Intepat IP Services Pvt Ltd (“Intepat”) is a niche Intellectual Property (IP) services Company that provides a broad range of customized services in Intellectual Property matters, that includes patents, trademarks and design.
It appears as if Smashburger, an American fast casual burger restaurant chain has to culminate up with a bad taste in its mouth if In-N-Out’s allegations in its latest trademark complaint against Smashburger are proven true.
In-N-Out Burger has filed a trademark infringement suit against Denver-based competitor Smashburger, alleging that Smashburger’s “Triple Double” burger is too similar to In-N-Out’s “Double-Double” and “Triple Triple”, which might result in confusing and misleading the consuming public” into believing that In-N-Out has approved or licensed the sandwiches to Smashburgers.
LIKELIHOOD OF SIMILARITY
In–N–Out , founded in 1948, as a quick service burger stand ,has burgeoned a cultish patronage World Wide. Smashburger founded in 2007 in Denver, Colorado, introducing its “Triple Double” burger in July 2017, made with two beef patties and three layers of cheese. In-N-Out alleges that this infringes upon its registered trademarks for the “double-double”, the “triple-triple”, the “3×3”.
In-N-Out does not want customers to think that burgers and other food called “Triple Double” or “Smashburger Triple Double” or other confusing number marks are somehow related to In-N-Out or made by In-N-Out, or that there is a connection between In-N-Out and Smashburger.
In-N-Out likely wants to establish a zone of protection around its marks which would prevent others from using not only the same marks, such as ‘Double Double’, but also marks that are not identical but are similar—in this case ‘Triple Double,’”.It also has asserted that its number marks for burgers and restaurant services are famous, which, if proven, will make them more broadly enforceable.”
In-N-Out claims it has continuously used its registered trademarks “DOUBLE-DOUBLE” and “TRIPLE TRIPLE” since both the 60’s and when they were registered in 1975 and 1990 respectively. In-N-Out argues that the new three-cheese, two-patty burger will cause consumer confusion and dilute its marks, as they have been using it over a long period of time, having effectuated a exorbitant level of revenue and having being extensively advertising or promoting so that there is a very elevated level of consumer remembrance.
Protection of intellectual property rights will unequivocally espouse the evolution of new products, services and national economies and any disintegration thereof can jeopardize the economic performance of the sector and might retrench the major welfare emanated therefrom.
Conventionally, Intellectual Property could only be contemplated as having contextual relationship in fields such as literary works, music, dramatic works, artistic works, inventions etc. Nevertheless, the recent decades of twentieth century have witnessed a comprehensive exploration of relationship between internet and intellectual property, an ever changing area of law.
WHAT IS INTELLECTUAL PROPERTY?
Intellectual property as defined and understood in accordance to the World Intellectual Property Organisation (WIPO), refers to “creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce”.
The Internet has been described as “the world’s biggest copy machine”. Individuals and Companies for doing business have transmogrified the way of using the Internet. Both internet resources and users are proliferating at a expeditious rate, bequeathing no reason to surmise that this trend will dwindle, especially as developing countries become increasingly internet enabled.
Copyright and the Internet
The facet of copyright law has always been drawn by the developments in the technological world. Digital technology authorizes the transmission and use of protected materials in digital form over interactive networks. Considering the capabilities and characteristics of digital network technologies, e-commerce can have a major impact on copyright and related rights. Moreover, digital technology has the aptitude to subvert the cardinal ideology of copyright and related rights, if legal rules are not set down and implemented judiciously.
The court in the much debated case of T Series v MySpace have concluded that Myspace had infringed T Series’s copyright because it had knowledge of the infringing activities taking place on its website and had anti-infringement mechanisms in place, which clearly showed that it knew that infringement activities took place on its website, thereby constituting infringement under Section 51 of the Copyright Act.
The universal resource locator, or URL, is an entire set of directions, and it contains extremely detailed information. The domain name is one of the constituent inside a URL, being an indispensable element of intellectual property on the Internet. The country-code top-level domain (ccTLD) for India is ‘.in’ and is governed by the IN Domain Name Dispute Resolution Policy (INDRP), which is similar to the Uniform Domain Name Dispute Resolution Policy.
In Satyam Infoway Ltd v Sifynet Solutions Pvt Ltd the court held that Satyam Infoway was the prior user of the term ‘Sify’, and had established a reputation and goodwill and brought the dispute under the purview of the Trademarks Act and observed that a domain name has all of the characteristics of a trademark.
In Rediff Communication v Cyberbooth, the Court observed that the value and importance of a domain name make it akin to a corporate asset of a company. In this case the defendant had registered the domain name ‘radiff.com’, which was similar to ‘rediff.com’. The court ruled in favour of the plaintiff.
It has therefore become obligatory for every growing industry to develop an economic strategy that would cover copyright, trademark in defensive and offensive. The instrumentality of Internet warrants planning, attention and integration. Within the next few years, the Internet will progress into an international trade network built on a global IP backbone, with an increased emphasis on trade rather than intellectual property.
What is microorganism? Microorganisms are the living things which a prudent man cannot see in the naked eye. They are some kinds of bacteria, archaea, protozoa, and microscopic animals. Microorganisms are exploited because of their specific biochemical and physiological properties which are used for baking, brewing, food preservation, chemical feedstuffs etc.
The government of India permitted patenting of microorganism in India under the patents (second amendment) bill, 2002 which was passed by the parliament on may 2002. Budapest treaty on the international recognition of the deposit of microorganism allows deposits of microorganisms at an international depositary authority to be recognized for the purposes of patent procedure. it ensures that an applicant once deposited the microorganism sample in one country , then he need not to submit the same in all other countries where he want to have patent over that specific microorganism. International depositary authority is a place where all the sample of microorganism are deposited which further transform to biological resource center and then to global common generic resources which is an internationally agreed legal basis for benefit sharing. TRIPS also recognize the patentability of microorganism, it says microorganism perse is not patentable it should fulfill some criteria to be patented:
1. process of producing a new microorganism
2. new microorganism as produced by the defined process
3. new microorganism per se
4. process of cultivation or otherwise using a known or new microorganism to:
5. a form of multiplied microorganism itself, for example vaccine or edible biomass
6. A by-product of microbial growth, for example an antibiotic, enzyme, toxin or an otherwise useful industrial product.
DIAMOND VS. CHAKRABRTY
When the genetically modification of bacterium was granted patent. The court held that a live man made microorganism is non naturally occurring composition and therefore can be patented. It said that any miccrooragni9sm which is new and useful manufacture or composition of matter among the other things is patentable. For the purpose of patentability the matter that the microorganism is alive or not is not relevant. It is true that naturally occurring products which is a effort of nature may not be patented, but a genetically engineered microorganism is not naturally occurring so it can be patented. Since the patent laws clearly include materials such as are at issue here within their scope, and no specific law exists to exclude it, the only appropriate holding is that recombinant DNA-produced microorganisms are patentable.
DIMMINACO A G v. CONTROLLER OF PATENTS AND DESIGNS
The company applied for patent for the process for preparation of a live vaccine for bursitis. Bursitis is a infection poultry disease and the invention involve a live vaccine to combit the disease. The court held that there is no statutory bar to accept a manner of manufacture to be patentable if the product contain living organism. It was a new process to cure the disease so it was patented under section 5 of the patent act. The courts also lead down the vendibility test to be satisfied to get patent:
The invention result in the product must be vendible.
It should improve former conditions of the vendible product.
It should effect the preservation and prevention from deterioration of the product.
The patent was granted as the process involve proceed living organism which result in curing the disease.
Companies are notching up to the top. Every company has intellectual property assets which can be protected by the law. Not all are ready to enforce it. The reason can be unawareness or trade secret. The Uniform Trade Secrets Act (UTSA) defines a trade secret as any confidential business information which provides an enterprise a competitive edge. Formulas, programs, devices, techniques and processes are all protected by the UTSA. Trade secrets may concern inventions or information that is not viable for a patent and therefore can only be protected as a trade secret. However, some inventors with patentable ideas still choose to hide their intellectual property. Anything that gives you an advantage against a competitor is highly valuable and worth protecting.
Trade secrets come in an endless array of types, for example:
* R&D information
* Software algorithms
When a business is developing or acquiring new information, there is more than one option to secure IP rights. Patenting for inventors is the most common method of protection. Some IP owners choose to rely on trade secrets to prohibit misappropriation of their ideas.
It was acknowledged at the GATT negotiations that if any information that is ‘confidential’ is used by any person for another party, such a person would be held liable for Unfair Practice. In order to fulfill the above objective, Section. 39 of the TRIPS say that information that is to be treated as a trade secret can be protected under Article 10(b) is of the Paris Convention.
It is the obligation of the members of the company to safeguard unrevealed information from commercial abuse, and if a company provides information or data to the Government for further approvals or regulatory, such data needs to be protected from seepage or theft by third parties. NAFTA_______ its member countries to protect trade secrets from unauthorized acquisition, disclosure or use. Remedies must include injunctive relief and damages. In reply to NAFTA, Mexico has modified its 1991 trade secrets law to sanction private litigants to gain injunctive relief.
LAWS IN INDIA
Although trade secrets are a recognized form of IP, there is no specific legislation for their protection. These continue to be enforced contractually or under common law. Only insertion of clauses that protect the confidentiality of the secrets of the company in the agreement with the employees not only during their employment period but also after they are terminated can be done. The remedy available to the title-holder of trade secrets is to attain an injunction averting the licensee from disclosing the trade secret, return of all confidential and proprietary information and compensation for any losses endured due to leakage of trade secrets.
American Express Bank Ltd. v. Ms. Priya Puri Delhi High Court, in this case defined trade secrets as “… formulae, technical know-how or a peculiar mode or method of business adopted by an employer which is unknown to others.”
Mr. Anil Gupta and Anr. v. Mr. Kunal Dasgupta and Ors the Delhi High Court held that the concept developed and evolved by the plaintiff is the result of the work done by the plaintiff upon material which may be available for the use of anybody, but what makes it confidential is the fact that the plaintiff has used his brain and thus produced a result in the shape of a concept.
FAMOUS TRADE SECRETS
THE GOOGLE SEARCH ALGORITHM
Google had developed a search algorithm which it continues to refine. Continuous changes are made to keep businesses. It is the top search engine today and shows no signs of giving up its place.
KENTUCKY FRIED CHICKEN
The undisclosed ingredients for KFC’s novel recipe were kept in Colonel Sanders’ head. The recipe was eventually written down; moreover the original handwritten replica is in a safe in Kentucky. The recipe is known to selected employees who are bound by an agreement of confidentiality. Two separate companies blend a portion of the herb and spice mixture for better protection. It is then mechanically processed to homogenize the blending prior to sending restaurants.
The recipe of Coca Cola was branded as a trade secret instead of being patented, as it would have lead to the disclosure of ingredients. Two employees each know only half the recipe or that only two people know the combination to the safe where it is stored.
MCDONALD’S BIG MAC SPECIAL SAUCE
The special sauce recipe was a trade secret so surreptitious that it got lost in the 1980s during reformulation. Fortunately, McDonald’s was able to regain the procedure from the original person or company that originally produced the sauce, as the recipe was still in the records.
Comprehending the need of legislation for the fortification of trade secrets, a bill named as “The Personal Data Protection Bill” which was pioneered in Rajya Sabha on 8th December, 2006, but regrettably the bill has not been passed till now and is pending the approval of the Indian Parliament before it can become an act.
Intellectual property rights traces its actuallity as a means of conserving and awarding creativity. There exists a line of difference between discovery and invention which is to be analysed while categorizing any object as intellectual property. A copyright claim can be made on all the things that define human existence. For that matter our genes can be copyrighted as well. An opinion persists that 20 percent of the genes shared by us are patents of various companies. It is contended that on removal of a gene from the human body and when kept in isolation it becomes a separate chemical entity that can be patented.
Patents are typically granted for something that’s tangible, like a mechanical device. It’s done to protect inventors and companies from being ripped-off by their competitors. A gene patent can be granted for a claim on a nucleic acid, or for a method of diagnosing a genetic condition. Claims can be made over a DNA or RNA sequence, or a method of identifying the existence of a DNA or RNA sequence in an individual. This can include both coding and non-coding DNA. So, for example, a patent can be taken out on the gene sequence responsible for a predisposition to Alzheimer’s.
Myriad Genetics Inc., is an American molecular diagnostic company based in Salt Lake City, Utah, United States. The year 1990 brought a turmoil to the history as Myriad got a patent on genes namely BRCA1 and BRCA2. These have been linked to both ovarian and breast cancer. Myriad’s discovery of the breast cancer gene, BRCA1 was universally acclaimed as a monumental achievement: “There is no more exciting story in medical science.” Myriad came to limelight after it became involved in a lawsuit over its patenting practices, which led to the landmark Supreme Court decision.
Association for Molecular Pathology v. Myriad Genetics, Inc., (No. 12-398),
The US Supreme Court unanimously ruled that “A naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated”, invalidating Myriad’s patents on the BRCA1 and BRCA2 genes. However, the Court also held that manipulation of a gene to create something not found in nature—such as a strand of synthetically-produced complementary DNA (cDNA)—could still be eligible for patent protection.
When a company holds a patent on a gene, they have a right to prevent other people from evaluating and analyzing it. The demerits of being able to patent genes are that the human genome cannot be mapped or studied. Thereby, reducing a chance to provide cure for the incurables.
The author of Who Owns You: The Corporate Gold Rush to Patent Your Genes David Koepsell contends that it is inefficacious to accord what he calls “government-sponsored monopolies”. The biotech firms along with other companies need fight the battle with the actual values of their products. “Even setting this radical argument aside,” he puts down, “gene patents are not the most economically efficient way to exploit publicly-funded science, nor necessary to spur useful innovation in drugs.”
Food is a craze without which we humans cannot visualize existence. Not only consumption but also gaping is a bare necessity. Many top chefs today are also known for their artistic food designs and preparations. There are museums dedicated to food, like the food museum in Hangzhou, China, where guests can gaze at pleasingly-plated Chinese dishes along with New York’s Museum of Food and Drink and Chicago’s Foodseum. We have even coin the phrase “food porn” to describe this obsession.
With the everyday new discovery of food recipes it is necessary to protect the recipe made by one. This can be done through Patent Amendment 2005 of the Indian Patent Act 1970 which has pioneered product patent protection for food, pharma and chemical inventions. Patenting of food recipes is somewhat fiddly. Irrespective of the taste or fascination of the creators, the recipe, first of all must meet the fundamental conditions curtailing patenting, which are that the recipe must be useful, novel and non-obvious. The recipe should not be a “Mere admixture of substances resulting in aggregation of properties of the components” according to Section 3(e) of the Indian Patent Law.
Mcdonals Cain Foods has an intercontinental procedure patent on ready to cook frozen French fries that have gained popularity with due course of time. However, conditioned on the process of creation of a food product encompasses steaming, heating, mixing, frying, baking, fermentation, grinding, stirring, whipping, freezing, melting, malting, grilling, aging and so on, then one or more of these steps are processes, which if found to be novel and involving an inventive step, are vital to the innovation and can be patented. In India one of the granted patents asserts a process for preparing a soy curd entailing the procedure of selecting soy bean, soaking the soy bean, grinding and preparation of soy milk, making of soy curd for the fermentation, and final processing of soy curd.
Copyright ability of individual recipes has not been decided by Indian Courts. Though copyrights owned by publishers in cookbooks come under literary works. The disputed matter stands as how much copyright law is protecting recipes within these books. Although cooking is a piece art, and is to be showcased creatively, copyright law protects novel, creative appearances that are set up in a tangible means. Literary Works is safeguarded in Section 2 (o) under the Copyright Act, 1957.
University of London Press Ltd. v University Tutorial Press Ltd., which is one of the most landmark decisions bringing about the “Sweat of Brow” Doctrine under UK copyright law, that has been amassed into various Indian precedents as well, in which Justice Peterson stated that “It may be difficult to define ‘literary work’, as used in his Act, but it seems to me plain that it is not confined to ‘literary work’ in the sense in which the phrase is applied, for instance, to Meredith’s novels and the writings of Robert Louis Stevenson. In speaking of such writings, as literary works, one thinks of the quality, the style, and the literary finish which they exhibit. In my view the words ‘literary work’ cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high. The word ‘literary’ seems to be used in a sense, somewhat similar to the use of the word ‘literature’ in political or electioneering literature, and refers to written or printed matter.”
THE FOOD THOUGHT
A set of routed declaration in patent submissions is obligatory for getting a recipe patent. Various constrictions, like quantities, cooking or mixing intervals, ingredients et al, should be claimed in a broad sense in order to boost up the probability of getting a patent on the recipe as well as declining the chances of infringements. In case a recipe is unable to meet the conditions for patentability then copyright can give protection under its sunshade. Food can be put in a subset of an artistic work and the recipes should be copyrightable.
The Toyota/Prius dispute is one that has been in news for over 7 years now. Over the last 8 years, the case has seen multiple dimensions and decisions all of which have been justified but the parties were never satisfied.
The appellant/plaintiff in the case is Toyota which is an automobile manufacturer based in Japan. Toyota has gained worldwide recognition and goodwill over the past several years. In India also Toyota has registered its trademark under different names of “Toyota” “Toyota Innova” “Toyota Devise” etc. In 1997, Toyota launched first commercial Hybrid car “Prius” in Japan and got trademarks in U.S., U.K. over the period of time and eventually in jurisdictions all over the globe. In India specifically, Toyota registered “Prius” in 2009.
Now the respondent/defendant is a manufacturer of automobile spare parts in India. It got itself registered in the year 2002 under the Trademark “Prius”. Long before the car “Prius” made rounds in the country.
The plaintiff filed a Civil Suit in the Delhi High Court for the grant of permanent injunction on the defendant for infringement of trademark, passing off and damages. The learned trial judge granted ex-parte ad-interim injunction on the defendants for the use of “Prius” as their trademark. The order was later vacated on an application filed by the defendant. The plaintiff then filed an appeal before the Division bench of the High Court. The division bench permitted the use of trademark for the defendant but laid down four conditions which were;
They were restricted from using the trademark except for the purpose of identification of the spare parts.
They were to make sure that the words “Toyota” and “Innova” were not written in the same font as that of the plaintiff.
They would have to replace “Genuine Accessories” with “Genuine Accessories Auto Industries Ltd.”
They also have to make sure that the trademark in dispute is used only for item identification.
As there was no objection from the side of the defendant this order was assumed to be final. But soon enough the plaintiff brought a breach before the trial court.
TRIAL JUDGE RULING
The trial judge ruled that the defendant stood in infringement as Toyota’s product “Prius” was world renowned and even though the defendant had its registration in the country 5 years prior to the launch of the car, the Universality doctrine would be applied which concludes that Prius is a well-known trademark and has been so in India as well it was also the first user of the word “Prius” as it has existed since 1997. Hence the Trial judge restrained the defendants from using the trademark except in accordance with the conditions laid down. Punitive damages of ten lakhs were also imposed.
Both the parties appealed against the order of the single judge in the double bench. The defendant appealed for quashing of the injunction and the plaintiff for quantum of damages. The defendant, leaving aside all other claims, claimed only for removing injunction from the use of “Prius”.
DOUBLE BENCH RULING
The division bench set-aside the order of the trial judge stating that the grant of injunction against the defendant in the use of “Prius” was not justified as the trademark was being used in India 5 years prior to the launch of Prius in the country. Consequentially, the bench also dismissed the plea of the plaintiff for quantum of damages.
Plaintiff then approached the Supreme Court.
There are two doctrines that have primarily been focused on in this dispute: Universality Doctrine and Territoriality Doctrine.
This was pled by the plaintiff stating that the plaintiff was a world renowned manufacturer of cars and has gained goodwill all over the globe for over 20 years. By means of its marketing and launching of cars in various jurisdictions, Toyota had built a reputation for itself. Even though the car didn’t launch in India before 2009, the popularity of the car had caught on since it was first launched in 1997. There were news and talks of the car all over the world including India where there were articles about the car in the newspapers. The plaintiff’s product became a well-known trademark in India because the website of “Prius” had been accessed by many Indian, seeking information about the car which made it clear that the car was popular in the country hence making it a well-known trademark.
This was pled by the defendants. This doctrine has been accepted by most courts as opposed to the universality doctrine. It is considered as the correct test for establishing goodwill and reputation around one jurisdiction. The basic concept of this doctrine compares the existence of the local trademark and the international trademark as to which came before and the impact it had. Prior to 2001, there was no goodwill or reputation of the car “Prius”. The trademark of the Indian auto-spare part manufacturer was registered in the year 2002 and 5 years after that the car was launched. Another question that arouse in the Division bench was that if Toyota was aware of the existence of Prius in India since before, why it did not contend against the entity in 2002 itself.
The Supreme court after observing the orders passed by the Trial Judge and the Division Bench and hearing the contentions of both the sides came down to the conclusion that the territoriality doctrine would supersede the universal doctrine. It relied on the judgment of Syed Mohideen v. P. Sulochana Bai, wherein the test of passing off was reiterated.
The court relied, inter alia, on the contention made by the Counsel for the defendant that in 2002 when the defendant registered its trademark, the online or the internet exposure was minimal, and hence the question of bad faith involved by the defendant becomes irrelevant.
What happens, if I register my Trademark today, but there is another mark of similar nature, belonging to another proprietor, who has been using it since before me and is similar/identical to my mark?
The answer to that is given u/s 34 of the Trademarks Act, 1999. Section 34 elucidates that no trademark user or registrant has the right to interfere with the use of another similar or identical trademark (also in goods & services), that has been in existence and use, prior to the registered trademark, whether the prior user has registered his trademark or not. Prior use has an imperative holding in the trademarks arena, the law does not disregard the rights of a prior user of a mark merely on the fact that it has not registered itself. The law protects the rightful user of the trademark, irrespective of the registration.
The instant case is a paradox to the above stated provision. The decision was dragged on four levels. First, the Trademark in question, “Royal Orchid Hotels Limited” was rejected by the Deputy registrar, then an appeal was made to the Intellectual Property Appellate Board (“IPAB”), wherein the tribunal reversed the Deputy registrar’s decision and granted the registration, then another appeal was made to the High Court of Madras where the decision of the first investigation i.e. the Deputy Registrar was upheld and the IPAB was over-ruled, which led to the final appeal in the form of Special Leave Petition (u/a 136 of The Constitution of India) in front of the Supreme Court, where the apex court dismissed the petition and upheld the High Court’s Judgment.
This roller-coaster ride of decisions were not made in vain, each platform where the appeal was made had their fair share of reasons supporting the decision. We will understand the facts in reference to the decisions given at each stage.
The Petitioner’s trademark registration (Royal Orchid Hotels Limited) under Class 16 was allowed which led to the dispute in pursuance.
An application was made to the Deputy registrar by the petitioner for registration of its trademark under class 42, which was refused on the grounds that:
The petitioner was not the first user of the mark “Royal Orchid” but that the respondent was already using its mark “Orchid” since before the petitioner, which made him a prior user.
Also, the logos/marks of the parties were similar, which was also a ground for refusal.
The petitioner then approached the IPAB in appeal, who in turn reversed the decision of the Deputy Registrar and concluded that:
The petitioner company had changed its name to “Royal Orchid Hotels Limited” in the year 1997 by a resolution of the company of 1996 which made the petitioner a prior user of the mark.
The board also held that the class of consumers of the two hotels was different; hence there was no scope of confusion in the minds of the relevant consumers.
The respondent then filed an appeal in the High Court asking for relief against the IPAB’s decision. The court posed two questions:
Who was the prior user of the Trademark in question?
Whether there was deceptive similarity between the trademarks in question and whether the use of that trademark dishonest?
The court looked intrinsically in the matter and ruled out new findings. It found that:
Though the petitioner had changed its name to “Royal Orchid Hotels Limited” in the year 1997, it was not made to use until 2001.
Also the claim that they named a banquet hall “Orchid” in Hotel Harsha in 1990 was futile since there was no evidence of the continuity of the use of name.
The Court also took consideration of the decision given by the IPAB, the court said that not taking into account the class of consumers, if the two logos are look at together, there is a very high possibility of confusion in the mind of a consumer as the logos/marks were deceptively similar. Hence, the inference will not be made on the basis of the class of consumers but for an individual.
The dispute then reached the Supreme Court and an application for Special leave Petition was made. The court said that the findings of the High Court were completely justified and reasonable which did not leave any ground for the validity of the present appeal. Hence the apex court dismissed the petition and upheld the decision of the first investigation i.e. of the Deputy Registrar.
From this case two things can be concluded;
For a proprietor to be a prior user of a trademark, he is required to have made use of the trademark in question and not merely gained possession of it. No matter how long ago the mark was claimed by the proprietor, if he is not making use of it, then no protection be provided.
The question of “Deceptive Similarity” can be solved by looking at how the logo/mark would be perceived by an individual and the public at large, not merely by dividing the class of consumers.
In the case of Abercrombie & Fitch Co. v. Hunting World Inc. the court laid down five categories to classify marks. This classification is known as the Abercrombie Test, it devises the Spectrum of Distinctiveness. The categories are:
For the purposes of this discussion, we will look at Descriptive Marks.
A mark is considered descriptive if the immediate interpretation of the mark conveys the direct nature, character or quality of a product. For example, “Cold & Creamy” would be considered a descriptive mark for Ice-creams. More often than not, a descriptive mark is considered “Non-distinctive” which obstructs the possibility of registering a trademark for such descriptive mark. But, a descriptive mark can be registered only under a special circumstance. In order to get a registration on a descriptive mark, the proprietor needs to prove that his mark has acquired distinctiveness and a secondary meaning over the period of time due to its excessive and dominant use in the market.
In the case of Pidilite Industries Ltd and anr. v. Vilas Nemichand Jain and anr. (Bombay High Court), the court said;
“I understand him to mean that the term in question must have slipped its purely descriptive moorings, and arrived in much deeper waters where any invocation of the expression is, in the public mind and in the public perception, not just dominantly and usually associated with the plaintiffs’ product, but is associated with that product to the exclusion of all others.”
Which means that, in order for a mark to acquire secondary meaning, the mark should have such an effect on the consumer’s mind that he immediately associates that mark with the proprietor’s product.
On 18th December, 2017, Delhi High Court decided on an application filed by the popular entity “bookmyshow” (that books e-tickets for movies, and other events), who had filed for an interim injunction against another proprietor who were seeking to get registration for their mark “bookmysport” (books e-tickets for sports events). Bookmyshow asked for an injunction on the prefix “bookmy” as the prefix was deceptively similar to their trademark. The application was filed on the grounds that the defendant was using the prefix in an attempt to exploit the goodwill and reputation of the plaintiff.
The Delhi High court rejected the application. The court relied on the point that what was the nature of the prefix in question that was common with both the parties; was it descriptive in nature or inventive. For this aspect, the court relied on the judgment of JR Kapoor v. Micronix India (Supreme Court), where the court said that if a mark is descriptive of a particular industry, then it cannot be deemed inventive.
The court also relied on another case PP Jewellers Pvt Ltd vs PP Buildwell Pvt Ltd. wherein it came down to a conclusion that if the prefix is being used by other companies in similar context then the word is descriptive rather than distinctive.
Hence, after looking at all the evidences and matters in hand, the court decided that bookmysport was not the only entity using the prefix “bookmy” for its trademark but there were other several entities using the same prefix. Also the plaintiff failed to establish that the prefix “bookmy” was exclusively associated to it in the minds of the consumers hence the court dismissed the application.
The catch in this case is the shortcomings of the plaintiff i.e. bookmyshow. In a situation where, as opposed to the assertions made by the defendant, there were no other users of the prefix “bookmy” other than the defendant himself, the plaintiff had only to prove that the prefix was exclusively associated with his service as it was a popular online booking portal, providing for exceptional and successful services for over 10 years and that, even though “bookmy” was descriptive in nature, over the past 10 years, it has acquired distinctiveness and a secondary meaning, the application may not have been rejected by the Court. But in the present scenario there are several other online portals with the prefix “bookmy” like bookmystall.in, bookmydarshan.online, bookmytrain.com, bookmyactivity.co.in, bookmyevent.com, bookmyforex.com etc. providing similar services as that of the plaintiff. The problem here is that the plaintiff did not raise any objections to these entities and has focused only on the defendant. The only possible recovery from this mess for the plaintiff would be if it filed a combination of infringement applications against all the other users, and demanded exclusivity over the prefix “bookmy”.
What is cybersquatting? Cybersquatting or domain-name hijacking refers to the practice of bad faith registration of a domain name under the DNS (‘domain name system’). The domain name so registered is likely wanted by another person (natural or legal). The cyber-squatter does this in hopes of selling the domain name to the person at a profit. The reason the registration is referred to as ‘bad faith’ is because the cyber-squatter has no ownership rights or trademarks rights over the same.
The source of this problem has been traced to the ‘first-come-first-serve’ method of allotting domain names. This practice has led to the vicious exploitation of persons who have a legitimate interest in that particular domain name. For example: there is a company- XYZ Pvt Ltd. XYZ Pvt Ltd wants to register a domain name- xyz.com and use it for their business. Before XYZ Pvt Ltd can register their domain name, A- a cyber-squatter- has already done so. Now, if XYZ Pvt Ltd wants to use the domain name xyz.com, they will have to purchase the same from A at potentially exorbitant prices; even if XYZ Pvt Ltd registers an alternate domain, say, xyzpvtltd.com, both the websites will be displayed by a search engine which will ultimately reduce consumers for XYZ Pvt Ltd.
A highly relevant case which took place in India is the case of Rediff Communications Ltd, v Cyberbooth (AIR 2000 Bom 27) . In this particular case, the High Court of Bombay held that- “A domain name is more than an Internet address and is entitled to the equal protection of trademark.”
The problem of cybersquatting persists in India for the simple reason that there are no laws in India which address the problem. India has largely relied on judicial precedent in order to resolve the issue. Needless to say, this solution is not as effective as it should be. The only semblance to a regulatory authority is the Internet Corporation for Assigned Names and Numbers, which has adopted the policy – Uniform Domain Name Dispute Resolution Policy (UDRP) for dealing with cybersquatting.
It is highly recommended that statutory provisions dealing with cybersquatting is enacted as soon as possible, preferably by suitably amending the Information Technology Act, 2000 and the Trade Marks Act, 1999.