business whereas reputation refers to the common knowledge amongst the public of something with respect to a particular feature that they possess which further acts as a source identifier.
Assessing the evolution in the concept of trans-border reputation vide case laws
The concept of transborder reputation in India has its origin in the landmark judgement of N.R Dongre v. Whirlpool Corporation[2] Ltd. In this case, the Respondent, a multinational corporation incorporated in the United States of America, was engaged in the process of manufacturing, selling, distributing and selling washing machines across numerous jurisdictions. In India, the Respondent obtained registration of their mark ‘WHIRLPOOL’ in the year 1956 in Classes 07, 09 and 11, however, their registration lapsed in 1977 due to non-renewal. In the meantime, in 1992, the Appellant, an Indian company, got the trade mark ‘WHIRLPOOL’ mala fidely registered for washing machines.
The issue before the Supreme Court was whether an act for passing off could be maintained in view of the fact that the Respondent had no valid registration in India post 1977. The Supreme Court was of the view that the Respondents, due to long prior use and extensive sale and advertising, had spill over or transborder reputation in the Indian market and the relevant section in India, associated the mark ‘WHIRLPOOL’ with the Respondent only. The Court further went on and opined that the Appellant had no plausible explanation for adopting an identical mark for identical goods, apart from the intention to trade upon the transborder reputation of the Respondent. Further, the Court observed that the fact that the cost of Appellant’s washing machine was 1/3rd of the cost of the Respondent’s washing machine was enough to substantiate the argument that the Appellant’s washing machines were not of the same engineering standard and were inferior in quality to the washing machines of the Respondent.
While upholding the rights of the Respondent in their mark ‘WHIRLPOOL’ the Supreme Court held as follows:
“The knowledge and awareness of a trademark in respect of the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available, but the knowledge and awareness of the same reaches even the shores of those countries where the goods have not been marketed. When a product is launched and hits the market in one country, the cognizance of the same is also taken by the people in other countries almost at the same time by getting acquainted with it through advertisements in newspapers, magazines, television, video films, cinema, etc. even though there may not be availability of products in those countries because of import constrictions or other factors. In todays world it cannot be said that a product and the trademark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not available. The knowledge and awareness of it, and its critical evaluation and appraisal travels beyond the confines of the geographical area in which it is sold. This has been made possible by the development of communications systems which transmit and disseminate the information as soon as it is sent or beamed from one place to another. Satellite television is a major contributor of the information explosion. Dissemination of knowledge of trademark in respect of a product through advertisement in media amounts to use of the trademark, whether or not the advertisement is coupled with the actual existence of the product in the market.”
Similarly, in Haw Par Bros. International Ltd v. Tiger Balm Co. (P) Ltd. and Ors.[3], the Court held that prior use of a mark has more significance than prior registration of a mark and as in this case, the Appellants were the first to use the mark ‘TIGER BALM’ and ‘TIGER’ in English and Chinese as well as the leaping tiger device extensively within and outside India, and as a result, the Appellant had acquired transborder reputation in its mark. The Court held that the right of the Appellants to institute the said suit were not barred in lieu of non-registration of trade mark in India as the Appellant’s reputation had transcended in the Indian market.
The concept of transborder reputation was further discussed in the case of Milmet Oftho Industries and Ors. a. Allergan Inc.[4] In this case, both the Appellant and the Respondent were pharmaceutical companies manufacturing a drug under the mark ‘OCUFLOX’. The contention of the Respondent being that they were the prior users of the mark globally and, the contention of the Appellant being that since the product of Respondent was not introduced in India, the Respondent was not entitled to an injunction. The Court ruling in favour of the Respondent held that the ultimate test should be who is first in the world market. The judgment in this case gave a whole new dimension to the law on protection of foreign trade marks as according to the ratio of this judgment, foreign claimants could now protect their marks solely on the basis of their prior use in the world provided an intention of doing business in India could be shown.
In view of the above cases, we can construe that the Indian courts were following the universality principle. The universality principle states that an action of passing off can be maintained if a trademark has a widespread international reputation even though the goods under the mark are not available in the domestic market.
However, there has been a gradual shift in the understanding of transborder reputation by the Indian Courts. In Mac Personal Care Pvt. Ltd. and Ors. v. Laverana Gmbh & Co. KG.[5], the Respondents i.e. Laverana Gmbh & Co. KG, were using the trade mark ‘LAVERA’ and their Indian application at that point was pending registration. The Respondents’ however had presence across numerous jurisdictions like Germany, Denmark, Hong Kong, Italy, France, Singapore etc. and the mark had earned goodwill and reputation. Further, the products under the said mark of the Respondents were available for sale on e-bay and other online retail stores accessible to all. On the other hand, Mac Personal Care Pvt. Ltd., having its business operations in India, started manufacturing and marketing goods under the mark ‘MAC’S LAVERA’ and later applied for registration of the same. While upholding the rights of the Respondents in their mark, keeping in mind the evidence relied upon like large number of Indians traveling overseas; in flight catalogues/magazines etc.; large number of students from India to countries where the Respondents’ goods are extensively sold, online availability of its products etc., the Court criticized that in cases of passing off, many a times, interim injunctions are granted on the basis of global nature of reputation without insisting on any localized business. In this case, the court did not follow blindly the universality principle but focussed also on what all came under the ambit of ‘use’ and ‘goodwill’ in the context of transborder reputation.
Further in E.I. Du Pont De Nemours & Co V. Gemini Distilleries Ltd.[6], the IPAB held that while the Appellants were the rightful proprietors of the mark ‘DU PONT’ with respect to alcoholic drinks such as whisky, brandy, gin and beer in several jurisdictions around the world, they could not prove that their reputation had spilled over to the Indian market and therefore, they failed to succeed in seeking any relief against the Respondents, who were using the mark ‘DUPONT’ in India. The IPAB further opined that the evidence provided by the Appellants comprising of trade mark certificates in numerous jurisdictions and sales figures in other countries does not suffice to prove that the Appellants have a presence in India and the Appellants should adduce cogent evidence in the form of extensive advertising in journals, magazines, presentations at fairs, exhibitions etc. to prove its spill over reputation in India. Therefore, to stop the Respondents from using their mark DUPONT would be detrimental to the Respondents who have bona fidely used the mark.
The most recent landmark case on transborder reputation has been the Toyota Jidosha Kabushiki v M/S Prius Auto Industries Ltd.[7] case which has been adjudicated taking a different approach from what the norm has been.
The Plaintiff i.e. Toyota is one of the largest automobile companies in the world and claims to have launched its first hybrid car in the world by the name ‘PRIUS’ in the year 1994 and the same was sold in Japan in 1997. The Indian application for the same was filed in 2009 and was pending registration. In the meantime, the Plaintiff came across the Defendant’s registration of the mark ‘PRIUS’ and use of the same as a part of its corporate name. The Defendant is engaged in the business of manufacturing automobile spare parts and had constituted the Company in the year 2002. The Plaintiff filed for obtaining a permanent injunction against the Defendant on the ground of their spill over reputation in India and resulting mala fide intention of the Defendant to trade upon it for illegal gains. The issue before the Court was to determine whether the Defendant is guilty of passing off its goods as that of the Plaintiff; and whether to follow the territoriality principle or the universality principle.
The main contention of the Plaintiff was that since 1997, the mark ‘PRIUS’ of the Plaintiff was widely advertised and publicized across several leading newspapers and magazines across the world and that recognition and reputation of a trade mark are not subject upon the actual sale of the goods under the mark in India. The Defendant on the other hand contended that it adopted the mark ‘PRIUS’ bona fidely in April 2001 and explained that the adoption came from the sentiment ‘Pehle Prayaas’ in view of the Defendant’s first attempt. Further, it contended that the Plaintiff had not adopted the mark in India until 2009 and more importantly, the Plaintiff had no presence in India vide advertisements at the time when the Defendant entered the market. The Defendant argued that there is no evidence put forward by the Plaintiff corroborating spill over reputation and goodwill of the Plaintiff’s mark to the Indian market prior to April 2001 i.e. date of adoption of the mark by the Prius Auto Industries.
The Supreme Court, while relying on the Starbucks (HK) Ltd. and Anr. v British Sky Broadcasting Group PLC. and Anr. case which states that ‘where the claimant's business is carried on abroad, it is not enough for a claimant to show that there are people in this jurisdiction who happen to be its customers when they are abroad. The Court must be satisfied that the claimant's business has goodwill within its jurisdiction’, held that the territoriality principle was way forward and that the Plaintiff to succeed in an action of passing off should be able to establish that its reputation had spilled over to the Indian market prior to the date of adoption of the mark by the Defendant.
The Court, while ruling in favour of the Defendant, held that the Plaintiff failed to give satisfactory evidence to show that it has acquired goodwill under the name 'PRIUS' in the Indian market prior to April 2001. The Court was of the opinion that “The advertisements in automobile magazines, international business magazines; availability of data in information-disseminating portals like Wikipedia and online Britannica dictionary and the information on the internet, even if accepted, will not be a safe basis to hold the existence of the necessary goodwill and reputation of the product in the Indian market at the relevant point of time, particularly having regard to the limited online exposure at that point of time, i.e., in the year 2001.” Further, the Court held that not all motor vehicles which are sold by Toyota in various foreign jurisdictions become known in India.
In view of the above, if a foreign entity wants to protect its marks in India, it would have to establish its trans-border reputation by proving knowledge of its marks amongst the relevant section of public in India. For doing so, the reputation of the mark of the foreign entity must reach a substantial segment of consumers in India via extensive advertising in magazines, journals, social media etc, which have wide circulation among the relevant public in India. Further, the foreign entity cannot claim transborder reputation by mere use in India at places like duty free shops or shops with limited public access. In addition to establishing spill over reputation in India, the foreign entity must not delay in initiating appropriate proceedings against the offender. While it is not necessary for the foreign entity to have a branch or an office in India or have extensive sales in India, it is necessary for the foreign entity to provide cogent and clear evidence to showcase the spill over of its reputation to the Indian market.
Conclusion
The concept of transborder reputation in India has evolved with the growth of Intellectual Property awareness in the country. Each of the above-mentioned cases has at length discussed the different facets contained in the concept. Over the years, we can see a gradual but steady shift from the universality principle to the territoriality principle. The Indian Courts, while deciding whether a mark has transborder reputation in India focus on the publicity and awareness of the mark amongst the relevant public within India as opposed to the mark having a reputation internationally. It has become pertinent for foreign claimants to prove that their mark has acquired distinctiveness in India and the relevant public associates the mark with the foreign claimant exclusively. This new approach also in turn protects the rights of the Indian proprietors who may have bona fidely adopted and used a mark.
[1] NR Dongre v Whirlpool Corporation [(1996) 5 SCC 714 ]
[2] NR Dongre v Whirlpool Corporation [(1996) 5 SCC 714 ]
[3] Haw Par Bros. International Ltd v. Tiger Balm Co. (P) Ltd. and Ors. 1996 (16) PTC 311(Mad).
[4] Milmet Oftho Industries and Ors. a. Allergan Inc. 2004 (12) SCC 624.
[5] Mac Personal Care Pvt. Ltd. and Ors. v. LaveranaGmbh & Co. Kg. 2016 (65) PTC 357 (Del).
[6] E.I. Du Pont De Nemours & Co V. Gemini Distilleries Ltd. 2004 (28) PTC 663 (IPAB).
[7] Toyota Jidosha Kabushiki v M/S Prius Auto Industries Ltd. 2016(67)PTC 374(Del).
The article was originally published on www.lexology.com on April 03, 2020 and can be accessed here.
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Tracing the development of "intermediary liability" in India

May 7, 2020, 9:13 pm
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Introduction
In the present scenario, the astronomical growth of the Internet and the easy access to everyone has led to an upsurge in online shopping and users on social media platforms, owing to which, there has been an escalation in unlawful activities. The main question which rises here is whether the intermediaries, i.e. the social media websites, ecommerce websites, blogging platforms, search engines, discussion boards etc. can be held liable for any unlawful or scrupulous content, product or service posted on their respective website, platform or board by a third party and to what extent?
The term “intermediary” has been defined under the Information Technology Act, 2002[1] (“IT Act”) with respect to any particular electronic message and means any person who on behalf of another person receives, stores or transmits that message or provides any service with respect to that message. This list is non-exhaustive and includes Internet Service providers (“ISPs”) as well as any website that provides user-generated content.
Thus, intermediary liability, which is based on the legal principle of vicarious liability, means that the service providers shall be held accountable for any illegal act of the user on their platform. As Rebecca MacKinnon has said, "Intermediary liability means that the intermediary, a service that acts as ‘intermediate’ conduit for the transmission or publication of information, is held liable or legally responsible for everything its users do."
However, it is not an easy task for these intermediaries to regulate the data flowing through them owing to their mammoth size. These platforms have often failed to protect their users in several religious, socio-political as well as economic cases which have led to misuse of data and free speech. The spreading of false news on Facebook and WhatsApp has incited riots, murders, mob-lynching as well as mass scale migration and the involvement of Facebook and Twitter in the US presidential elections in 2016 led to a widespread distrust of these platforms. There is harmful content ranging from hate propaganda to fake news to child pornography. Thus, there is a need for imposing greater liability on the intermediaries.
To answer the disconcerting question regarding intermediary liability, various jurisdictions have laid down innumerable legislations and guidelines and are constantly re-examining and reframing the same. It is observed that the Governments as well as Courts globally are becoming more “consumer friendly”, owing to the rise in the complaints of the rights holders and are adopting stricter approach and demanding more accountability from intermediaries.
Development of "intermediary liability" in India
In India, the regulation of intermediaries are incorporated in various laws and sub-legislations. Further, there has been a spate of cases in India and the Indian courts have been proactive in adjudicating on these issues.
IT Act (2000)
Under the IT Act, initially only network service providers were protected “for any third party information or data made available by him if he proves that the offence or contravention was committed without his knowledge or that he had exercised all due diligence to prevent the commission of such offence or contravention.” Thus, the original IT Act provided little or no safe harbour protection to intermediaries.
Avnish Bajaj v. State[2] and the Amendment to the IT Act (2008)
In this case, the Managing Director (and not the company Baazee.com) was charged with criminal provisions under the Indian Penal Act as well as the IT Act, for content circulated by a third party on its ecommerce platform. However, the Managing Director escaped liability since the company was not added as an accused either before the High Court or before the Supreme Court. Further, the Delhi High Court also observed that companies bear the risk of acquiring knowledge if the content uploaded escapes the filters which are meant for blocking pornographic content.
In this case, it was also observed that there was a requirement for widening the scope of protection given to intermediaries, and thus, the IT Act was amended in 2008 to include a safe harbour regime under Section 79 of the IT Act and to amend the definition of intermediaries (as it reads presently). The amended Section 79 of the IT Act provides safe harbour for online intermediaries from “all unlawful acts” rather than only offence or contravention and incorporates the requirement for due diligence for claiming safe harbour. It is an exemption provision which provides conditional immunity to the intermediaries as long as they prescribe to the provisions/conditions of the section.[3]
The Information Technology (Intermediaries Guidelines) Rules, 2011 (“Intermediary Guidelines”) (2011)[4]
After the amendment to the IT Act in 2008, the Government of India introduced the Intermediary Guidelines, which were mandatory for all intermediaries to follow for claiming safe harbour protection. These are to be read in consonance with the IT Act and the due diligence requirements that must be observed by intermediaries, provided under Rule 3, are:
Intermediaries to publish rules and regulations, privacy policy and user agreement;Rules and regulations, terms and conditions or user agreement shall specify all prohibited acts, i.e. belonging to other persons, grossly harmful, harassing or unlawful, harms minors, infringes any intellectual property rights, violates any law, is deceiving or misleading, impersonates any person, contains virus, threatens India etc. and the intermediary should inform users that violation of same shall lead to termination of access,Intermediaries to not knowingly host or publish information as specified in sub-rule (2),Intermediaries to disable such information within 36 hours and storage of same for 90 days for investigation purposes,Intermediaries to provide assistance to authorised government agencies,Intermediaries to take all reasonable measures to secure its computer resource,Intermediaries to report cyber security incidents to the Indian Computer Emergency Response Team andIntermediaries to appointment and publish the details of a Grievance Officer on its website.
However, the IT Act and the Intermediary Guidelines were inundated by various issues such as ambiguity in prohibited content and forced decision by intermediaries. Further, any person could request the intermediaries to take down the unlawful content. However, these issues were mostly resolved in the Shreya Singhal judgement.
Shreya Singhal v Union of India (2015)[5]
In 2015, in the landmark Shreya Singhal judgement, the Supreme Court for the first time recognized the Indian citizen’s free speech rights over the Internet by striking down the draconian Section 66A of the IT Act, which provided for punishment for sending offensive messages through communication services.
Further, regarding intermediary liability, the Court held that “Section 79 is valid subject to Section 79(3)(b) being read down to mean that an intermediary upon receiving actual knowledge from a court order or on being notified by the appropriate government or its agency that unlawful acts relatable to Article 19(2) are going to be committed then fails to expeditiously remove or disable access to such material…. Similarly, the Information Technology "Intermediary Guidelines" Rules, 2011 are valid subject to Rule 3 sub-rule (4) being read down in the same manner as indicated in the judgment.”
The Court also observed that “it would be very difficult for intermediaries like Google, Facebook etc. to act when millions of requests are made and the intermediary is then to judge as to which of such requests are legitimate and which are not.”
Subsequently, in the case of Kamlesh Vaswani v Union of India, the Supreme Court issued directions to intermediaries to disable specific content where website operating child pornography was sought to be restricted.
My Space Inc. vs Super Cassettes Industries Ltd. (2017)[6]
In this case, the division bench of the Delhi High Court distinguished Copyright matters and held that if intermediaries were given the responsibility of identifying illegal content, it could have a chilling effect on free speech and will lead to private censorship. This judgment dealt with uploading of music on myspace.com and a copyright infringement suit was brought by Super Cassettes India Ltd.
The Court also gave the concept of ‘actual or specific knowledge’ and held that intermediaries can be held liable if they have actual or specific knowledge of the existence of infringing content on their website from content owners and despite such notice, they do not takedown the content. There is no necessity of a court order in such cases. The Division Bunch further pronounced that “in case of internet intermediaries, interim relief has to be specific and must point to actual content, which is being infringed”.
Kent Ro Systems Ltd & Anr vs Amit Kotak & Ors (2017)[7]
In this case, the Petitioner, in a suit for permanent injunction against the Respondent for infringing its intellectual property rights by copying its designs, also added eBay India as a party for permitting the Respondent to advertise, offer to sell and sell its product on its website.
The Court held that “to hold that an intermediary, before posting any information on its computer resources is required to satisfy itself that the same does not infringe the intellectual property rights of any person, would amount to converting the intermediary into a body to determine whether there is any infringement of intellectual property rights or not… The IT Rules, according to me do not oblige the intermediary to, of its own, screen all information being hosted on its portal for infringement of the rights of all those persons who have at any point of time complained to the intermediary… Merely because intermediary has been obliged under the IT Rules to remove the infringing content on receipt of complaint cannot be read as vesting in the intermediary suo motu powers to detect and refuse hosting of infringing contents… I am of the view that to require an intermediary to do such screening would be an unreasonable interference with the rights of the intermediary to carry on its business.” Thus, the Court reiterated the specific knowledge principle of the Myspace case.
Subsequently, in Lifestyle Equities C.V. and Ors v Amazon Sellers Service Private Limited & Anr.[8], the Court directed Amazon to share the details about the person who had uploaded the links as well as to remove the links advertising the infringing and counterfeit goods.
Further, on July 26, 2018 in Rajya Sabha, India’s IT minister, Ravi Shankar Prasad spoke on the issue of “Rising Incidents of Violence and lynching in the country due to misuse of social media platforms” and said that if social media platforms “…do not take adequate and prompt action, then the law of abetment also applies to them.” Further, he also said that some provisions of the IT Act need to be “revised and reinforced so that they can respond to the emerging challenges. This is proposed to be done by strengthening the implementation aspects of Section 79 of IT Act, 2000.”[9]
Christian Louboutin SAS v. Nakul Bajaj and Ors (2018)[10]
In this case, the Delhi High Court clarified the responsibilities and liabilities of ecommerce intermediaries that were previously undetermined. The Plaintiff filed a trademark infringement suit alleging that the Defendant sells counterfeit products bearing the Plaintiff’s name on its website, uses the image of the founder of the Plaintiff, and the names “Christian” and “Louboutin” are used as meta-tags on the Defendant’s website to attract internet traffic. However, the Court did not hold the Defendant liable for trademark infringement.
The Court held that the Defendant was not an intermediary and was an “active participant” and thus, would be liable for infringement. It was observed that the Defendant’s role was more than an intermediary as it was identifying the sellers, enabling the sellers actively, promoting them and selling the products in India. It was also observed that so long as they are mere conduits or passive transmitters of the records or of the information, they continue to be intermediaries, but merely calling themselves as intermediaries does not qualify all ecommerce platforms or online market places as one.
The Court also held that the conduct of intermediaries, in failing to observe ‘due diligence’, could amount to ‘conspiring, aiding, abetting or inducing’ unlawful conduct and would disqualify them from the safe harbour exemption, as per Section 79(3)(a).
Draft Information Technology [Intermediaries Guidelines (Amendment) Rules], 2018, (“Draft Rules”) (2018)[11]
On December 24, 2018, Ministry of Electronics & Information Technology released the Draft Rules for amending the existing Intermediaries Guidelines to curb the “Misuse of Social Media and spreading Fake News”. These Draft Rules place several obligations on the intermediaries, some of which are enabling traceability to determine the originator of the information for assistance to law enforcement, proactive monitoring of content uploaded on its platform by deploying automated tools, takedown of illegal content within 24 hours, and mandatory incorporation of companies having more than 5 million users in India.
M/S Luxottica Group S.P.A & Another vs M/S Mify Solutions Pvt Ltd & Ors (2019)[12]
The Plaintiff filed a trademark infringement suit alleging that the Defendant sells counterfeit products of the Plaintiff’s brand OAKLEY. The Court held that the due diligence and care required under the IT Act had not been met and the Defendant was guilty of trademark and copyright infringement. The Court herein applied the tests laid down in the Christian Louboutin case to determine whether the ecommerce platforms claiming to be exempted under Section 79 of the IT Act actually qualify as intermediaries or not. The Court observed that presence of any element which shows active participation could deprive intermediaries of the immunities and factors such as allowing storing of counterfeit goods, using the mark in an invoice, advertising the mark etc., would determine whether the entity in question is an intermediary or not.
Amway India Enterprises Pvt Ltd v 1Mg Technologies Pvt Ltd & Anr. (2019)[13]
One of the main issues in this case was the conflict between Direct Selling Business and ecommerce platforms and whether the intermediary had stepped into the shoes of the seller by setting its own retail prices, discounts, return/refunds policies etc. Thus, the issue was whether the intermediary had violated the Direct Selling Guidelines issued by the Government, which were binding on the Plaintiff. In this regard, the Single Judge held that the Direct Selling Guidelines were binding on ecommerce platforms and the sellers on such platforms. However, the Division Bench held that such guidelines are advisory in nature and are not law and thus, not enforceable.
Further, the Court also gave a detailed reasoning as to why major ecommerce giants are actively involved and thus, do not qualify as intermediaries entitled to protection under the safe harbour provided in Section 79 of the IT Act. It was held that any non-compliance of the due diligence requirements as per the Intermediary Guidelines and failure to adhere to their own policies would make the ecommerce platforms liable. The Division Bench also observed that the value-added services provided by the Defendant as online market places, do not dilute the safe harbour granted to them under Section 79 of the IT Act.
Conclusion
From the statutory provisions and the judicial pronouncements mentioned above, it is observed that the rights, immunities and liabilities of intermediaries in India are ever-changing and constantly evolving. However, it is apparent that the trend in India is towards more stringent intermediary liability. At present, Section 79 of the IT Act, the Intermediary Guidelines as well as the Shreya Singhal Judgement, is the authoritative law of the land on intermediary liability. Thus, intermediaries cannot be held liable unless they had proper information, and unless proper order is given by the requisite authority. Further, the information provided to the intermediaries needs to be specific and not broad and right owners should not request intermediaries to be vigilant about any future violations. However, the intermediaries are expected to demonstrate “due diligence”.
[1] Section 2 (1)(w) of Information Technology Act reads as :
In this Act, unless the context otherwise requires - "intermediary", with respect to any particular electronic records, means any person who on behalf of another person receives, stores or transmits that record or provides any service with respect to that record and includes telecom service providers, network service providers, internet service providers, web-hosting service providers, search engines, online payment sites, online-auction sites, online-market places and cyber cafes
[2] Avnish Bajaj v. State, 150 (2008) DLT 769
[3] Section 79 of Information Technology Act reads as :
Exemption from liability of intermediary in certain cases. -
(1) Notwithstanding anything contained in any law for the time being in force but subject to the provisions of sub-sections (2) and (3), an intermediary shall not be liable for any third party information, data, or communication link made available or hosted by him.
(2) The provisions of sub-section (1) shall apply if-
(a) the function of the intermediary is limited to providing access to a communication system over which information made available by third parties is transmitted or temporarily stored or hosted; or
(b) the intermediary does not-
(i) initiate the transmission,
(ii) select the receiver of the transmission, and
(iii) select or modify the information contained in the transmission;
(c) the intermediary observes due diligence while discharging his duties under this Act and also observes such other guidelines as the Central Government may prescribe in this behalf.
(3) The provisions of sub-section (1) shall not apply if-
(a) the intermediary has conspired or abetted or aided or induced, whether by threats or promise or othorise in the commission of the unlawful act;
(b) upon receiving actual knowledge, or on being notified by the appropriate Government or its agency that any information, data or communication link residing in or connected to a computer resource, controlled by the intermediary is being used to commit the unlawful act, the intermediary fails to expeditiously remove or disable access to that material on that resource without vitiating the evidence in any manner.
Explanation. -For the purpose of this section, the expression "third party information" means any information dealt with by an intermediary in his capacity as an intermediary.
[4] The Intermediaries Guidelines Rules, https://meity.gov.in/writereaddata/files/GSR314E_10511%281%29_0.pdf
[5] Shreya Singhal v. Union of India, [(2015) 5 SCC 1]
[6] My Space Inc. vs Super Cassettes Industries Ltd., [236 (2017) DLT 478]
[7] Kent Ro Systems Ltd & Anr vs Amit Kotak & Ors, [2017 (69) PTC 551 (Del)]
[8] Lifestyle Equities C.V. and Ors v Amazon Sellers Service Private Limited & Anr., [CS (COMM) 1015/2018]
[9] https://www.medianama.com/2018/07/223-govt-law-abetment-social-media-fake-news/
[10] Christian Louboutin SAS v. Nakul Bajaj & Ors, [2018(76) PTC 508(Del)]
[11] https://meity.gov.in/writereaddata/files/Draft_Intermediary_%20Amendment_24122018.pdf
[12] Luxottica Group SPA and Ors v Mify Solutions Pvt Ltd and Ors, [2019(77) PTC 139(Del)]
[13] Amway India Enterprises Pvt Ltd v 1Mg Technologies Pvt Ltd & Anr., [CS (OS) 410/2018, CS (OS) 453/2018, CS (OS) 480/2018, CS (OS) 531/2018, CS(OS) 550/2018, CS (OS) 75/2019 and CS (OS) 91/2019]
The article was originally published on www.lexology.com on April 03, 2020 and can be accessed here.
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COVID-19 UPDATE: Deadline of May 18, 2020 fixed by the IP Office for all filings suspended by the Delhi High Court, new deadline awaited

May 13, 2020, 3:08 am
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On May 11, 2020, the Delhi High Court suspended the deadline of May 18, 2020, fixed by the office of the Controller General of Patents, Designs and Trade Marks (CGPDTM) for all IP filings, completion of acts/ proceedings, payments, etc. Further, this suspension shall be applicable to all the cases with deadlines falling on March 15, 2020 or thereafter. No new deadline has been announced as of now by the Court or the IPO and we await further orders of the court / Intellectual Property Office regarding a fresh deadline. A writ petition [W.P.(C) No.3059/2020] was filed by the Intellectual Property Attorneys Association (IPAA) before Delhi High Court against the public notice dated May 4, 2020, issued by the Office of CGPDTM, as it stated that the deadline for filing documents, completion of various acts/proceedings, filings, payment of fees, etc. for all matters falling between the lockdown period in India (i.e. from March 25, 2020- May 17, 2020) shall be May 18, 2020. The grievances raised by the Petitioners were as follows:- 1. The period of limitation is to kick in from March 15, 2020 (i.e. the date stated by the Supreme Court in its earlier order dated March 23, 2020) and not March 25, 2020 (i.e. when the lockdown in the country actually began). 2. The cut-off date (i.e. May 18, 2020) fixed by the Office of the CGPDTM is against the earlier order of the Supreme court and imposes onerous burden both on the litigants as well as their advocates since there’s really no gap between the date on which the lockdown will be lifted and the filings are to be made. The court considered both the grievances and in cognizance of the earlier order of the Supreme Court (wherein it was stated that the period of limitation shall stand extended w.e.f. March 15, 2020), provided a confirmation that the period of limitation shall be effective from March 15, 2020 and not March 25, 2020. The Court further agreed that a very narrow window has been provided by the Office of the CGPDTM for completion of various filings/ acts by the Litigants/ their Advocates, which should not have been done and thus, suspended the operation of the public notice dated May 4, 2020, which was issued by the Office of the CGPDTM. We advise you to provide us with instructions and documents for any filings with the IPO as per your earliest convenience. We continue to serve clients in the usual manner as our teams are working remotely with 100% capacity and robust IT systems in place. We are closely monitoring the situation and shall update you one we have further news on this. Please feel free to contact us for any clarifications.
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IP Jurisprudence for a Cause

May 14, 2020, 11:57 pm
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“Justice is the constant and perpetual will to allot to every man his due”, a well-contended phrase by one of the most prominent Roman jurists , Domitus Ulpian is capable of elucidating the evolving notions of justice in the field of intellectual property. The concept of “jurisprudence” has witnessed an unprecedented evolution since the organization of human society. The need to understand the most “equitable” manner of judicial governance has led to the emergence of several schools of legal jurisprudence. One of the most widely accepted schools of thought in this regard is the “Sociological School of Jurisprudence”, aimed at highlighting the interdependence between law and society. This contemporary branch of jurisprudence highlighted the fact that the presence of law in any society is solely for the betterment of the society and no form of justice can survive in a standalone manner. This year as the world marked the 50th anniversary of the WIPO Convention on 26 April, the theme of this year was dedicated to “IP for a green future”. While the commemoration of this day across the globe took different forms, we endeavor to trace some of the most public-spirited Indian decisions in the field of IP. The pressing need to augment recognition accorded to “holder’s rights” in the branch of trade mark law has led to several favorable orders in the recent past. While the concept of “public interest” has remained integral to pharmaceutical patents in India, the same has seeped in the realm of trade marks in the recent past. Even in case of copyright protection in India, certain exceptions in the Indian Copyright Act serve to protect certain specific uses of copyrighted materials, typically, where the work is for personal and non-commercial use.The Indian courts, in the last few years have directed decisions to serve the “larger good” of the society especially against infringers of intellectual property. In a suit where the infringers were selling counterfeit RAY BAN sunglasses, they were directed to distribute 500 pieces of unbranded glasses to the Blind Relief Association, instead of paying compensatory damages. In another matter, namely Dharampal Premchand v Tata Zarda Factory[1], the Defendants were applying the plaintiff’s BABA ZARDA trademark to their tobacco-based products. The court ordered the defendants to install spittoons in cancer hospitals in Hyderabad. With a view to penalize unauthorized duplication of protected content, the court directed an infringer caught with unlicensed Microsoft software to work with Microsoft in anti-piracy campaigns and participate in seminars to advocate the correct and legal use of software. In an attempt to move towards greener litigation, the Delhi High Court in a contempt proceeding[2], granted costs of Rs. 80 lakhs to be paid by the Defendant entity and directed that the same amount is used for planting 1,40,000 trees on the Central Ridge in Delhi. In another contempt proceeding[3] concerning an intellectual property dispute, the Hon’ble High Court of Delhi passed a public-spirited order wherein the Defendants were directed to work towards the benefit of adolescent girls and supply wholesome mid-day meals to 10 government schools and an NGO called “Bachhiyon Ka Ghar” for a period of two years, in order to emphasize on the need for good nutrition for the development of healthy children. The defendants were also directed to supply sanitary napkins for female students in the aforementioned institutions on the 5th day each month for a period of one year, in order to assist and aid in the maintenance of health and hygiene of adolescent girls. Some other directions to the defendants included installation of a Reverse Osmosis Water Purifier at the NGO “Bachhiyon Ka Ghar”, in order to instil and emphasize the need for potable water and provide 20 tournament size footballs to each of the aforesaid institutions and to 20 more government schools, as Social chooses, in order to promote the spirit and fun of sports and to foster friendship and team-spirit on the playfield.
In what is popularly known as the “Ralph Lauren Order”[4], the Defendant who was found selling counterfeited “POLO” t-shirts was directed to donate the infringing clothes to an orphanage instead of destroying the products. These attempts made by Indian courts especially in the field of IP are commendable, since they enable the creation of judicial system which aims at the formation of a reformative society. Such orders serve the multiple purposes of penalizing the wrongdoer, compensating the wronged party in the form of benefit towards corporate social responsibility and promoting public interest and public good.
CONCLUSION
Louis. D. Brandeis once quoted that “If we desire respect for the law, we must first make the law respectable”. In any democratic country, the role of the judiciary assumes great importance in determining the rights and interests of the public at large, and recent judgments delivered by the Indian judiciary have re-affirmed the same. Intellectual property laws simply lay down the statutory provisions which define the general direction in governing the intellectual and proprietary rights of the holders. Thus, the major task of interpretation of those laws in such a manner that serves the larger good of the society rests with the judiciary. The present trend adopted by the judiciary in deciding cases involving proprietary laws has been praiseworthy, and welcomed by various social organizations in India.
[1] Dharampal Premchand v Tata Zarda Factory (CS (OS) 2/2006)
[2] Merck Sharp and Dohme Corp and Another vs. Abhaya Kumar Deepak and Another, CONT (CAS) (C) 846/2018
[3] Hermes International & Anr. v Riyaaz Nasruddin Amlani & Ors., CONT. CAS (C) 660/2018 & CM No. 9044/2019
[4] Polo Ralph Lauren Corporation v Arora (CS (OS) 1354/2006)
The article was originally published on www.lexology.com on May 14, 2020 and can be accessed here.
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INDIA: COVID-19 UPDATE: IPO fixes new due date of June 1, 2020 for all matters with original due date between March 15 - May 17, 2020

May 18, 2020, 10:41 pm
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The Indian Intellectual Property Office (IPO) has fixed June 1, 2020 as the new due date for all matters where the original due date was falling between March 15 to May 17, 2020. The deadline for all matters falling due between May 18 to May 31, 2020 remains unchanged.
The IPO has also stated that the rights of individuals or applicants seeking extension of time/condonation of delay under various provisions of the relevant Acts and Rules in respect of these applications will remain unaffected.
However, as it is still difficult to perform several tasks such as notarization of documents, courier of original documents, etc., we expect further clarification from the IPO regarding such matters. In addition, the decision of IPO to keep due dates falling between May 18 to 31, 2020 as unchanged is also likely to be challenged before the Court in a pending writ petition and further news in this regard is expected soon.
We advise you to provide us with instructions and documents for any filings/ actions in respect of those IP matters, whose deadline was due between March 15 - May 17, 2020 at the earliest, so that we can take the necessary action before the deadline of June 1, 2020.
We continue to serve clients in the usual manner as our teams are working remotely with 100% capacity and robust IT systems in place.
Please feel free to contact us for any clarifications.
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Naked Licensing and Quality Control

May 21, 2020, 10:14 pm
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Trademark licensing is the process of authorizing a Registered user to use the trademark of the Registered Proprietor for a specified period of time and on mutually agreed terms laid down in the licence agreement. Naked licensing refers to the concept whereby the licensor allows the use of its trademark by a licensee without including quality control provisions and/or enforcing such provisions in the licence agreement. “Merely the provision for payment of royalty in the contract without any clause to quality control would turn the licence into a naked licence.”[1] Such type of licensing may have an impact on the proprietary rights vested in a trademark that is licensed resulting in improper enforcement and at times relinquishment or abandonment of rights. The trademark owner when applying such a concept loses the right to approve the said use of the mark in connection with the licensee’s goods or services.
In Barcamerica International USA Trust v. Tyfield Importers Inc[2], it was held that the
uncontrolled or naked licensing may result in the trademark ceasing to function as a symbol of quality and controlled source. “Consequently, where the licensor fails to exercise adequate quality control over the licensee, a court may find that the trademark owner has abandoned the trademark, in which case the owner would be stopped from asserting rights to the trademark.”
Naked licensing is a theory against the public interest that can cause confusion and deception amongst the public. The absence of the set quality by the registered user hampers the goodwill and repute of the mark/brand under which the goods and services belonging to the registered proprietor are manufactured/rendered. This theory pulls down the well-known status of the mark of the registered proprietor due to the inferior quality of goods and services produced/rendered. McCarthy has described the importance of Quality Control because “the consumer assumes that products sold under the same trademark will be of equal quality regardless of the actual physical source or producer of goods.”[3]
QUALITY CONTROL IN INDIA
Under the Trade Marks Act, 1999[4] licensing of registered trademarks is permitted by registered third persons and also by unregistered third parties having a written agreement for that purpose with the registered proprietor of the trademark.[5]
Before the enactment of the Trade Marks Act, 1999, the Indian judiciary had passed orders permitting use by the common laws and to accrue to the advantage of the registered proprietor. The basis behind such decisions was to consider all factors evolving around a trademark, ranging from the relationship between the licensor and licensee and the permitted use of the licensed trademark.
In the case of Gujarat Bottling Co. Ltd and Ors. v. Coca Cola Company and Ors.[6] the Supreme Court held that the licence of a trademark without the registration of the licensee would be governed by common law. It was also held that “an unregistered licensee could validly use the trademark on the fulfilment of the three conditions of not causing confusion or deception to the public; not destroying the distinctiveness of the trademark in the public; and maintaining a connection between the proprietor and the goods under the mark.”[7]
Currently, under the Trade Marks Act, 1999, the registration of grant as a registered user is subject to proper control check by the registered proprietor over the use of the mark by the registered user. This exercise of maintaining a quality control provision is necessary to be incorporated in the licence contract and absence of such provision will result in a refusal of the contract by the Registrar.
Section 49(1)(b)(i) of the Act, entails that the licensor must furnish an affidavit “indicating the relationship, existing or proposed, between the registered proprietor and the proposed registered user, including particulars showing the degree of control by the proprietor over the permitted use which their relationship will confer….”[8]
Recently, in the case of UTO Nederland BV v. Tilaknagar Industries Ltd.[9] the Bombay High Court, delivered an instructive judgment on the concepts of quality control and licensing. The Court while examining the words ‘cede’ and ‘revert’ in a contractual document referred to licensing as a complete transfer of trademark rights and held that it is a reasonable to presume that parties which seek to obtain a licence to use a trademark acknowledge the reputation and goodwill attached thereto. The Court eventually found that the plaintiff had in fact abandoned its rights after examining all facts and circumstances and subsequent agreements in the case including the absence of quality control.
The term ‘degree of control’ is nowhere defined in the Act, but the language of Section 49(1)(b)(i) implies the mandatory prescription about quality control is to be added by the licensor over the use of the mark by the licensee[10] and like any other clause or provision in a contract, this quality control provision should be definite and unambiguous. Furthermore, the scope of quality control varies according to the licensing contract, the goodwill and reputation, well-known status of the mark and economic wants of the parties. Thus, the Indian trademark law does not allow the registered proprietor to exercise naked licensing and gives the Registrar powers to change or cancel the registration of person as registered user.[11]
CONCLUSION
Trademark licensing agreements enable businesses to expand into new horizons and enter new markets by connecting with multiple registered users. It is imperative that when enforcing such licence agreements, the trademark owners include adequate quality control provisions to control the reputation of their brand name. The goods or services hailing from the registered user must be duly supervised and inspected by the trademark owners to maintain the status quo of their brand. Quality control plays a quintessential role in representing the standing of the brand associated with the business and its reputation. Therefore, the brand owners are solely responsible for controlling the third-party production, manufacture, or distribution done for their brand.
[1] Ritz Associates v Ritz-Carlton Co 134 USPQ 86 (SDNY 1962)
[2] Hoffman Ivan, ‘Naked’ licensing of trademarks, http://www.ivanhoffman.com/naked.html
[3] J. Thomas McCarthy, Trademarks and Unfair Competition
[4] Act 47 of 1999.
[5] Section 2(1)(r) of the Trade Marks Act, 1999
[6] Gujarat Bottling Co. Ltd and Ors. v. Coca Cola Company and Ors., AIR 1995 SC 2372
[7] Ibid.
[8] Section 49(1)(b)(i) of Trade Marks Act, 1999
[9] UTO Nederland BV v. Tilaknagar Industries Ltd; 2012 (49) PTC 249 (Bom)
[10] Section 50(1)(c)(i) and (ii) of the Trade Marks Act, 1999.
[11] Section 50(1)(d) of the Trade Marks Act, 1999.
The article was originally published on www.lexology.com on May 21, 2020 and can be accessed here.
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INDIA: Covid-19 update: High Court stays IPO’s notice setting June 1 deadline, new deadline awaited

May 24, 2020, 10:00 pm
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On May 21, 2020, the Delhi High Court stayed (until further orders) the operation of the two public notices dated May 18, 2020 and May 20, 2020 issued by the IPO, which fixed the new deadline of June 1, 2020 and notified about submission of documents in proceedings under the Patents Act, respectively.
Thus effectively, all due dates from March 15, 2020 currently stand suspended.
It may be noted that after suspension of its earlier order (dated May 4, 2020) by the High Court, the IPO had issued a public notice on May 18, 2020 extending the deadline for all matters originally falling due between March 15-May 17, 2020 to June 1, 2020 and the same did not provide any further advisory in relation to matters falling due on May 18, 2020 or thereafter. Further, vide it’s latest public notice dated May 20, 2020, the IPO notified that filing of Petitions (without fee) under Rule 6 (6) of the Patents Rules (which states that delay in filing documents can be condoned on a petition for such condonation of delay/ extension of time made no later than 1 month from the date when such situation ceased to exist) has been provisioned through E-Filing mode (under form 30) and through physical filing at the Patent office counters (other than Patent agents).
The High Court has now stayed the operation of the IPO’s two public notices dated May 18, 2020 and May 20, 2020 until further notice, making it absolutely clear that order of the Supreme Court is binding and it is not open to any Court, Tribunal or Authority to impose timelines on the Limitation period, even if it is prescribed under a Special Statute.
Further, since the intention of the IPO for issuing the said public notice (in backdrop of the order passed by the Supreme Court and the one passed by the High Court suspending the operation of the IPO’s earlier notice dated May 4, 2020, issued on similar lines) were not clear, the Court also ordered the IPO to file a response. The matter has been scheduled for June 17, 2020 for further consideration.
We are closely monitoring the latest developments in this regard and shall keep you posted regarding any further developments. Meanwhile, we advise you to provide us with instructions and documents for any filings with the IPO as per your earliest convenience.
We continue to serve clients in the usual manner as our teams are working remotely with 100% capacity and robust IT systems in place.
Please feel free to contact us for any clarifications.
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ANALYZING THE SIGNIFICANCE OF TRADE MARKS IN THE AUTOMOBILE SECTOR

May 26, 2020, 9:39 pm
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INTRODUCTION
“Within every brand is a product, but not every product is a brand”, a highly pragmatic phrase by David Ogilvy is capable of encapsulating the dominance of trade marks in shaping consumer choices. As of 2019, the Indian automobile market holds the position of being the fourth largest in the world, with the scale of production increasing 9.5 per cent every year. [1]With an unprecedented scale of demand, most of the global automotive giants are battling to dictate the Indian market. The Indian consumership, as has been determined by a large number of market studies is a highly diverse group with varied choices. It is not surprising that in order to cater to population of over 1 billion, brands leave no stone unturned in establishing what is commonly known as “consumer association” as well as “brand value”. Brand value is determined if a consumer is willing to pay more for one brand over the other and it is not always the product that determines the brand value. Brand value creates an image of desirability. A classic example of the same is the case of the “BMW” trade mark that the mark has become synonymous to the brand. The significance of trade marks in establishing brand goodwill is evident by the fact that leading car companies like TOYOTA had to pay special attention to make its name and trademark a global success.[2] They modified the name Toyoda to Toyota to make it catchier in 1936 and the logo started appearing in 1990- 91. There are brands which were defined by products: The current Toyota Mark consists of three ovals: the two perpendicular center ovals represent a relationship of mutual trust between the customer and Toyota. These ovals combine to symbolize the letter "T" for Toyota. The space in the background implies a global expansion of Toyota's technology and unlimited potential for the future. Hence, trade marks play an inevitable role in establishing the reputation of a brand amongst both actual as well as potential buyers.
TRADE MARK DISPUTES IN THE AUTOMOBILE SECTOR
The inclination of automotive giants towards the Indian market is not new, neither are the trade mark disputes in the automobile sector. In 1982, the Indian automobile market welcomed Suzuki Motor, a Japanese automobile company which collaborated with the Government of India and Maruti Udyog Limited to manufacture cars in India. This highly anticipated entry of a Japanese pioneer received a strange welcoming as an Indian company registered itself by the name of Suzuki (India) Limited in the year 1982 which marked the beginning of a long-going battle,which lasted for over two decades. However, the Hon’ble Court, while recognizing the rights of the Japanese tycoon, accorded “SUZUKI” the recognition of a well-known trade mark in India[3]. The said recognition is a testimony of the Indian judiciary recognizing the conversance of the Indian consumers with automobile brands.
The expansion of trade marks in the automobile sector across the Indian territory has led to the emergence of a variety of complicated issues revolving around the same. An example of this is the highly publicized case of Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd. & Ors[4][5]., which led the Indian courts to extrapolate the concept of “transborder reputation”. The Apex Court of India, while deciding the said matter in finality held “that while interpreting the meaning of trans-border reputation, merely just acquiring goodwill globally would not be sufficient and it is important that the mark has earned goodwill in India at the relevant time i.e. before the date of adoption of the mark by the opposite party”. It is pertinent to note that the said judgement paved a path of caution for brand owners, especially multinational conglomerates to exercise greater vigilance in protecting their IP rights while entering the Indian market.
With automotive giants expanding their scope of operations to cater to the Indian market, a peculiar trend of “mass deterrence” has been undertaken by brands to prevent unauthorized use of their trade marks. Brands often undertake legal proceedings even against small time manufacturers in order to augment their position in the market. The trend in the automobile sector is no different. In a recent victory against infringers, Luxury Bavarian carmaker BMW won its court case against an Indian e-rickshaw manufacturer for using a name it said was too similar to its own. Om Balajee Automobile (India) Private Limited has been selling an e-rickshaw under the name “DMW” since 2013. The automaker approached the Delhi High Court in 2017 to open a case, claiming use of the DMW name “appears to be a dishonest act with an intention of trying to take advantage of the reputation and goodwill” of BMW. While the defendant expressed concerns over the lateness of the filing, the judge ruled that the delay was not sufficient to hinder justice in the present matter.The Court also rejected the Defendant's argument based on the different nature of the products manufactured by the two companies as well as the difference in relevant consumership. The court also agreed the DMW logo was “visually and phonetically similar” to BMW’s, and “is likely to mislead an average man of ordinary intelligence.” The said judgement had a rippling effect in assessing standards for trans-border reputation, well-known mark and passing off claim. [6]
In the recent past, a large number of disputes in the automobile sector have surfaced against non-automobile companies. An epitome of this scenario is the recent case of Monte Carlo Fashions Ltd entering into an agreement with Skoda Auto India Pvt. Ltd under which the former has given a license to the car maker to allow it to use its trademark Monte Carlo. [7]The agreement comes a year after a Delhi court had admitted a trademark violation plea for infringement of trademark “MONTE CARLO” owned by Monte Carlo Fashions Ltd against Skoda Auto India from using the brand name with respect to a new ‘Monte Carlo’ edition car. Under the agreement between the two corporate organizations, Skoda India has obtained a License from Monte Carlo Fashions Ltd to use its trademarks Monte Carlo, in the whole of India in respect of its products comprising only of cars, cars accessories and spare parts as well as on packaging, promotional and advertising material associated therewith.
COUNTERFEITING IN THE AUTOMOBILE SECTOR
Counterfeiting has plagued the global market for the past several decades and the automotive industry is no exception to this epidemic and has been rallying against counterfeits for many years. In a study commissioned by the FICCI Committee Against Smuggling and Counterfeiting Activities Destroying the Economy (CASCADE), researchers identified that the Indian automobile sector is one of the most vulnerable to counterfeiting in the country. The said study showed that nearly 30% of the automobile components market in India is counterfeit. Intellectual property rights have played an integral role in providing necessary protection to IP owners against counterfeits. In the year 2015, the Competition Commission of India (CCI) imposed a penalty of INR 420,000,000 (approx. 5535091.75 USD) against Hyundai Motor India Ltd. and several other auto companies for not making their original spare parts freely available in the Indian markets, leading to unfair trade practices and giving rise to counterfeiting. The CCI further rejected Hyundai’s claim that the drawing/designs of their spare parts are protected by unregistered copyright and trade secret and refused to grant Hyundai an exemption under Section 3(5) of the Competition Act, 2002, which protects exclusive rights granted under intellectual property rights[7]. Though, the said order was subsequently stayed by the Apex Court of India, it elucidated the seriousness of the Indian institutions to tackle the invasion of counterfeiting in the Indian automobile sector.
While the remedies available to trademark holders against instances of counterfeiting are enshrined in the Trade Marks Act, 1999 under Sections 102, 103 and 135 which penalize falsification of trademarks, other preventive measures that brand owners can adopt include consumer awareness and proactive enforcement of their trademark rights via criminal raids and recording their trademarks with the Customs Authority of India for monitoring. The government can also employ industry specific remedies, such as introduction of certifications for automotive components and spare parts, introduce legislations to increase consumer protection on e-commerce websites and provide strict penalties that can act as a deterrent to counterfeiters.
CONCLUSION
“Products are made in the factory, but brands are created in the mind”, a quote by Walter Landor elucidates the imminent association of trade marks and the automobile sector. In the 21st century, when automobiles represent much more than what a machine does, automotive giants rely immensely on their image and reputation amongst consumers. With the dynamic changes in the field of branding and marketing, it can be safely concluded that trade marks play an extremely significant role in facilitating the consumer consortium with automobile brands.
[1] Automobile Industry in India, Indian Brand Equity Foundation, accessible at https://www.ibef.org/industry/india-automobiles.aspx
[2] Role of Intellectual Property in Auto Industry, Patentwire, November 2009
[3] Well-known trade marks, IP INDIA
[4] AIR 2018 SC 167
[5] Delhi HC restrains DMW e-rickshaw from using mark deceptively similar to that of German automobile, Bar and Bench, can be accessed at https://www.barandbench.com/news/litigation/delhi-hc-restrains-dmw-erickshaw-from-using-mark-deceptively-similar-to-that-of-german-automobile-manufacturer-bmw
[6] Monte Carlo Gives License to Skoda India for Using its Trademark after Infringement Case, Everythingexperiental, can be accessed at http://everythingexperiential.businessworld.in/article/Monte-Carlo-Gives-License-to-Skoda-India-for-Using-its-Trademark-after-Infringement-Case/22-02-2019-167460/
[7] CCI fines Hyundai Rs420 crore for anti-competitive practices, LiveMint, accessible at https://www.livemint.com/Politics/9PXN0uRt1xlFH6piW4XlDJ/Competition-Commission-fines-Hyundai-Rs420-crore.html
The article was originally posted on www.lexology.com on May 26, 2020 and can be accessed here.
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INDIA: INDIAN PATENT OFFICE PROVIDES CLARIFICATION PERTAINING TO FILING OF POWER OF ATTORNEY AND PROOF OF RIGHT FOR DIVISIONAL APPLICATIONS

November 27, 2019, 9:58 pm
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On November 26, 2019, the Indian Patent Office released revised Manual of Patent Office Practice Procedure, wherein following clarification with respect to filing of Power of Attorney and Proof of Right [Form-1] regarding divisional applications has been provided:
i) Power of Attorney: If Power of Attorney filed in the parent application expressly provides authorization to the agents of the Applicant to file divisional application(s), there is no requirement of filing a copy of Power of Attorney in the divisional application(s).
ii) Proof of Right [Form-1]: If the requirement of Proof of Right is met in the parent application, there is no requirement of filing the same in the divisional application(s).
As filing of Power of Attorney and Proof of Right both have an associated deadline, this move by the Indian Patent Office would certainly reduce the burden of submitting these formal documents.
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Search Engine Optimization and Trademarks

May 29, 2020, 6:15 am
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All business owners, brand owners, manufacturers, service providers run websites showcasing their products and services under a range of brands. In this digital era, websites have become an indispensable pre-requisite to set-up and expand businesses. These websites provide an insight into the companies, their business models, their range of products and/or services etc., and facilitate customers to identify, compare and select the best products or services. Consumers use search engines like Bing, Google, Yahoo, etc for information and to access websites. Every search engine has its own complex algorithm to organize relevant information corresponding to the keywords searched. Keywords entered in search engines enable them to categorise web sites and to allow users to find web page quickly.[1] A large percentage of users only check the initial search results displayed by the search engines and that is the reason why companies invest in trying to get their websites within those initial searches. Search Engine Optimization (SEO) refers to the process of making improvements on websites for enhanced search results. The combinations of minute modifications on different parts of website can bring about enhanced user experience and improved search results. These changes can be brought by various methods like link building, managing content on website by including frequently searched words and phrases, adding certain keywords to website’s ‘meta-data’[2], etc.
Thus, SEO is a marketing tool used by many companies to increase the traffic on their websites. Registered trademarks can simply be inserted into the body of a website by using hidden html codes into the title tags. To achieve such results, companies often use competitor’s trade name as SEO to get highest visibility from potential customers. Therefore, even a slight modification in the SEO enables companies to secure a higher ranking in search results.
At present, India does not have any separate laws in place to regulate the use and misuse of meta-tags and search engines. The courts usually take into account the provisions of the Trade Marks Act[3] besides the Competition Act[4], Code of Civil Procedure[5], etc, while deciding disputes of such nature.
Section 29 of the Trade Marks Act, 1999 deals with infringement of registered trademarks and Sub-section(8) of Section 29, states inter alia “that a registered trade mark is infringed by any advertising of that trademark if such advertising takes unfair advantage of and is contrary to honest practices in industrial or commercial matters.”
In the landmark case of Cosim Info Pvt. Ltd v. Google India Pvt. Ltd.[6], the Madras High Court held that it will be a case of contributory infringement by Google if unique trademarks are bid through its AdWords services.
In the case of People Interative (I) Pvt. Ltd. v. Gaurav Jerry & Ors., the Bombay High Court defined Meta-tagging and discussed infringement of marks by use of meta-tags. It was held that “the Defendant’s shaadihishaadi.com was cashing upon the reputation of the Plaintiff’s shaadi.com and that the Defendant had clearly hijacked the Internet traffic from the Plaintiff’s site amounting to online piracy.”[7] The Court granted an ex-parte injunction and mandated that whenever trademarks are misused and included in meta-tags, then infringement of trademark has to be established in accordance with section 29 of the Act and likewise the burden of proof is on the trademark owner to show the likelihood of confusion.
The Indian Judiciary has also discussed the jurisdiction in matters on the world wide web and has held that matters associated to the internet possess global jurisdiction and may not be restricted to the territorial jurisdiction of the residence of the Defendant.[8]
Recently, the Delhi High Court rebuked the online insurance company ‘PolicyBazaar’ (Plaintiff) in an injunction filed against ‘ACKO’ (Defendant) for using their trademark ‘policybazaar’ as AdWord/keyword advertising through Google. The plaintiffs were held liable for concealing information that they themselves had used the defendant’s registered trademark ‘ACKO’ as a keyword. The Court imposed a fine on the Plaintiffs for acting in an unfair manner as the Plaintiffs themselves for nearly one year were bidding for the defendant’s trademark ‘ACKO’.
Conclusion
SEO is directly related to the online success of a Company and consequently the traffic generated on the Company’s website increases the website’s visibility to potential consumers. However, the unfair and illegal use of registered trademarks as keywords, meta-tags, names, and phrases amounts to trademark infringement and irreparable loss to the trademark owner. There is an urgent need to understand and address the issues culminating in the cyber space in relation to Intellectual Property. While only a limited number of such cases have been adjudicated by the Indian Courts, it is certain that such disputes are going to increase in the near future. Therefore, stringent laws need to be enacted to curb the malicious activities surrounding misuse of registered trademarks as meta-tags or keywords.
[1] Kyrnin, J. (2002), Magic with meta-tags
[2] “Meta -tags are non-displaying, or hidden HTML tags that provide sire owners and authors with a degree of control over how a web page is indexed.” Henshaw, R. and Valauskas, E.J. (2001), ``Metadata as acatalyst: experiments with metadata and search engines in the Internet journal, First Monday’’, Libri,Vol. 51 No. 2, pp. 86-101.
[3] Act 47 of 1999.
[4] Act 12 of 2003.
[5] Act 5 of 1908.
[6] Cosim Info Pvt. Ltd v. Google India Pvt. Ltd.; 2013 54 PTC 578 (Mad).
[7] People Interative (I) Pvt. Ltd. v. Gaurav Jerry & Ors; Suit (L) No. 622 of 2014
[8] Casio india Co Ltd. v. Ashita Tele Systems Pvt Ltd.; (2003) (27) PTC 501 (Del)
The article was originally published on www.lexology.com on May 27, 2020 and can be accessed here.
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WIPO PROOF: WIPO Introduces New Business Service - Tamper-Proof Evidence of an Intellectual Asset's Existence

June 1, 2020, 8:54 am
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On May 27, 2020, the World Intellectual Property Organization (WIPO) launched a new online business service, WIPO PROOF, that provides tamper-proof evidence of the existence at a point in time of any digital file, including data sets, in any format. The said service is aimed at helping innovators and creators take verifiable actions to safeguard the many outputs of their work on the journey from concept to development to commercialization.
It is an easy-to-use global, online service that rapidly generates tamper-proof evidence proving that a digital file existed at a specific point in time, and that it has not been altered since that time. The service creates a WIPO PROOF token, a date- and time-stamped digital fingerprint of the file or data, which can be used as evidence in a legal dispute. WIPO PROOF tokens can be purchased one at a time for a modest fee, or in bundles of multiple tokens at reduced rates valid during a two year period.
The said service comprises of many applications including the following: For trade secret strategies, using WIPO PROOF to certify the existence of a file or data at a specific point in time is a type of concrete action that underscores its value and demonstrates that steps were taken to safeguard it. For creative works, the ability to prove their existence at the time of creation is fundamental to safeguarding them from potential misappropriation or infringement.
How does WIPO PROOF work?
Anyone can access WIPO PROOF’s secure online website to request a WIPO PROOF token for a specific digital file. WIPO does not read the file’s contents or store a copy of it. WIPO PROOF’s secure, one-way algorithm interacts locally with the requestor’s browser to create a unique digital fingerprint of the file. Additionally, anyone - even third parties - can validate WIPO PROOF tokens on the website by following a few easy steps.
WIPO PROOF uses Public Key Infrastructure (PKI) technology to generate WIPO PROOF tokens. PKI technology is a well-established and reliable cryptographic technology that is one of the most internationally accepted and recognized digital certification methods. Additionally, WIPO PROOF has been designed and developed according to eIDAS standards which are among the most robust and stringent in the world. WIPO PROOF tokens deliver the highest level of certainty that the date and time on the token is exact and has not been tampered with.
WIPO PROOF provides reliable and verifiable evidence in case of disputes and litigation over the existence and integrity of the digital file and its related IP rights.
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UNDERSTANDING THE PROVISION OF WELL-KNOWN TRADE MARKS IN THE INDIAN CONTEXT

June 2, 2020, 1:44 am
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With change in societal behaviour i.e. a gigantic leap towards social media marketing and innovative advertising ideas, the influence of trade marks on people along with infringement of famous trade marks has increased tremendously. Multinationals spend millions of dollars to maintain their brand popularity globally. In view of the same, acquiring the status of a well-known trade mark is the highest honour that can be conferred upon a mark. The concept of protection of well-known trade marks is different from the concept of trade mark protection i.e. protection of well-known marks focuses on preserving the uniqueness of a mark by protecting it against dilution and tarnishment as opposed to general focus of protecting consumers from confusion.
Origin of the concept of well known trade marks
The Paris Convention of Industrial Property in 1883, for the first time, set out certain guidelines for protection of well-known trade marks. Article 6bis of the Paris Convention reads as follows:
‘(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.’
Subsequently, the TRIPs Agreement was drafted to accommodate the concept of well known trade marks as endorsed in the Paris Convention. Article 6bis of the Paris Convention was incorporated as TRIPs Articles 16.2 and 16.3. [1]
In contrast to the Paris Convention, which deals with well known trade marks with respect to goods only and provides protection against use in connection with identical or similar goods, the TRIPs Agreement mandates protection to be extended to registered trade marks against use in connection with goods and services both. Further, it also provides protection against dissimilar goods and services to the extent the use is found to create an association of origin to the owner of the well known mark.
Interestingly, both the Paris Convention and the TRIPs Agreement do not lay down any procedures per se and hence, leave it to the signatory countries to make their own rules and regulations for registration of well-known trade marks.
Concept of well known trade marks under Trade and Merchandise Marks Act, 1958
India has been inexplicitly protecting well known trade marks from a very long time. Prior to the Trade Marks Act, 1999 (‘TM Act, 1999’), the Trade and Merchandise Marks Act, 1958 (‘TMM Act, 1958’) was regulating trade marks in India. However, there was no specific provision in the TMM Act, 1958 defining or protecting well known trade marks, which were at that time protected under common law.
However, Section 47(1) of the TMM Act, 1958[2] spoke about ‘Defensive registration of well-known trade marks’. In view of the same, the TMM Act, 1958 prevented the use of marks which could be perceived as indicating a connection in the course of trade to the goods of the well known mark’s proprietor. As a result, several proprietors of well-known marks began registering their marks either in all classes or in maximum classes of interest.
In Sunder Parmanand Lalwani & Ors v. Caltex (India) Ltd.[3] (the Caltex Case), the Deputy Registrar rejected the Opponent’s contention that the Applicant had applied for the mark ‘CALTEX’ in bad faith. The Deputy Registrar held that the competing goods and trade channels were different. Further, it held that the Opponent’s reputation was established only with respect of the goods for which its marks were used and did not extend across all classes of goods. However, on appeal, the Court was of the view that the potential market for goods under the competing marks is similar in the sense that the goods of both the parties are not special goods. Further, since the Opponents are a large company known by many as having large resources, and therefore, capable of starting any new industry or trade, there shall be a likelihood of confusion between the goods under the competing marks and therefore, an increased probability of the public believing that any goods with the mark “CALTEX” on them would be the goods of the Opponents.
In Daimler Benz Aktiegessellschaft & Anr. v. Hybo Hindustan[4], the issue pertained to the use of the mark BENZ along with a “three pointed human being in a ring”, in connection with undergarments manufactured by the Defendant. The court held that ‘Such a mark is not up for grabs—not available to any person to apply upon anything or goods. That name . . . is well known in India and world wide, with respect to cars, as is its symbol a three pointed star.’ Further, it opined that the benefit of trade mark law did not extend to a person who mala fidely tries to derive benefit from the reputation of another mark.
In another case of Bata India Ltd. v. Pyarelal & Co., Meerut City & Ors.[5], the issue was over the use of the mark ‘BATAFOAM’ for ‘rubber foam used in manufacturing mattresses, sofas, cushions, and automobile seats’. The Defendants contended that the parties’ respective businesses were different, and that the Plaintiff had no registration for the mark BATA for mattresses, sofas, cushions, automobile seats, etc. Further, the Defendants contended that since their mark ‘BATAFOAM’ was not identical in appearance to the Plaintiff’s mark BATA, there could be no passing off. However, while ruling in favour of the Plaintiff, the Court observed that BATA is a famous brand in India for quality footwear and that the Defendants had no plausible reason for adopting a ‘BATA’ comprising mark as the same is the name of the founder of the Plaintiff. The Court held that the use of the mark “BATA” on any product shall create an association in the mind of the unwary purchaser of average intelligence and imperfect recollection between the goods of the Plaintiff and the Defendants, which was not the case.
Concept of well known trade marks under Trade Marks Act, 1999 and Trade Mark Rules, 2017
Being a signatory to the Paris Convention and the TRIPs Agreement, India amalgamated the concept of well known trade marks in its Trade Marks Act, 1999 and again in the Trade Mark Rules, 2017 .
The Trade Marks Act, 1999 contains specific provisions referring to well-known marks - Sections 2(1)(zg), 11(2), 11(6), 11(7), 11(9), 11(10)[6]. While Section 2(1)(zg) of the TM Act, 1999 refers to the definition of a well known trade mark, Sections 11(6), (7), and (9) of the TM Act, 1999 provide guidelines for deciding whether or not a mark falls within the ambit of a well known trade mark.
On establishment of a mark as a well-known trade mark, the Trade Marks Registry is bound under the law to protect the said mark from other identical and/or deceptively similar marks across all classes of goods and services. Some examples of factors that need to be taken in consideration while determining whether a mark is a well-known mark or not under the TM Act 1999 are as follows:
a) The knowledge or recognition of the alleged well known mark in the relevant section of the public including knowledge obtained as a result of promotion of the trademark; b) The duration, extent and geographical area of any use for that trademark; c) The duration, extent and geographical area for any promotion of the trademark including advertising or publicity and presentation at fairs or exhibition of the goods or services in which the trademark appears;
d) The duration and geographical area of any registration of any publication for registration of that trademark under this Act to the extent that they reflect the use or recognition of that trademark;
e) The record of successful enforcements of the rights in that trademark, in particular the extent to which the trademark has been recognized as a well known trademark by any Court or Registrar under that record;
f) The number of actual or potential consumers of the goods or services; g) The number of persons involved in the channels of distribution of the goods or services; h) The business circle dealing with the goods and devices to which the trademark applies; i) Whether the mark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar.
In Rolex SA v Alex Jewellery Pvt. Ltd. & Ors.[7], the Plaintiff filed a case against the Defendants so as to restrain them from dealing with artificial jewellery or any other product using the trade name ‘Rolex’ which was associated with the Plaintiff exclusively. The Court observed that the Plaintiff’s trade mark was a well known trade mark under Section 2(1)(zg) of the TM Act, 1999 since the relevant public using watches recognize the trade name Rolex and associate it with high quality and price of the Plaintiff. Thus, keeping in mind the provisions of Section 11(6) of the TM Act, 199, the use of an identical trade mark by the Defendant for artificial jewellery would create a likelihood of confusion in the minds of the relevant public and might create an assumption that the products are those of the Plaintiff company. Thus, the Court ruled in favour of the Plaintiff and prohibited the use of the mark ‘Rolex’ by the Defendant.
In Suzuki Motor vs Suzuki (India) Limited[8], the issue was the infringement of the mark ‘SUZUKI’ of Suzuki Motors by Suzuki (India) Limited. The Court observed that by virtue of registration of the mark ‘SUZUKI’ in 1972 and its presence in India since 1982 and in addition, the widespread publicity and promotion undertaken by Suzuki Motors, the trade mark ‘SUZUKI’ of the Plaintiff had become a well known trade mark. Thus, the unauthorized use of the same by the Defendant would lead to dilution of the well known trade mark of the Plaintiff and would also create a likelihood of confusion amongst the relevant public who shall associate the goods of the Defendant with those of the Plaintiff.
Further, it is pertinent to note that prior to the enactment of the Trade Mark Rules, 2017, a trade mark could be declared as a well known trade mark only as a result of opposition, rectification or infringement proceedings. In such a case, the Registrar or the Court would only after a full-fledged contested litigation examining the evidence put forward by both parties declare a mark as a well-known trade mark. In other words, in case of infringement or passing off, in order to enforce and safeguard their rights in their well known trade mark, the proprietors of the well known trade mark would have to approach the Registrar or the Court for relief.
However, in addition to the above-mentioned process by courts and tribunals, Rule 124 of Trade Mark Rules, 2017[9] provides potential proprietors of well known trade marks to apply directly to the Indian Trade Marks Registrar vide Form TM-M along with the prescribed fee of Rs. 1,00,000/- for determination and declaration of their mark as a well-known mark.
However, in line with the Public Notice[10] dated May 22, 2017 issued by the Office of the Controller General Patents, Designs and Trademarks, Government of India, there are certain documents which need to be filed along with the application. The same are:
Statement of case describing the Applicant’s rights in the trade mark and describing the Applicant’s claim that the trade mark is a well known trade mark;
Evidence in support of the Applicant’s rights and claim viz. evidence as to use of trade mark, any applications for registration made or registration obtained, annual sales turnover of the Applicant’s business based on the subject trade mark duly corroborated, evidence as to the number of actual or potential customers of goods or services under the said trade mark, evidence regarding publicity and advertisement of the said trade mark and the expenses incurred therefore, evidence as to knowledge or recognition of the trade mark in the relevant section of the public in India and abroad;
Details of successful enforcement of rights, if any, relating to the said trade mark in particular extent to which trade mark is recognized as well known trade mark by any Court in India or Registrar of Trade Marks;
Copy of the Judgment of any court in India or Registrar of Trade Marks, if any, wherein the trade mark is determined as well-known trade mark; etc.
Conclusion
At present, there are about 97 trade marks[11] that have been declared and listed as well known trade marks in India. The Trade Mark Rules, 2017 ease the process for a mark to be declared as a well known trade mark. This provides an opportunity for potential applicants to have their marks accepted and declared as well known in India so that their marks are protected from being infringed or passed off by any unauthorised person. However, in contrast to the usual opposition or infringement proceedings wherein the Courts analyse and scrutinise voluminous evidence before declaring a mark as a well known mark, Rule 124 just entails the submission of an application to the Registrar and a duty for the Registrar to ‘invite objections from the general public’ which may or may not be addressed. Thus, in view of the above, it is clear that for proper implementation of the Trade Mark Rules, 2017, the Registrar must follow a cautious approach while considering applications for determination of marks as well known.
[1] 16.2–Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.
16.3–Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.
[2] Section 47(1) of the TMM Act: Defensive registration of well-known trade marks—Where a trade mark consisting of any invented word has become so well-known as respects any goods in relation to which it is registered and has been used, that the use thereof in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the first mentioned goods, then, notwithstanding that the proprietor registered in respect of the first-mentioned goods does not use or propose to use the trade mark in relation to those other goods and notwithstanding anything in Section 46, the mark may, on application in the prescribed manner by such proprietor, be registered in his name in respect of those other goods as a defensive trade mark and while so registered, shall not be liable to be taken off the register in respect of those goods under the said section.
[3] Sunder Parmanand Lalwani & Ors v. Caltex (India) Ltd. [AIR 1969 Bom. 24].
[4] Daimler Benz Aktiegessellschaft & Anr. v. Hybo Hindustan [AIR 1994 Del. 239].
[5] Bata India Ltd. v. Pyarelal & Co., Meerut City & Ors [AIR 1985 All. 242]
[6] Section 2(1)(zg) states: “well-known trade mark,” in relation to any goods or service, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”
Section 11. Relative grounds for refusal of registration 11(2)–A trade mark which—
(a) is identical with or similar to an earlier trade mark; and(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor,
shall not be registered, if or to the extent, the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.
11(6)–The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including—
(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark. (ii) the duration, extent and geographical area of any use of that trade mark. (iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the gods or services to which the trade mark applies. (iv) the duration and geographical area of any registration of or any publication for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark. (v) the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court on Registrar under that record.
11(7) – The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account:
(i) the number of actual or potential consumers of the goods or services. (ii) the number of persons involved in the channels of distribution of the goods or services. (iii) the business circles dealing with the goods or services. to which that trade mark applies.
11(9) – The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely:-
(i) that the trade mark has been used in India; (ii) that the trade mark has been registered; (iii) That the application for registration of the trade mark has been filed in India; (iv) That the trade mark— a)Is well known in; or b)Has been registered in; or c)In respect of which an application for registration has been filed in, any jurisdiction other than India; or (v) that the trade mark is well-known to the public at large in India
11(10) - While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall (i) protect a well-known trade mark against the identical or similar trade marks; (ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.
[7] Rolex Sa v Alex Jewellery Pvt. Ltd. & Ors. 2009 (41) PTC 284 (Del.)
[8] Suzuki Motor vs Suzuki (India) Limited - https://indiankanoon.org/doc/38028297/
[9] Rule 124: Determination of Well Known Trademark by Registrar. — (1) Any person may, on an application in Form TM-M and after payment of fee as mentioned in First schedule, request the Registrar for determination of a trademark as well-known. Such request shall be accompanied by a statement of case along with all the evidence and documents relied by the applicant in support of his claim.
(2) The Registrar shall, while determining the trademark as well-known take in to account the provisions of sub section (6) to (9) of section 11.
(3) For the purpose of determination, the Registrar may call such documents as he thinks fit.
(4) Before determining a trademark as well-known, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objection.
(5) In case the trademark is determined as well-known, the same shall be published in the trademark Journal and included in the list of well-known trademarks maintained by the Registrar.
(6) The Registrar may, at any time, if it is found that a trademark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trademarks, remove the same from the list after providing due opportunity of hearing to the concerned party.
[10] http://www.ipindia.nic.in/writereaddata/Portal/News/333_1_Well-known_public-Notice.pdf
[11] https://ipindiaonline.gov.in/tmrpublicsearch/wellknownmarks.aspx
The article was originally published on www.lexology.com on June 01, 2020 and can be accessed here.
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Trade marks in the realm of the “Entertainment” industry

June 3, 2020, 7:24 am
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“We aren't in an information age, we are in an entertainment age.”
-Tony Robbins, entrepreneur, author, philanthropist, and life and business strategist[1]
The term “entertainment industry” predominantly deals with film, print, radio, and television industry and includes books and novels, journals, magazines, movies, multimedia, music, news and newspapers, periodicals, radio programs, television shows and web series, theatre, video games in its ambit. Owing to the increase in digitisation, consumer demand and widespread reach and access to the internet, the Indian Media and Entertainment (M&E) industry has become one of the fastest-growing industries in India. The Indian M&E industry reached INR1.82 trillion (US$25.7 billion) in 2019, a growth of 9% over 2018 as per the FICCI EY report titled 'The era of consumer A.R.T. - Acquisition Retention and Transaction’.[2] Further, by 2021, the Indian M&E industry is expected to reach Rs 2.35 trillion.[3] Though, various legal issues have come to the fore owing to such mammoth growth. Primarily, the entertainment industry is marred by problems arising out of intellectual property rights, contracts, company law as well as competition faced in the market. However, the grimmest issue faced by the industry is piracy wherein protection is provided under three different laws which go hand in glove - copyright, trade mark and unfair competition. In this article, we will focus on the vital role played by trade marks in some of the aspects of the entertainment industry.
Trade Marks and Celebrities
Owing to the massive influence of celebrities in recent times, celebrity or publicity rights have attracted considerable momentum. In his essay, William McGeveran[4] coined the term “Selfmarks” and stated that ““Selfmarks” are branded personal identifiers that can be protected as trade marks”. These rights relate to the personality of a celebrity and can range from the name of the celebrity to the name of their child, signature, phrases, song lyrics and even their posture! Anything that is capable of being trademarked and which can serve as a source identifier can be trademarked. Celebrity rights are thus, closely linked to property and privacy rights.
Concept of celebrity rights date back to the 1980s atleast to Madonna and the 1998 case between Elvis Presley Enterprises, Inc. and a nightclub in Houston, Texas called "The Velvet Elvis.", which has now been renamed as The Velvet Melvin.[5] Celebrities tend to trade mark their identities for mainly two purposes:
1. As a tactical step to prevent any misuse, exploitation or unauthorised use of their attribute for commercial purposes. For example, climate activist Greta Thunberg has filed applications to register her name and the #FridaysForFuture movement as trade marks, merely to prevent any unauthorised use of the same for commercial purposes.
2. To profit themselves - In this regard, celebrities also file applications on “proposed to be used” basis in case there is a bona fide intent to use the mark in future in respect of the goods or services.
However, the mark to be registered ought to be with respect to a particular class of goods or/and services.
Some of the famous celebrities who have trademarked or attempted to trade mark their name are President Donald Trump, Melania Trump, Beyoncé, Rihanna, Katy Perry, Taylor Swift, Victoria Beckham, Kylie Jenner and Justin Bieber. Latest to jump on the bandwagon is Idris Elba who has filed an application to trade mark his name for a range of health and beauty products. According to an article on Forbes[6], just by a precursory count, the Kardashian family has aggressively filed 716 trade marks “to protect their personal brands and try to freeze out anyone who might want to capitalize on their names”. However, Kylie Jenner’s application for registering “KYLIE JENNER” for clothing was rejected by the USPTO owing to an earlier mark “KYLEE” for clothing.
Professor McGeveran, in his essay[7], has gone on to state that “just as logos, product design, catchphrases, and “look and feel” can be perceived as source indicators and protected as trade marks, so too selfmarks might encompass names, photos, signatures, catch phrases, nicknames, and so forth—whatever causes the public to unmistakably think of the single individual”. American ring announcer for boxing and professional wrestling matches Michael Buffer’s “Let’s get ready to rumble”, Football player Marshawn Terrell Lynch’s “I’m just here so I won’t get fined”, “That’s Hot” of Paris Hilton and Taylor Swift’s “this sick beat” and “party like it’s 1989” are some of the famous examples of catchphrases being registered as trade marks. Emeril Lagasse, a celebrity chef, was even able to trade mark the single word “BAM!,” though only for products relating to cooking.[8] American professional baseball player Tim Tebow has also succeeded in registering his move “Tebowing”.
Closer to home, Kajol, Shah Rukh Khan, Rajnikanth, Sunny Leone, Sanjeev Kapoor and Amitabh Bachchan are few celebrities who have filed applications for registering their names and images. In India specifically, the definition of ‘marks’ includes name as well as signature.[9] Further, Section 14 of the Trade Marks Act[10], which deals with “use of names and representations of living persons or persons recently dead” prevents unauthorised use of the celebrity names and clearly states that consent is necessary for registering such trade marks. Thus, even though Indian celebrities are not as voracious in registering their identities as foreign celebrities, the concept is gaining traction in India.
Trade Marks and Merchandising
Trade marks also feature prominently in films, comics, web series, wherein movie titles, key elements or characters can be protected. Registration of characters or key elements as trade marks and further licensing and merchandizing them proves to be highly lucrative. In 1998, B. Joseph Pine II and James H. Gilmore in an article[11] stated that “from now on, leading-edge companies—whether they sell to consumers or businesses—will find that the next competitive battleground lies in staging experiences.” This is highly relevant from the point of entertainment industry wherein merchandising is a $262 billion-a-year industry[12]. According to a report, entertainment licensing in India was valued at $406 million.[13]
Stewart Goldsmith, Vice-President of Sales for Todson said “Good merchandising will always take the consumer from deciding whether they are going to buy to which are they going to buy”[14]. Since the underlying concept of Merchandising Rights pertains to source identification, prevention of unauthorised use as well as promotion and commercialisation through products or services, the persons, real or fictitious, are protected under Trade Mark law.
Character Merchandising entails using fictitious persons or characters to promote a product or service, in the form of collectibles or depiction on tshirts, mugs, bags, stationery, etc. Ranging from Netflix’s Stranger Things to J.R.R. Tolkein’s Lord of the Rings, Disney’s Mickey Mouse and Star Wars to Warner Bros’ Harry Potter, and Indian superheroes like Ra.One and Krrish, fandom is spending billions to experience the lives of their favourite characters. Thus, to prevent any unauthorised use of a character’s name, image or any attribute which can be traced back to the character, trade mark protection is sought. Trade mark can be granted for protecting the name, appearance or the verbal expressions of the character. For instance, Marvel’s registration of the names and likeness of several of its superheroes has resulted in considerable revenue of the company.
In Star India Private Limited vs Leo Burnett (India),[15] the Court observed that “Character merchandising involves the exploitation of fictional characters or the fame of celebrities by licensing such famous fictional characters to others… It is necessary for character merchandising that the characters to be merchandised must have gained some public recognition, that is, achieved a form of independent life and public recognition for itself independently of the original product or independently of the milieu/area in which it appears. Only then can such character be moved into the area of character merchandising.”
In Disney Enterprises Inc. & Anr. Vs. Santosh Kumar[16], wherein the Defendant was selling products with the images of Hannah Montana, Winnie the Pooh, Donald Duck, Mickey Mouse etc. without authorisation, the court held that the Plaintiff had established the mala fide intent on the part of the Defendant to pass off its goods as those of the Plaintiff. Further, the Court observed that “the degree of association of the DEI materials, such as Character Names, Character Devices or Characters with the Plaintiffs is so intense that any reference to them leads a substantial part of the relevant public to recognize, acknowledge and associate the same exclusively with the Plaintiffs and the Plaintiffs alone.”
Personality Merchandising or Reputation Merchandising, which entails using real persons, which could be famous celebrities from film or music industry or specialists in their field, to promote a product or service, through their name, image, voice or other attributes, which are easily recognisable, is not covered by legislation in India but has evolved through jurisprudence pertaining to Trade Mark laws. It is estimated, for example, that David Beckham earns as much as US$18 million a year from his endorsements for Vodafone, Adidas and Pepsi, among others. He is so popular in Japan that his name is on Meiji candies and a line of health and beauty salons.[17]
In D.M. Entertainment Pvt. Ltd. v. Baby Gift House and Ors.[18], the Court held the Defendant guilty of violation of right of publicity, passing off and false endorsement and granted an ex parte injunction restraining the Defendant from selling dolls which imitated the singer, Daler Mehendi or sang portion of his songs, without his authorisation. The court observed that this unauthorised act of the Defendant would mislead the public into believing that the dolls were sanctioned by Mr. Mehndi and in turn, cause significant loss to him.
In Justice K.S.Puttaswamy(Retd) vs Union Of India[19], the Supreme Court of India upheld the ‘right to privacy’ as a fundamental right and observed that “Every individual should have a right to be able to exercise control over his/her own life and image as portrayed to the world and to control commercial use of his/her identity. This also means that an individual may be permitted to prevent others from using his image, name and other aspects of his/her personal life and identity for commercial purposes without his/her consent.”
Further, there have been other cases as well concerning famous personalities such as Arun Jaitley, Amitabh Bachhan, Gautam Gambhir which have helped in developing the law pertaining to merchandising and trade mark rights in India.
Trade Marks and Titles
In K.Balaji Kumar - vs - M/s. Star Polaris And Another[20], the Court observed that “legal protection for literary titles lies in the field of trademark and unfair competition… For these purposes, titles of literary and entertainment creations and works are treated in much the same way as the trademarks of other commercial commodities.” Hence, titles of movies, songs, shows etc. are registrable as trade marks.
Titles are sought to be registered as service marks under Class 41, which pertains to “entertainment” services as well as under Class 9 for “apparatus for recording, transmission or reproduction of sound or images” which would include compact disks, cassettes, DVDs, SD Cards etc. Registration of a title of a title of a song is a rather young notion in India wherein the title “Why this Kolaveri Di?” was registered by Sony Music Entertainment India Pvt. Ltd.
The jurisprudence regarding protection of movie titles as trade marks has developed basis the following cases:
In Biswaroop Roy Choudhary vs. Karan Johar[21], the Plaintiff’s case seeking permanent injunction restraining the Defendant from using the title "Kabhi Alvida Naa Kehna", which was applied under Class 41, was dismissed on grounds that “the race for the use of words has been won by the Defendant”.
In Kanungo Media (P) Ltd. vs Rgv Film Factory And Ors[22], wherein a suit was filed seeking permanent injunction for using the film title "NISHABD", the Court dismissed the suit on the ground that the Plaintiff's film had not acquired secondary meaning and was unlikely to cause any confusion in the mind of the public. The Court observed that “in general, such titles are protected according to fundamental tenets of trademark and unfair competition law…For these purposes, titles of literary and entertainment creations and works are treated in much the same way as the trademarks of other commercial commodities.”
The Court further went on to state that titles may relate to two types of works, i.e. titles of single literary works and titles of series of literary works. Titles of series of literary works enjoy the same protection as usual trade mark. However, titles of single literary works need to establish that they have acquired secondary meaning.
The Court also stated that “Even if the work has not been released, a sufficient amount of pre-release publicity of the title may cause a title to acquire recognition sufficient for protection. Relevant evidence from which secondary meaning for a literary title may be inferred as a question of fact include:
(1) the length and continuity of use;
(2) the extent of advertising and promotion and the amount of money spent;
(3) the sales figures on purchases or admissions and the number of people who bought or viewed plaintiff's work; and
(4) the closeness of the geographical and product markets of plaintiff and defendant.”
In 2007, Ram Gopal Varma had produced the film titled “Ram Gopal Varma ke Sholay”, which was inspired by the original Sholay. This movie was challenged in the Delhi High Court on grounds of copyright and trade mark infringement of the original movie Sholay. However, while the petition was pending, an arrangement was reached between the parties, wherein the movie was renamed from “Ramgopal Verma Ki Sholay” to “Ramgopal Verma Ki Aag.”
In Warner Bros. Entertainment Inc. v. Harinder Kohli and Ors.[23], the Delhi High Court, observed that “even if there is any structural or phonetic similarity between the competing marks, the real test to determine deceptive similarity is whether the targeted audience is able to discern the difference between the marks”. The Court held that the intended audience for Harry Potter being elite and educated would not be confused. The Court also called out the Plaintiff for the delay in filing and stated that if the Plaintiff knowingly lets the Defendant build up its business or venture and stands by, then the Plaintiff would be estopped by its acquiescence from claiming equitable relief.
In 2013, Salman Khan starrer titled “Jai Ho” also faced a delay as musician A. R. Rahman owned the trade mark rights in the title of his song “Jai Ho”, from the Oscar winning movie Slumdog Millionaire. However, subsequently the movie was released, and it was reported[24] that the parties were making an out-of-court settlement.
In Endemol Shine Nederland Producties B.V. vs Andaman Xtasea Events Private Limited,[25] the Bombay High Court restrained an event management company from using the marks ‘Big Boss’, ‘Big Brother’, ‘Big Boss’ comprising marks, device of the eye or their tagline for its TV show on grounds that such reproduction is not a mere coincidence and was aimed to deceive the public.
In the recent judgement of Parasar Bharati Vs. Ritu Arya & Ors.[26], the Plaintiff sought to restrain the Defendant from passing off the trade mark “DOORDARSHAN” as a title of its movie. The Court granted the injunction and subsequently the movie was renamed.
Conclusion:
Owing to the rapid increase in digitisation and the advancing nature of the Entertainment industry, there has been a definite increase in the legal issues, especially matters relating to trade marks, which consequently play an avid role in the Entertainment industry. The approach of the Courts towards these matters has been dynamic and stringent, adapting to the current scenario. Thus, even though the law in all the above situations is in a relatively nascent stage in India, there has been a paradigm shift in the recent years owing to the spread of awareness regarding Intellectual Property.
[1] https://quotecites.com/search/?s=entertainment
[2] http://www.ficci.in/pressrelease-page.asp?nid=3667
[3] https://www.ibef.org/industry/media-entertainment-india.aspx
[4] https://houstonlawreview.org/article/6777-selfmarks
[5] Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188, 191 (5th Cir. 1998)
[6] https://www.forbes.com/sites/lisettevoytko/2019/07/05/kardashian-clans-716-trademarks-how-kim-kanye-kylie-and-kendall-protect-their-brands/#ce2100b4e67d
[7] https://houstonlawreview.org/article/6777-selfmarks
[8] https://blog.jipel.law.nyu.edu/2020/04/Trade Marks-in-the-entertainment-industry/
[9] Section 2(1)(i)(V)(m) in The Trade Marks Act, 1999 - “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof
[10] Section 14 in The Trade Marks Act, 1999 - Use of names and representations of living persons or persons recently dead.—Where an application is made for the registration of a Trade Mark which falsely suggests a connection with any living person, or a person whose death took place within twenty years prior to the date of application for registration of the Trade Mark, the Registrar may, before he proceeds with the application, require the applicant to furnish him with the consent in writing of such living person or, as the case may be, of the legal representative of the deceased person to the connection appearing on the Trade Mark, and may refuse to proceed with the application unless the applicant furnishes the registrar with such consent.
[11] https://hbr.org/1998/07/welcome-to-the-experience-economy
[12] https://hbr.org/2019/07/when-fandom-clashes-with-ip-law
[13] https://www.entrepreneur.com/article/335318
[14]https://www.wipo.int/sme/en/documents/merchandising_fulltext.html
[15] 2003 (2) BomCR 655
[16] CS(OS) 3032/2011
[17] https://www.wipo.int/sme/en/documents/merchandising_fulltext.html - Source: USA TODAY, 5/08/2003.
[18] MANU/DE/2043/2010
[19] (2017) 10 SCC 1
[20] O.S.A. No. 154 of 2019 and C.M.P. No. 13790 of 2019.
[21] 131 (2006) DLT 458
[22] 138 (2007) DLT 312
[23] [IA No.9600/2008 in CS(OS) 1607/2008]
[24]https://timesofindia.indiatimes.com/entertainment/hindi/bollywood/news/Jai-Ho-title-song-to-not-feature-Salman-Khan/articleshow/27680311.cms
[25] (I.A.1/2020)
[26] CS(COMM) 96/2020
The article was originally published on www.lexology.com on June 01, 2020 and can be accessed here.
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India: 'Small Entity' criteria for classification under various IP Enactments broadened

June 9, 2020, 5:38 am
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Various IP enactments, including the Patents Act, Trade Marks Act and Designs Act, provide for a discounted official fee for ‘small entities’ that are defined as entities meeting the criteria of 'medium enterprise' under the Micro Small and Medium Enterprises Development Act, 2006 (MSME Act). Further benefits for ‘small entities’ include expedited examination of their patent applications which can be requested under the provisions of the Indian Patents Act.
The applicable criteria for evaluation of a 'small entity' will be revised with effect from July 1, 2020. As per the revision, an enterprise that meets the following criteria (investment limit and turnover limit) may avail the fee benefits of ’small entity’ under the Indian IP laws:
After revision:
Before the revision, the criteria for classification as a ‘small entity’ was the investment limit of an enterprise. To be categorized as a “small entity”, the investment limits were as follows:
Before revision:
With the revision in the definition, separate assessment requirements for a service firm and a manufacturing firm have been eliminated and a broader and uniform approach has been adopted. The full notification can be accessed here.
Should you have any question regarding small entity eligibility criteria, please feel free to contact us.
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Jurisdiction of the Competition Commission of India in Patent matters

June 17, 2020, 10:05 pm
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Monsanto Holdings Pvt. Ltd. and Ors. vs. Competition Commission of India and Ors.[1]
About the Petitioners & the subject matter
The Monsanto Company (hereinafter referred to as “Monsanto”) is engaged in agricultural innovation and is credited to developing and commercializing Bt. Cotton Technology, a single-gene technology for producing seeds that were resistant to bollworms (Bollgard-I) and a second generation cotton technology, which consists of two genes that makes it resistant to bollworms (Bollgard- II), said patented technologies licensed to Mahyco Monsanto Biotech (India) Pvt. Ltd. (hereinafter referred to as 'MMBL'). MMBL, in turn sub-licenses the technology licensed by Monsanto to various seed manufacturers in India.
Competition Commission of India (CCI)’s order
The Department of Agriculture, Cooperation and Farmers Welfare, Ministry of Agriculture and Farmers Welfare, Government of India (hereinafter referred to as the MOA&FW) made a reference[2] under Section 19(1)(b) of the Competition Act before the CCI against MMBL, Monsanto and Monsanto Holdings Pvt. Ltd. (hereinafter referred to as 'MHPL') (collectively, the petitioners herein), alleging contravention of provisions of Sections 3 and 4 of the Competition Act. The reference was made pursuant to information[3] filed under Section 19(1)(a) of the Competition Act by Nuziveedu Seeds Ltd. ('NSL'), Prabhat Agri Biotech Ltd. ('PABL') and Pravardhan Seeds Pvt. Ltd. ('PSPL') (collectively hereinafter referred to as the “Informants”). It is pertinent to note herein that the Informants are also sub-licensees of the patented technology pertaining to Bt. Cotton from MMBL and disputes relating to the terms of the sub-license agreement(s) exist between the said parties.
By way of order[4] dated February 10, 2016, the CCI broadly held and observed as follows:
The conduct of MMBL prima facie appears to be in violation of Section 4 of the Competition Act;The notification requirements coupled with the stringent termination conditions in the Sub-license agreements are in the nature of refusal to deal and exclusive supply agreements within the meaning of Sections 3(4)(b) and 3(4)(d) of the Competition Act; andThe termination conditions in the Sub-license agreements were excessively harsh and did not appear to be reasonable as may be necessary for protecting any of the IPR rights, as envisaged under Section 3(5) of the Competition Act.
Accordingly, under the provisions of Section 26(1) of the Competition Act, the Commission directed the Director General to conduct an investigation into the matter.
Writ Petition before the Delhi High Court
The above-named petitioners filed the present writ petition before the Delhi High Court against the above-mentioned impugned order of the CCI.
Petitioners’ Contentions
Lack of Jurisdiction of CCI
CCI does not have any jurisdiction to examine the issues raised before it as they relate to the exercise of rights granted under the Patents Act; andThe Patents Act is a comprehensive enactment, which exclusively governs and regulates all practices and contracts that relate to or arise out of exercise of patent rights.
Hon’ble Supreme Court’s decision in Competition Commission of India vs. Bharti Airtel Ltd. And Ors.[5]
Controller’s position similar to Telecom Regulatory Authority of India (TRAI) as the Controller also exercises powers to regulate the grant of patents and exercise of rights under the Patents Act; andCCI can examine the question whether there has been abuse of dominance or an unfair trade practice only once a finding as to the jurisdictional facts has been returned by the Controller;
Provisions of the Patents Act
Section 140 of the Patents Act mirrors the principles that are embodied in Sections 3 and 4 of the Competition Act;As per Section 66 and 85 of the Patents Act, a patent could be revoked in public interest; andHence, in cases where a Patentee is found to be abusing his position of dominance, it would be open for the Controller to revoke the patent in exercise of powers under Section 85 of the Patents Act.
Legislative Intent
Section 140 of the Patents Act was retained despite the enactment of the Competition Act in 2002; andIf the Legislature intended that the determination whether a Patentee had abused his position of dominance was required to be examined by the CCI, the legislature would have suitably amended Section 140 of the Patents Act.
Blanket exclusion by virtue of Section 3(5) of the Competition Act
Clauses of the agreement, which are designed to restrain infringement of IPR including patents are excluded from the purview of the Competition Act and the CCI would have no jurisdiction to examine such agreements.
Decision of the Hon’ble High Court
Telefonaktiebolaget L.M. Ericsson vs. Competition Commission of India & Anr.[6]
The Hon’ble Judge referred to above decision, wherein the Hon’ble Delhi High Court elaborately dealt with the question whether the jurisdiction of the CCI to examine matters, which involve one of the parties exercising rights as a Patentee, is excluded. The Hon’ble Judge discussed various issues as dealt with in the above-mentioned decision and specifically took note of the following findings:
The provisions of the Competition Act clearly indicate that the intention of the Parliament was not to repeal any other statute by enacting the Competition Act but on the contrary the legislative intent was to ensure that the provisions of the Competition Act are implemented in addition to the provisions of other statutes.
There was no irreconcilable repugnancy or conflict between the Competition Act and the Patents Act and, therefore, the jurisdiction of the CCI to entertain complaints regarding abuse of dominance in respect of patent rights could not be excluded.
Accordingly, the Hon’ble Judge noted that the above-mentioned decision squarely covers the principal contention advanced on behalf of the petitioners that the CCI has no jurisdiction to entertain any complaint against an enterprise in respect of matters which relate to exercise of its patent rights.
Hon’ble Supreme Court’s decision in Competition Commission of India vs. Bharti Airtel Ltd. And Ors.[7]
Specifically, with respect to the decision of the Apex Court as cited by the Petitioners, the Hon’ble Judge noted as follows:
The Hon’ble Supreme Court in that case did not accept the contention that the jurisdiction of the CCI was ousted by virtue of the telecom industry being regulated by a statutory body (TRAI); andThe Hon’ble Supreme Court did not accept the contention that the jurisdiction of the CCI in respect of matters, which are regulated by a specialised statutory body, were excluded from the applicability of the Competition Act.
Thus, the Hon’ble Judge observed that this decision does not support the Petitioners’ contention that the Patents Act being a special act in respect of patents excludes the applicability of the Competition Act in respect of the matters that relate to patents on account of any implicit repugnancy.
In view of the above, the Hon’ble Judge upholding the jurisdiction of CCI and dismissing the writ petition of the Petitioners, held that an order passed by the CCI under Section 26(1) of the Competition Act is an administrative order and, therefore, unless it is found that the same is arbitrary, unreasonable and fails the Wednesbury test[8], no interference would be warranted. Since a review on merits was impermissible at the time of the decision of the Hon’ble Judge, therefore, the Hon’ble Judge refrained from examining the merits of the dispute.
[1] W.P.(C) 1776/2016 and CM Nos. 7606/2016, 12396/2016 & 16685/2016, W.P.(C) 3556/2017 and CM Nos. 15578/2017, 15579/2017 & 35943/2017, W.P.(C) Nos. 1776/2016 & 3556/2017
[2] Reference Case No. 2 of 2015
[3] Case No. 107 of 2015
[4] Reference Case No. 2 of 2015 & Case No. 107 of 2015
[5] Civil Appeal No. 11843/2018
[6] W.P.(C) 464/2014
[7] Civil Appeal No. 11843/2018
[8] As laid down in the case of Associated Provincial Picture Houses Ltd vs. Wednesbury Corporation (1948) 1 KB 223, the Wednesbury unreasonableness refers to a standard of unreasonableness used in assessing an application for judicial review of a public authority's decision. A reasoning or decision is Wednesbury unreasonable (or irrational) if it is so unreasonable that no reasonable person acting reasonably could have made it. The test is a different (and stricter) test than merely showing that the decision was unreasonable.
The article was originally posted on www.lexology.com on June 16, 2020 and can be accessed here.
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Genericide: Death of a Trademark

June 21, 2020, 6:40 pm
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A vacuum flask? Thermos. Separable fastener? Zipper. Mobile garbage bin? Dumpster. Conveyor transport device? Escalator. The answers to each of the above questions were once distinctive trademarks and now are commonly used terms for specific products. They are all classic examples of dead trademarks.
‘Trademark Genericide’ means that the public identifies a trademark with a specific class of products and not as a source of origin of a particular product i.e. the proprietor. In lay man’s terms, it means that the marks, due to their own excessive popularity, have become descriptive terms for particular type of products. In the case of Smithkline Beecham Plc v. Farmex Ltd.[1], the court defined a generic name “as a name shared by many/any manufacturer… It is general as opposed to specific”. Further, it was held that, trademarks which are deemed generic are not entitled to protection within the ambits of the law.
It is interesting to note that companies using invented words as trademarks, like Yo-Yo (toy on a string), have stronger chances of getting registered as trademarks but the same strength is disadvantageous when it comes to enforcing trademark rights against genericization.
Why and how do trademarks become victims of genericide?
Trademarks may become genericized due to several reasons. Some of them are explained below:
a) Improper policing of trademarks by trademark proprietors’ is one major reason behind trademark genericization. It was observed that the proprietors’ themselves err and refer to the trademark as the name of the product in their own advertising. It is a sticky situation for the proprietors as they are stuck in between wanting to make their trademarks popular on one hand, and wanting to protect their trademarks from being used synonymously with a specific category of products. King-Seeley Thermos Co. was found to have intentionally used "Thermos" as a generic term to popularise the product.[2] However, since several trademarks have fallen prey to genericide, multinational companies now pay extra effort in trying to balance on the thin line between being a well-known trademark and having their trademark genericized. For example, Chrysler LLC ran an advertisement saying - “They invented “SUV” because they can’t call them Jeep®.”[3] – in order to bring out the fact that ‘Jeep’ is the trademark for the category of products being SUVs.
b) In today’s social media era, where anything can get viral with a click, the use of a trademark as a verb instead of a proper noun is common as well as harmful for the trademark’s distinctiveness, thereby leading to trademark genericization. For example, sentences like ‘Just google it’, ‘I just tweeted’, ‘Its photoshopped’ are very catchy and popularly used. However, the multinational companies having rights on these terms strongly condemn this practice. As rightly observed, “Continual use of the mark as a noun, rather than as an adjective identifying a particular brand, can lead to degeneration of a trademark”[4]. For example, Velcro, a brand name for hook-and-loop fasteners repeatedly urges the public to not use its trademark interchangeably for the type of product as they are at a high risk of losing their rights in the trademark. In 2017, the official YouTube page of the brand Velcro posted a video trying to create awareness about the issue.[5]
c) The failure of the trademark proprietors to give the product under the trademark an easily recognizable generic name in addition to the trademark name is also another reason for trademark genericization. As a result, many a times the trademark name is easier to remember and refer to the product. For example, it is easier to say ‘Jet Ski’ than say ‘Stand-up personal watercraft’.
d) A trademark for a ‘first of a kind’ product has higher chances of being genericized. This is because there being no other competing trademarks for similar products, the trademark enjoys a monopolistic position in the market, eventually becoming a synonym for the name of the product due to lack of competition. In Siegert v Findlater[6], the court held that: “A person who produces a new article and is the sole maker of it, has the greatest difficulty (if it is not an impossibility) in claiming the name of that article as his own, because until somebody else produces the same article there is nothing to distinguish it from”. For example, due to lack of a simpler term for a ‘mobile garbage bin’, and it being a one of a kind product when it was launched, the Dempster Brothers brand ‘Dumpster’ over the years became synonymous to the actual product.
After effects of trademark genericide and how to prevent it:
As a result of genericide, a once distinctive trademark loses its distinctive nature and exclusivity as it slowly becomes a common noun for the specific category of products. This in turn means that other companies and competitors are free to use the genericized trademark in relation to their goods and services. At this point, the trademark has no legal protection and its proprietor has no legal claim on it.
In one of the most famous cases of trademark genericide i.e. Bayer Co. v. United Drug Co.[7], Bayer lost its trademark ‘Aspirin’ for the drug acetylsalicylic acid. Even though Bayer tried to prove the strength of the trademark by submitting that chemists understood ‘Aspirin’ to be specifically Bayer’s drug, the court dismissed the contention by holding that “whether a mark is generic does not depend on whether a select section of the public understands the mark as a source identifier, but rather whether the public as a whole understands the mark to refer to the product and its single source.”
In American Thermos Products Co. v. Aladdin Industries, Inc.[8], it was observed that due to the inability of the proprietor of the trademark to stop others from using “thermos” in connection with insulated bottles, the company suffered extensive loss in trademark rights. Additionally, the company also failed to prevent the generic use of the term itself in its advertising as well as prevent the public from using it synonymously. As a result, other insulated vacuum flasks also began to be referred to as thermos.
In DuPont Cellophane Co. v. Waxed Products Co.[9], it was observed that the term ‘Cellophane’ was used as a trademark for ‘transparent wrapping’. However, due to the product being a ‘first of its kind’ in the marketplace as well as due to improper advertising of the trademark name as the product name by DuPont Cellophane Co., the trademark ultimately became a victim of genericide.
In order to prevent trademark genericide, proprietors of trademarks can adhere to the following[10]:
Use the generic name of the goods with the trademark, for example, Q-Tips cotton swabs, and, if your product is the first entrant, come up with a generic term for the product; Give proper notice of a registered trademark to consumers by using either the letter R enclosed within a circle, ® or for an unregistered mark, use TM. Further, the proprietors must periodically renew their registrations as this sends out a message to the public and the proprietor is serious about its trademark and the mark is not to be used generically;Distinguish the trademark from surrounding text by capitalizing the trademark, using a distinctive typeface, or at the very least, capitalizing the first letter of the trademark as the same shall prevent the usage of the trademark as a verb; Use the trademark as an adjective, example KLEENEX tissues; Do not use the trademark as a noun, example, Band-Aid;Do not use the trademark in the plural, for example, instead of saying buy two DR. PEPPERS, one should say buy two DR. PEPPER soda beverages; Do not use the trademark as a verb, for example it is incorrect to say ‘XEROX the document’, the correct way to say it would be ‘make a copy using a XEROX copier’; Use the trademark on a line of products rather than a single product (NIKE, used on sneakers and clothing); Object to others’ misuse of the trademark by way of sending cease and desist notices, initiating infringement/passing off actions; and Educate the public, including individuals within the trademark owner’s organization, distributors, dealers, and consumers, to ensure proper usage of the trademark. Misuse often occurs due to lack of education, not wrongful intent.
Several major multinationals of the likes Google Inc., Xerox Holdings Corporation, Adobe Inc. etc. are actively trying to prevent the use of their trademarks as generic terms.
In 2012, the word ‘ogooglebar’ translating to ‘ungoogleable’ was added as one of many new words in Sweden by the Language Council. As soon as Google Inc. got to know of the same, they contacted the Language Council and requested it defer use of the said word since it contained Google Inc.’s trademark and the same should not be used to refer to all search engines. Eventually the Language Council had to remove the term and this is one of the best examples of trademark policing.
Xerox Holdings Corporation came up with anti-genericide advertisements to educate the people regarding its trademark rights over the term ‘Xerox’, some examples – “You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier.” and “When you use 'xerox' the way you use 'aspirin,' we get a headache”. Johnson & Johnson Corporation also tried to strengthen its hold on its trademark when it changed the lyrics of their television commercial from “I am stuck on Band-Aids, cause Band-Aid’s stuck on me’ to ‘I am stuck on Band-Aid brand, cause Band- Aid’s stuck on me’. Further, Adobe Inc., in order to protect its trademark from being genericized, condemns the use of the trademark as a verb and has given extensive guidelines on how to refer to the trademark on its official website[11].
In 2012, the IPAB[12] held that if a company or brand had taken extensive measures to rectify and police the incorrect usage of their trademarked term including sending cease and desist notices, it will not be considered as generic term. All ad campaigns, emphasis on guidelines of use of trademark, oppositions initiated by proprietors of famous trademarks etc. shall be treated as evidence in case the trademark is being tried for genericide. It is also pertinent to note that a trademark does not become genericized by default. It can be said so only when the courts declare the same. As per Section 36(1) of the Trademarks Act, 1999[13], if a particular mark is extensively used by traders as the name of an article (or service) and not as a source identifier, the trademark in question becomes vulnerable to cancellation i.e. cancellation due to trademark genericide.
Conclusion
Popularity of a trade mark is a double-edged sword. While the ultimate goal of every proprietor is to transform its trade mark into a well-known mark and enjoy exclusive protection, the line between a well-known mark and a genericized mark is very thin. In deciding whether a trademark has become generic, courts refer to the Elliott v. Google, Inc.[14] case, wherein a reasonable question to decide on the question of genericide was “whether the primary significance of the term in the minds of the consuming public is now the product and not the producer.” Further, in Bayer Co. v. United Drug Co.[15], it was held that “What is relevant is not whether some small portion of the public considers the term an indicator of the source, but rather what the ‘entire consuming public’ considers the term to indicate.” To conclude, it is not necessary that every person uses the trademark interchangeably for the product name, but as long as every person understands the meaning of a sentence comprising the interchangeable use of a trademark with a product, the trademark is said to be genericized.
Avanee Tewari
Associate
Chadha & Chadha, an Intellectual Property Law Firm
[1] (2010) 1 NWLR at page 298, per Rhodes-Vivour, J.C.A
[2] King-Seeley Thermos Co v Aladdin Ind, 1963.
[3] http://centralpt.com/upload/329/4190_Apage_25_EJS_2008.pdf
[4] Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 181 (1896)
[5] https://www.youtube.com/watch?v=rRi8LptvFZY
[6] 1878
[7] 272 F. 505 (S.D.N.Y. 1921)
[8] 207 F. Supp. 9 (D. Conn. 1962)
[9] 85 F.2d 75 (2d. Cir. 1936)
[10] https://www.inta.org/INTABulletin/Pages/PracticalTipsonAvoidingGenericide.aspx
[11] https://www.adobe.com/legal/permissions/trademarks.html?PID=7104715
[12] B.V. Ilango Himachalapathy Vs. M/S Rank Xerox Limited and Others
[13] Section 36(1) of the Trade Marks Act, 1999 - The registration of a trade mark shall not be deemed to have become invalid by reason only of any use after the date of the registration of any word or words which the trade mark contains or of which it consists as the name or description of an article or substance or service: Provided that, if it is proved either—
(a) that there is a well-known and established use of the said word as the name or description of the article or substance or service by a person or persons carrying on trade therein, not being used in relation to goods or services connected in the course of trade with the proprietor or a registered user of the trade mark or (in the case of a certification trade mark) in relation to goods or services certified by the proprietor; or
(b) that the article or substance was formerly manufactured under a patent that a period of two years or more after the cesser of the patent has elapsed and that the said word is the only practicable name or description of the article or substance, the provisions of sub-section (2) shall apply.
[14] Elliott v. Google, Inc., No. 15-15809 (9th Cir. May 16, 2017).
[15] Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921).
The article was originally published on www.lexology.com on June 19,2020 and can be accessed here.
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INDIA: COVID-19 update: IPO confirms suspension of all deadlines until further notice

June 24, 2020, 1:11 am
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The IPO has issued a Public Notice clarifying that the timelines for completion of various proceedings, filing of documents, payment of fees, etc. falling due after March 15, 2020, stand suspended until further notice.
The said Public Notice has been issued in furtherance of an order of the Delhi High Court dated June 17, 2020. In the said order, the High Court had affirmed that the interim order dated May 21, 2020, staying the operation of the two public notices (dated May 18, 2020 and May 20, 2020) issued by the IPO, fixing a deadline of June 1, 2020 for submission of documents / completion of all IP acts, shall continue to operate until further orders. The matter shall be taken up by the Court on July 30, 2020.
Thus, effectively all due dates from March 15, 2020 currently stand suspended.
We are closely monitoring the developments in this regard and shall keep you updated. Meanwhile, we advise you to provide us instructions and documents for any filings with the IPO as per your earliest convenience.
We continue to serve clients in the usual manner as our teams are working remotely with 100% capacity and robust IT systems in place.
Please feel free to contact us for any clarifications.
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THE “VIRTUAL” VANDALISM: CYBERSQUATTING AS A THREAT TO BRAND SYNERGIES

June 25, 2020, 3:31 am
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Introduction
“The internet is becoming the Town Square for the global village of tomorrow”, a highly poignant phrase by Bill Gates is capable of encapsulating the significance of virtual ownership in today’s era. At a time when “cyber markets” have replaced conventional consumer fulcrums, brands leave no stone unturned to ensure effective presence on the digital space. Brands in today’s era are recognized by their expression and the said condition remains the same even on the internet. Thus, in order to maximise consumer reach, brands reflect upon online platforms as an effective tool of communication. However, with the evolution of the augmented reality, offences associated with the same have also witnessed an unprecedented surge. One of the major threats to protecting brands today is cybersquatting which takes place when squatters register domain names of companies in countries where such parent company has no registration and gains money out of the original owner. On the internet a trademark has assumed several forms including a domain name, which means, a name of a website used to donate an internet protocol address and is an easy way to remember a complex numeric value. Domain names are therefore easily remembered and often coined to reflect the trade mark of an organization.[1] The trademark squatters not only hamper the valuable brand image created over years of hard work, but also demand a ransom amount from the brand owners to resell their own brand image. Till the time the squatters remain illicit ownership of the domain name, the lawful owner of trade mark cannot register its own trademark as a domain name.
The Indian Courts have based their analysis of squatting on the definition given by the Delhi High Court in Manish Vij v. Indra Chugh[2] wherein Cybersquatting has been defined as “an act of obtaining fraudulent registration with an intent to sell the domain name to the lawful owner of the name at a premium”.
Cybersquatting can be demarcated into different categories, which are essentially as follows: [3]
Domain Name squatting: It refers to the practice of registering an already registered trademark as a domain name, with the purpose of extorting money from the original owner of the trademark.Identity Theft: Identity theft is committed by monitoring the expiry dates of famous domain names by online applications and then registering them in name of the monitors as soon as the previous registration expires. This is done to deceit the visitors of previous website who visit them under the impression that it still belongs to the previous owner.Typosquatting: It involves registration of a domain name similar to a popular trademark, though intentionally misspelling the original trademark. These cybersquatters rely on the probabilities that users will misspell the original trademark and will be directed to their webpage. Name-jacking: This is the act of registering a name having goodwill of its own or which is reflective of endorsement by the person whose name is included in the domain name. These cybersquatters take advantage of the diversion of traffic from the target person (whose name is used) to themselves.
With the constant advancement of the cyberspace, the forms as well as the modus operandi of squatting are also transforming rapidly. Therefore, it often leads to newer challenges for courts as well as the adjudicating authorities to dynamize existing laws in order to keep pace with the changing digital scenarios.
The Internet Corporation for Assigned Names and Numbers (ICANN) Policy
The WIPO established the online domain name dispute resolution system for domain name dispute commonly referred to as the ICANN Policy. This process is not only quicker but is more cost effective. The WIPO’s Uniform Domain Name Disputes Resolution Policy (UDRP) was adopted by ICANN on October 24, 1999. This policy provides an effective administration process to resolve disputes concerning abusive and bad faith registration of domain names. The Registrar may cancel, suspend, or transfer a domain name. The plaintiff is required to file a complaint with an Approved Dispute Resolution Service Provider as on date. WIPO’s National Arbitration Forum and Asian Domain Name Dispute Resolution Centre are few amongst the authorized providers.[4] The authorized providers have the freedom to establish supplemented rules that are also applicable for domain name dispute resolution along with UDRP Policy.
The ICANN’s authorized service provider conducts a mandatory administrative proceeding when it receives a complaint for domain name infringement where a domain is identical or deceptively similar to the complainant’s trade mark and the defendant has no legitimate right and the domain name is registered in bad faith. The panelists decide the dispute through online means and the procedure takes approximately 45 days and provides cost effective and speedy remedy to resolve the dispute. The Registrar who registers the domain name in question does not transfer or cancel or suspend any domain name as long as he does not receive an order from the court, an Arbitrator or other entities deciding the disputes, or receives instructions from the domain name holder.
In Tata.org case,[5]the case was decided by a panel of WIPO in favor of Tata Sons Limited which gained rights over the domain name ‘Tata.org’ from the Network Solution Inc. that was ordered to transfer the domain name to the complainant. The panelists observed that the trade mark ‘Tata’ was protected in India and many decisions were cited by the complainant wherein the Indian Courts enforced the rights of the complainant in the trade mark. It was also observed that the respondents who registered the domain name had to put it to use which indicated a ‘bad faith registration’.
In NIIT Ltd v. Vanguard Design[6], the complainant was a reputed company rendering training in computers having 2000 franchise centres who was registered trade mark holder of ‘NIIT’ in India and other parts of the world. Defendant’s domain name ‘niitcrcs.com’ was held to be deceptively similar and likely to confuse customers as to likelihood of association with plaintiff’s mark. WIPO held the registration of domain name dispute was in bad faith and no legitimate use was being made as disputed domain name was being used to link to a pornographic site. WIPO directed that the domain name be transferred to the complainant.
The Indian Scenario
Indian Domain Name Dispute Resolution Policy I.E. “.IN” Dispute Resolution Process
In light of the internationally accepted guidelines, India has its own domestic policy to deal with disputes revolving around the cyberspace. These guidelines have been formulated in accordance with the relevant provisions of the Indian Information Technology Act, 2000. There are two documents that all parties in a dispute should rely upon:
1. The .IN Domain Name Dispute Resolution Policy (INDRP): This INDRP policy deals with the types and nature of disputes which are covered under its realm, as well as the criteria that will be considered by the arbitrators.
2. INDRP Rules of Procedure: These Rules describe how to file a complaint, how to respond to a complaint, the fees, communications, and the other procedures that will be used.
A complaint can be filed to the National Internet Exchange of India(NIXI) based on the INDRP Rules of Procedure. Once the National Internet Exchange of India (NIXI) receives a request, along with the filing fee, it will assign an arbitrator for effective adjudication of the dispute. All disputes shall be subject to the jurisdiction of Delhi courts only.[7]
The Trademarks Act, 1999 and the Trademarks Rules, 2017
The trademark protection laws would be equally applicable in the cyber world as well. Such as Section 11(9) safeguards the reputation of trademarks by laying down that “a mark can be considered well known in India even if it has not been used in India or has been neither applied for nor registered in India”.[8]
Further, section 11(10) requires the Registrar of Trademarks “(i) to protect a well-known mark against identical or similar trademarks in the process of registration and (ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.”.[9]
In another affirmative change, the Indian Trademark Rules were amended in 2017 to prescribe a formal statutory regime to make an application to the Registrar of Trademarks for recognition of a trademark as well-known in India.[10] While the said amendment eliminates the cumbersome erstwhile requirement to have a trademark declared as well-known only through legal proceedings, it in any case increases the onus on the Registrar of Trademarks to exercise its discretionary powers in arriving at such a determination.
Judicial Precedents
In the famous Yahoo! Case,[11]the US based Yahoo Inc. sued the defendant in India who registered a deceptively similar domain name YahooIndia.com and used ‘Yahoo India’ as its trade mark. The getup and content of the website Yahoo India.com was similar to the Yahoo Inc website which constituted passing off as if it had an association with Yahoo Inc. The defendant also copied the html code of Yahoo Inc.’s web pages. The High Court of Delhi passed an injunction order restraining the defendant from using ‘Yahoo’ as a trade mark or domain name and using the code contents that infringed Yahoo Inc’s copyrights in the literary content on its website. In this matter, the Indian Courts held that a domain name is entitled to the same protection as a trade mark and observed that the trade mark law applies to the virtual world as well.
In the case of Acqua Minerals Ltd. v. Pramod Borse and others,[12]the defendant deliberately registered ‘Bisleri.com’ as its domain name. When the plaintiffs who were registered owner of the marks ‘Bisleri’ moved an action, the court passed an injunction order holding that a domain name serves the same function as a trade mark and thus requires the same level of protection as granted to a trade mark. A domain name also identifies a website as a source of origin of goods or services in the same manner as a brand name.
In Dr. Reddy’s Laboratories Ltd. v. Monu Kosuri and others,[13]the court held that the defendant’s domain name ‘Dr. Reddy’s Lab.com’ was deceptively similar to the plaintiff’s trade mark ‘Dr. Reddy’s’.
In the famous case of Satyam Infoway v. Sifynet Solutions[14], the appellate used ‘SIFY’ as a main component of its domain name as www.sifymall.com, www.sifyrealestate.com and the respondent infringed its domain name using deceptively similar domain name such as www.sifynett.com. The Supreme Court held that appellate was entitled to an injunction order restraining respondent from using the domain names in dispute and held the respondent guilty of passing off. The Supreme Court concluded that “the respondent was seeking to cash in on the appellant’s reputation as a provider of service on the internet. In view of our findings albeit prima facie on the dishonest adoption of the appellant’s trade name by the respondent, the investments made by the appellant in connection with the trade name, and the public association of the trade name Sify with the appellant, the appellant is entitled to the relief it claims”.
In Info Edge (India) v. Shailash Gupta,[15]the Delhi High Court considered a case where respondent’s domain name www.naukari.com (Which was used as hyperlink to lead to www.jobsourceindia.com) was held to be deceptively similar to plaintiff’s www.naukri.com. The court reiterated the principle that a domain name is more than an internet address and is entitled to equal protection as a trade mark.[16]
In Redbull Gmbh v. Bayer Shipping & Trading Ltd.,[17] complainant filed a complaint with WIPO that its mark “Redbull” was being infringed by the respondent who registered myredbull.com. The respondent was taking unfair advantage of reputation of the complainant and the court held it was bad faith registration directing the respondent to transfer the domain name to the complainant.
In the case of Pfizer Products Inc v Altamash Khan,[18]the domain name ‘viagra.in’ being inactive, it was stated by the Hon’ble Court that “Altamash Khan was cyber squatting, over an address over which the rights and interests of Pfizer outweighed those of Altamash Khan. On these accounts, the domain name was ordered to be transferred back to Pfizer during the pendency of the suit, since no damages as such would be caused to Altamash khan. On the other hand, Pfizer in the event of the transfer being denied would have suffered serious injury in the shape of lost opportunity of commerce, development of the product, and interaction with Internet users, which might not be quantified in monetary terms.”
Further, in the case of Mr. Arun Jaitely v. Network Solutions Private Ltd.,[19] the Delhi High court ordered the defendant No. 3, to permanently restrain from using, promoting, advertising or retaining or parting with the domain name namely ‘arunjaitely.com/ and restrained from using the mark in any of the extensions of the domain name on internet. The defendant No.3 was directed to transfer the said domain name to the plaintiff with immediate effect. The concerned governing body under the ICAANN Rules was directed to block the said domain name and immediately transfer the same to the plaintiff.
The said precedents enable legitimate proprietors of domain names to carry out smooth functioning of their business by creating effective deterrence amongst potential squatters.
Conclusion
A brand name is a significant intangible asset for any business and should be protected against any action that may discredit it. In order to deal with the massive threat of trademark squatting at the worldwide level, conformity of international laws concerning Intellectual Property is needed in order for the brand owners to effectively assert and defend their valuable rights. The courts in India have decided many cases related to cybersquatting. As of today, there is no such law which deals with the menace of cybersquatting directly. Strengthening of domain and brand protection laws shall result in greater confidence amongst foreign investors and would go a long way in affording greater development for the business development in India.
[1] Internationalized Domain Names, Internet Corporation for assigned names and numbers, available at https://www.icann.org/en/system/files/files/factsheet-idn-fast-track-oct09-en.pdf ,
[2] AIR 2002 Del 243.
[3] The Web of Cybersquatting: Do we need a Law to clean it?” July 06, 2019, Acclaims, available at http://www.penacclaims.com/wp-content/uploads/2019/07/Rupal-Jaiswal.pdf
[4] List of approved Dispute Resolution Service Providers, ICANN, available at http://www.icann.org/dndr/udrp/approved-providers.html
[5] Tata Sons Limited v. Advance Information Technology Association, Decision in Case No. D2000-0049, available at www.arbiter.wipo.in.
[6] 2004 PTC (28) 98 (WIPO).
[7] Dispute Resolution Process, I Registry, available at https://www.registry.in/policies/dispute-resolution
[8] Section 11(9), the Indian Trademarks Act, 1999.
[9] Section 11(10), the Indian Trademarks Act, 1999.
[10] Rule 124, Trademark Rules, 2017.
[11] Yahoo Inc. v. Akash Arora, (1999) PTC 201.
[12] 2001 PTC 619.
[13] 2001 PTC 859.
[14] 2004 PTC (28) 566 (SC).
[15] 2002 (24) PTC 335 (Del); see also, Eicher Limited & Anr. V. Web Link India & Anr., 2002 (25) PTC 322 (Del); The Federal Bank Ltd. v. Matt Hiller and Anr., MIPR 2007 (3) 380.
[16] Card Service International Inc. v. Mc Gee, 42 USPQ 2d 1850;
[17] 2003 (27) PTC 164 (WIPO).
[18] 127 (2006) DLT 738, 2006 (32) PTC 208 Del.
[19] Decided by Delhi High Court on: 4th July, 2011 CS(OS) 1745/2009 & I.A. No. 11943/2009 & 17485/2010.
The article was originally posted on www.lexology.com on June 25, 2020 and can be accessed here.
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