Friday, 13 January 2017

The Paymark battle: A curious case of Brand envy

On November 18, 2016, the American online payment solution company PayPal, had opposed an Indian electronic commerce and payment system company, Paytm’s trade mark application, numbered 2370686 with the Indian Trademark Office. They marked Paytm’s trademark as “deceptively and confusingly similar to PayPal” due to a similar colour scheme. Additionally, PayPal questioned the intent of Paytm which according to them is to allegedly, feed on the fame and popularity gained by PayPal.

PayPal asserted in their opposition notice[1], that they have been using the trademark “PayPal” across the world since the year 1999. PayPal contended that they are global leaders in online payment solutions that adopted its name in the year 1999 and started operations in India in the year 2000. However, PayPal claim to have adopted the two tone color combination only in 2007. Paytm on the other hand commenced its business as an e-commerce platform in India in the year 2010, and they applied for the said trademark on July 18, 2016.

PayPal submitted that their mark is well-known and they are the only proprietors of their mark that is renewed from time to time and their registrations are validly subsisting. Owing to this, PayPal claims all exclusive rights to use their mark and all marks determinative of their mark. PayPal then drew an analogy between their and Paytm’s mark highlighting that their trademark possesses a distinctive double tone blue colour scheme since 2007 and they have used the same in several other countries. PayPal also contended that their mark is known and recognised by public at large.

Nonetheless, the submissions made by PayPal in their Notice of Opposition are the following:
  • PayPal opposed the registration of Paytm on the grounds of deceptive similarity between their marks as PayPal is a well-known mark under section 2(1)(zg)[2] of the Act. The first syllable of PayPal’s well-known mark is dark blue in colour and the second syllable in a lighter hue of blue. The same specification is common in Paytm’s mark.
  • Secondly, both marks begin with “Pay” which may lead the end users to associate Paytm with PayPal even though the second syllable is different for both the marks.
  • Even though the second syllables of both the marks are dissimilar but the marks are of similar length. Such an adoption and/ use of the impugned mark by Paytm is likely to cause confusion and deception to the users and is far from bonafide adoption and use in trade. Additionally, owing to the above similarities, the consumers may mistakenly believe that the applicant Paytm is affiliated or associated with the opponent. Moreover, such adoption or use is likely to weaken the brand equity of PayPal’s mark.
Therefore, as per PayPal the adoption of the Trademark by Paytm is neither honest nor in good faith. PayPal’s supposition of Paytm’s conduct as dubious and devoid of good faith urged them to ask the Registrar for refusing the trademark application filed by Paytm. It would be interesting to note further developments in this case especially in light of the fact that Paytm, which is an acronym of the phrase “Pay through Mobile” was first filed on a proposed to be used basis way back in July, 2009.

For the ease of convenience of our readers, we have listed below in tabular form the important trademarks filed by both PayPal and Paytm at the Trademarks Registry, and a comparison of the same -

List of Paytm’s Marks


List of PayPal’s Marks


Comparison


Ohter Mark containing the Word "Pay"



[2]well known trade mark”, in relation to any goods or services, 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.
To P(L)AY or not to P(L)AY. Delhi High Court and Bombay High Court Tell You.

It is no secret that the wrath of copyright societies like IPRS, PPL, Novex and the recent ISRA have been faced by all major hotels and event organizers in the past few years, especially during the festive seasons and around Christmas-New Year’s Eve. The recent turn of events in the Delhi High Court and the Bombay High Court may be a relief for few as issues related to the much long-sought clarity to and transparency in the functioning of these societies/ alleged associations have been finally addressed.

In a writ petition being W.P. (C) No. 12076/2016 titled M/s. Event and Entertainment Management Association (EEMA) V. Union of India & Ors., EEMA (hereinafter, ‘Petitioner’) approached the Delhi High Court for issue of a writ of mandamus, directing the Union of India (hereinafter, ‘Respondent No. 1’) to hold an enquiry against other Respondents, namely, Indian Performing Rights Society/ IPRS (hereinafter, ‘Respondent No. 3’), Phonographic Performance Ltd./ PPL (hereinafter, ‘Respondent No. 4’) and Novex Communications (hereinafter, ‘Respondent No. 5’), for the alleged violation of Section 33 of the Indian Copyright Act. The Indian Copyright Office was the Respondent No. 2 herein.

Submissions of the Petitioner 
  • Section 33 of the Copyright Act requires no person or association of persons, to take part in the issue of licenses of any copyrighted works on behalf of copyright owners. Copyright societies are essentially entities, which administer issuing of licences for copyrighted works on behalf of copyright owners.
  • Respondent nos. 3 & 4 were once registered Copyright Societies as per the Copyright Act, but are not registered anymore and are hitherto liable for acting in contravention of Section 33 of the Copyright Act, because of the fact that they have continued to take part in the business of issuing licenses even after lapse of their registration in 2013.
  • Petitioner also submitted that Respondent no. 5 was never registered as a Copyright Society.
Submission of the Respondents
  • Respondent no. 1 submitted that they have already initiated appropriate enquiry against Respondent nos. 3, 4, and 5 on having received complaints of violation against them.
  • Respondent no. 1 also submitted that, as an interim measure, a public notice has been displayed on the website of the Department of Industrial Policy and Promotion (DIPP) informing the public that Respondent nos. 3 and 4 are no longer registered as Copyright Societies.
(The said public notice as available on the DIPP website is available here.)
Decision of the Court

Hon’ble Mr. Justice Sanjeev Sachdeva, of the Delhi High Court, vide his interim order dated December 23, 2016, restrained the Respondent nos. 3, 4, and 5 from acting in contravention of Section 33 of the Copyright Act, i.e. from issuing or granting licenses in breach of S.33 of Act, till the next date of hearing. The Court also directed Respondent nos. 1 and 2 to take action in accordance with the law for any breach of provisions of Section 33 by Respondents nos. 3, 4, and 5. The relevant order can be found here.

Further Proceedings

The above injunction order dated December 23, 2016 passed by Justice Sanjeev Sachdeva was challenged by IPRS, PPL and Novex (the Respondents/ Applicants), who sought for the said order to be vacated. The matter was heard by Hon’ble Mr. Justice Najmi Waziri of the vacation bench of the Delhi High Court.

Submissions by the Respondents/ Applicants
  • The Respondents/ Applicants relied upon some orders passed in their favour by the Delhi High Court such as (i) CS(COMM) No. 328/2016 Novex Communication Pvt. Ltd. V. Hotel Crowne Plaza decided on April 7, 2016; (ii) CS(COMM) No. 385/2016 Novex Communication Pvt. Ltd. V. The Royal Plaza decided on April 22, 2016; (iii) CS(COMM) No. 1086/2016 Novex Communication Pvt. Ltd. V. M/s. Sky Lounge Bar-Svenska Design Hotel decided on August 8, 2016; (iv) CS(COMM) No. 1150/2016 Novex Communication Pvt. Ltd. V. M/s. Pegs Down & Ors. decided on August 28, 2016; (v) Novex Communication Pvt. Ltd. V. M/s. Hype, New Delhi & Anr.; (vi) Novex Communication Pvt. Ltd. V. M/s. The Lodhi Hotel & Anr.; and (vii) Novex Communication Pvt. Ltd. V. M/s. The Suryaa Hotel & Anr. (all dated August 30, 2016); (viii) TM No. 13795/16 Novex Communication Pvt. Ltd. V. M/s. ITC Maurya, New Delhi & Anr.; (ix) TM No. 13793/16 Novex Communication Pvt. Ltd. V. M/s. Holiday Inn Hotel & Anr.; (x) TM No. 13794/16 Novex Communication Pvt. Ltd. V. M/s. Pride Plaza Hotel & Anr. and (xi) TM No. 13792/16 Novex Communication Pvt. Ltd. V. M/s. Dusit Devarana & Anr. (all dated September 19, 2016); (xii) Order dated September 24, 2016 passed in Novex Communication Pvt. Ltd. V. M/s. Park Plaza & Anr.; and (xiii) order dated October 18, 2016 passed in CS No. 3325/16.
  • The Government of India’s inquiry is only against IPRS and not PPL, however, the latter’s request for withdrawal of the application for re-registration as a Copyright Society has not been conceded as yet.
  • The Respondents/ Applicants are legitimate assignees of copyrighted works or are duly authorized agents of copyright owners and seek to enforce their rights under Section 18(2) and Section 30 of the Copyright Act. The websites of Respondents/ Applicants show that they are the owners of approximately one million songs and other copyrighted works. The Copyright Act protects the rights and interests of an owner of a copyright; that insofar as such owner exercises its rights under Section 18(2) and/or Section 30 read with Section 19 of the Copyright Act, there is no bar to the copyright owner or his agents or an assignee from monetizing the copyrighted works.
  • First proviso to Section 33(1) of the Copyright Act secures the rights of a copyright owner to continue to have the right to grant licenses in respect of his own works consistent with his obligations as a member of the registered copyright society.
Submissions by the Petitioner 
  • The order dated December 23, 2016 of the Single Judge of the Delhi High Court restrained the respondents/ applicants from carrying on or issuing or granting licenses of copyrighted works as a Society, therefore, they cannot carry out similar activity by subterfuge, in any other method.
  • The Government of India has rightly initiated proceedings against them in terms of its Office memorandum dated October 16, 2016.
  • The Respondents have all along refused to disclose any documents to substantiate their claim of assignments of copyrights or shown any documents to substantiate their claim of assignments of copyrights or shown any documents that they are authorized agents of specific works by copyright owners. Further, the assignment deeds would have to be in the mode prescribed under Section 19 of the Copyright Act. Consequently, in the absence of any such document or assignment deed showing their rights as assignees or authorized agents, the Respondents/ Applicants cannot seek to exploit or monetize or otherwise recover monies of the copyrighted works from the public at large.
  • Petitioner relied upon the judgment of the Bombay High Court in Leopold Café & Stores V. Novex Communications Pvt. Ltd. (decided on July 17, 2014) to urge that the present Respondents cannot carry out the business of issuing or granting licenses for copyrighted works which was exploited under Section 33 of the Copyright Act. However, the Petitioner fairly conceded that a legitimate assignee under Section 18(2) of the Copyright Act or a duly authorized agent under Section 30 can exploit and monetize the copyrighted works or otherwise seek protection of copyright.
Decision of the Vacation Bench of Delhi High Court

Vide its interim order dated December 29, 2016, the vacation bench of the Delhi High Court comprising of Hon’ble Mr. Justice Najmi Waziri did not vacate the earlier order dated December 23, 2016 passed by Justice Sachdeva. However, the learned vacation bench, relied on the decision in Leopold Café & Stores v. Novex Communications Pvt. Ltd. of the Bombay High Court to observe that the right under Section 30 is not obliterated by the prohibition in Section 33 and both must exist harmoniously. Thus, a copyright owner or his “legitimate” agent/ assignee is entitled under Section 30 of the Act to issue licenses and collect license fees. As an interim compensatory arrangement, Justice Waziri directed EEMA to pay copyright fees/ royalties to IPRS, PPL and Novex under Section 30 of the Copyright, which is reserved for owners of copyrights, with the express rider directing IPRS, PPL and Novex to prove their ownership over the copyrights when called upon to do so, and also providing a process for issuing licences and obtaining royalties in the immediate interim period as under:
  1. EEMA members/the event organizer will provide PPL/IPRS/Novex a list of songs that they intend to play BEFORE the event on mail. Accordingly, the respondents are to issue their invoices.
  2. The respondents (PPL/IPRS/Novex) will need to confirm in writing if they own the tracks mentioning the assignment no./details on the invoice.
  3. The event organizers will pay the amount before the event as per mutual negotiation with the copyright owner.
  4. The license issuing company/entity shall provide proof by way of legal agreements within 7 days of the invoice, to the satisfaction of the event organizer.
  5. In case the event organizer is not satisfied by the proof provided, a refund can be claimed through the courts. The money will not be appropriated till such time that the matter is mutually resolved.
  6. Additionally, PPL/IPRS/Novex are required to put up a detailed list on their website listing all songs they own including the names of the authors/producers they have acquired them from, along with the dates of validity of the contract until December 31, 2016.
  7. In addition to this, the licensing companies, without fail, also need to upload the valid legal agreements by which they claim ownership of these tracks, by December 31, which will be available for all to see and check.
  8. The Court instructed PPL/IPRS/Novex to set up an online payment gateway within 1 month of this hearing wherein stakeholders will be able to easily obtain permissions online.
IPRS was given a period of 15 days to complete this entire process.

The order dated December 29, 2016 of Justice Najmi Waziri is available here.

Concluding Remarks

Miscellaneous reporting of the above order dated December 29, 2016 by various newspapers caused much confusion as to whether it dilutes the injunction granted by Justice Sachdeva on December 23, 2016. The cumulative effect of the above discussed two orders is to maintain the status quo as it existed prior to their passing. The entire drift of things is clearly to bring higher standards of transparency in the system by requiring the collecting societies to publish the complete list of songs along with the assignment deeds.

Pursuant to the Court’s orders, PPL has now uploaded a list of entities who have entered into assignment deeds with it, alongwith copies of the assignment deeds, and also the list of works over which it claims rights. IPRS has also uploaded a list of its assignment deeds. This is definitely a positive step as prospective licensees can now go through these websites to ensure that they are paying the right entity and hence, avoid multiple payments for the same works.

The case is fixed for further proceedings on April 24, 2017.

Proceedings before the Bombay High Court

In Phonographic Performance Limited (PPL) V. Manuj Agarwal & Ors. [Suit (L) No. 1190 of 2016 and Notice of Motion (L) No. 3623 of 2016], the vacation bench of the Bombay High Court comprising of Hon’ble Mr. Justice A. K. Menon dealt with a similar issue, in context of the highly popular Sunburn Festival 2016 which is usually held during the New Year’s celebration period. In this case, the Respondents gave an undertaking to pay to the Plaintiff (PPL) any amount that may be determined to be payable to the Plaintiff in respect of the said events. The relevant order dated December 27, 2016 is available here.

Meanwhile, in a combined order dated December 21, 2016 in the cases PPL V. Welcom Hotel Rama International (ITC) & 4 Ors., PPL V. Corum Hospitality & 4 Ors., PPL V. Mynokos Blu & 4 Ors., PPL V. British Brewing Company Pvt. Ltd. & 4 Ors., PPL V. YMCA International Centre & 4 Ors., PPL V. Neon The Disc & Ors., PPL V. Impresario Entertainment & Hospitality Pvt. Ltd. & 4 Ors., PPL V. J.W. Marriott & 4 Ors., PPL V. Titos Resorts & Hospitalities Pvt. Ltd. & 4 Ors. and PPL V. K-2 Club and Lounge & Ors., Hon’ble Mr. Justice G.S. Patel of the Bombay High Court demanded more transparency in the dealings of collecting societies and emphasized upon the need to make available all details related to copyrighted works to prospective licensees. He observed that in matters of copyright enforcement, it is necessary especially in this digital age with its proliferation of material to ensure the maximum possible transparency, and “a person who needs a license must know for what he needs that license and from whom, and at what rate”.

Justice Patel further made it clear that event organizers and hosts cannot use copyrighted works without paying the license fee to the owner, whosoever that may be. Even while stating so, he agreed with the suggestion on behalf of the event organisers/ hosts to deposit the sum against the proposed license fee in court rather than directly paying the collecting societies till the suit is disposed off. The said order dated December 21, 2016 is available here.
Toyota Fails to Establish Trans-Border Reputation for Prius: Delhi High Court

A Division Bench of the Delhi High Court constituting of Hon’ble Mr. Justice Pradeep Nandrajog and Hon’ble Mr. Justice Yogesh Khanna recently held that Toyota (Respondent herein) had failed to establish trans-border reputation of its trade mark PRIUS when Prius Auto Industries (Appellants herein) adopted their name, and therefore, the Appellants could not be held guilty of passing off Toyota’s trademark.

Brief Facts/Background:

The Respondent instituted a suit against Prius Auto Industries (Defendant No. 3 therein), its two partners Deepak Mangal (Defendant No. 1 therein) and Sandeep Verma , and its sister concern Prius Auto Accessories Pvt. Ltd. pleading infringement of its trademarks TOYOTA, INNOVA and the TOYOTA DEVICE and passing off of the trade mark PRIUS. The Respondent claimed that the Appellants were selling auto parts meant for use in different brands of automobiles manufactured and sold by Toyota and were marketing spare parts using the registered trademarks of Toyota. Toyota sought an injunction to restrain the Appellants from manufacturing or selling auto parts using identical or deceptively similar trade marks as that of Toyota.

The Appellants filed a common written statement claiming that using the words of Toyota and Innova on the packaging material was not as a trademark but to merely inform the consumers that a particular automobile part was suitable for a particular brand of motor vehicle manufactured and sold by Toyota. They further contended that Prius being a word in dictionary meaning prior in use, was the motivation to adopt the word Prius as the trademark, and the same was registered by Prius Auto Industries on March 30, 2002 claiming usage since July 01, 2001.

Learned Single Judge granted ex-parte ad-interim injunction restraining the appellants from using the trade mark Toyota, Innova, Prius and the Toyota device in respect of auto parts and accessories. The order was vacated on March 19, 2010. Toyota took the matter in appeal, registered as FAO(OS) 248/2010, which was disposed of by the Division Bench on August 10, 2010, imposing an interim arrangement wherein the Appellants were restrained from using the trademarks Toyota and Innova except for the purpose of identifying that their product could be used in cars and that the Appellants were required to mention the company name after “Genuine Accessories”.

Thereafter, the Ld. Single Judge framed the issues, and the parties led their evidence and the trial concluded. After such conclusion, the Ld. Single Judge disposed off the suit on July 16, 2016. The Learned Single Judge held that Prius Auto Industries was guilty of infringing on Toyota's trademarks based on the goodwill and reputation that had been acquired by them and that the mark PRIUS by Toyota had acquired trans-border reputation and restrained the Prius Auto Industries from manufacturing, selling, or using the trademarks PRIUS, TOYOTA and INNOVA alongwith paying Rs. 10 Lakhs as compensation to Toyota. Aggrieved by the said judgment/decree dated July 16, 2016, the Appellants/ Original Defendants filed the present appeal being RFA(OS) 62 of 2016, challenging part of the impugned judgment and decree, regarding use of the trademark/word mark PRIUS which forms a part of their corporate name, and that there was no trans-border reputation of the trademark PRIUS as claimed by the Respondent in 2001, when they had commenced their business under the name/mark Prius Auto Industries. It should be noted that no relief was sought regarding being restrained from using Toyota, the Toyota device and Innova as trademarks and only use them for identification purposes.

Appellant’s (Prius Auto Industries) Contentions:

The Appellant preferred an appeal against the order of the Ld. Single Judge on the following grounds:
  1. That the word PRIUS is publici juris and that was proof that the adoption of Prius in the corporate name of the Appellant was honest and bonafide as they were the first company to introduce chrome plated accessories and motor parts in India, and were looking for a name which would serve as the equivalent of the Hindi words “Pehla Prayas” when they came across the word Prius in the dictionary.
  2.  That not all motor vehicles sold in different jurisdictions abroad under different trade marks become known in India and therefore there is no trans-border reputation in India of motor vehicles sold in foreign jurisdictions by Toyota. The Appellants counsel further submitted that the documents and publications considered by the Ld. Single Judge to establish trans-border reputation of Prius are all post April, 2001, when Prius Auto Industries had commenced its business or were not in circulation in India when the Appellant Company was incorporated.
  3. The articles being relied on by the Respondent to establish Trans-border reputation in India were released in the years when there was low internet penetration in India, and there is no evidence as to how many people accessed the websites in question when the articles were published/uploaded.
  4. That mere evidence of brochures circulated in India were not enough to prove trans-border reputation where goods under the trade mark were not sold in India.
  5. That law declared by the Supreme Court in the decision reported as SCR 1963 484 Amrit Dhara vs. Satya Deo Gupta required it to be held that the suit filed was not only hit by laches but there was acquiescence by Toyota in allowing appellants to build reputation of the trade mark Prius concerning their goods.
  6. That whereas Toyota’s application for registration of the trade mark Prius was still pending, the appellants had obtained a registration of trade mark Prius in the year 2001 and benefit of said registration as contemplated by Section 28 of the Trade Marks Act, 1999 would be available to the appellants.
  7. That since admittedly appellants were using the trade mark Prius since April, 2001 and the suit was filed in December, 2009, i.e. after more than eight years of the mark being used, the test of likelihood of confusion had not to be applied. The test to be applied was actual confusion being proved.
Respondent’s (Toyota) Contentions:
  1.  That though the word Prius was a word in the dictionary as of the year 2000, its origin is clearly Latin, therefore, its absorption in English language was not of such a nature and to such an extent that a person, either in the general public or in the automobile industry trade, would be using it or would be aware of it. The word is not an apt description for an automobile. It is therefore an arbitrary and fanciful mark and thus it deserves a strong protection.
  2. That when Toyota launched the hybrid car Prius in the year 1997 it became a global event because concerns of environmentalists were likely to be met and this became global news. Further, it was contended that as per Section 56 of the Evidence Act, 1872, a fact which a Court will take judicial notice of need not be proved and that as per Section 57 a Court shall take judicial notice of matters of public history and for which the Court may resort for its aid to appropriate books or documents of reference. The Counsel for the Respondents drew a parallel with the drug Viagra, whose reputation was held by this Court in Pfizer Products Inc. case (supra), to have spread like fire in the forest just after it was launched and which came to be known as a wonder drug, learned counsel urged that same would be the position in the instant case.
  3. There was dishonesty in adopting the trade mark Prius by the appellants because the family of defendant No.2 was in the trade of auto parts for over ten years when defendants No.1 and 2 adopted the trade mark Prius. From the fact that appellants were also infringing the trade marks Toyota, Innova and the Toyota logo, it was urged that cases of multiple copying were also an evidence of dishonest appropriation.
  4. That the entire path taken on deciding on the name Prius as seen in the affidavit by way of examination in chief of the Defendant No. 1 therein, Deepak Mangal, wherein he explains that since it was their first venture in producing chrome plated automobile parts they wanted a name that would be along the lines of the Hindi words “Pehla Prayas” translated as “first attempt” in English, and thereafter came across the word Prius in a dictionary and chose it as their company name.
  5.  The fifth contention urged was that the triple identity test being fulfilled in the instant case, a very strong case against the appellants for grant of injunction was made out. The triple test being: identity in the goods (motor vehicles and spare parts in relation thereto); goods sold in the same market; and the class of buyers being the same.
  6.  That where dishonesty in adoption of a well-known trade mark was established, principles of equity which afford a protection in the form of acquiescence or waiver in favour of the offender, would not be applicable.
  7. The seventh argument was that the appellants cannot invoke the benefit of Section 28(3) of the Trade Marks Act, 1999, because the statutory provision comes into play when both parties are bona-fide registered proprietors of a trade mark and neither can sue the other, but each can sue third parties. The adoption in the instant case not being bona-fide and honest, learned counsel urged that the protection envisaged by the Section would not be available to the appellants.

Decision of the Division Bench

The Division Bench observed that the law on trans-border reputation requires two facts to be established. The first is reputation in foreign jurisdictions of the trade mark. The second is knowledge of the trade mark due to its reputation abroad in a domestic jurisdiction. The reason being a trade mark is territorial in its operation. If its reputation spills over beyond the territories of its operation the benefit thereof can be claimed in an action of passing off. The corollary of the finding that newspaper reporting of the event of Prius car launched in Japan in the year 1997, and further sales in the year 1998 and 1999 being not with much prominence would be that the knowledge would be limited to the class of persons associated with the trade in automobiles. The trade mark has to build a reputation in the form of public confidence in the goods and therefore the association of the mark with the source of the goods. Toyota has led no evidence of money spent in advertisements in India of the Prius car before it was sold for the first time in India in the year 2010.

The Division Bench further observed that issues of trans-border reputation or likelihood of confusion decided in various cases cited before the Bench and even in cases not cited arose before the Court either in quia timet actions or when the defendants had just entered the market. At that point of time, the issue could obviously be decided on the test of likelihood of confusion, but in a case of the kind at hand where the appellants had been selling the goods under the offending trade mark for nearly ten years when the suit for injunction was filed, there must be evidence of actual confusion.

The Division Bench also observed that the argument that dishonesty of the appellants is writ large from the fact that they brazenly infringed Toyota’s registered trade mark Toyota, Innova and the Toyota logo, overlooks the fact that the appellants had been selling auto parts under the trade mark Prius since April 2001, and till December 2009 when the suit was filed there was a constant rise in the sales figures which by December 2009 would be around Rs. 4.5 crores for the period 2006 till December 2009. However, It is possible that manner of representation to write that the goods are compatible may appear to one as a trade mark use and to another as a non-trade mark use. The Division Bench observed that this would not be evidence of dishonesty, and that this line of reasoning adopted by Toyota is an ancillary line of reasoning and not the main plank. It is intended to support the main plea of dishonesty in adoption sought to be proved through trans-border reputation and lack of credibility in the justification given by the appellants as to how defendants No.1 and 2 adopted the trade mark Prius motivated by the words ‘Pehla Prayas’.

The Division Bench observed Toyota has failed to establish trans-border reputation of its trade mark Prius in India when appellants adopted the same. The Division Bench found credibility in the justification given by the appellants as to how they adopted the word prius which was publici juris in the year 2001.

The Division Bench also observed that the justification in the written statement is, not that it was the first (Pehla) business venture of the appellants. The justification given is that the appellants were the first in India to manufacture add-on chrome plated accessories. The word ‘Pehla’ was used in said context of the first manufacturer and not the first business venture. The word ‘Prayas’ was used as an attempt in the context of the manufacture and not the business venture. The Division Bench held if a word is publici juris and a person gives good justification as to how he appropriated a word as a trade mark, relating to the state of mind of the person, unless the testimony of the person is discredited, a Court would have no option but to accept the statement made on oath because the fact is of a kind which a person can prove by stating the truthfulness thereof on oath. And if, as in the instant case, there is proof that the word was publici juris it lends assurance to the claim. The Division Bench further held that the logical line of reasoning for finding a catchy trademark for Pehla Prayas would lead from Pehla meaning first, to the English word Prior, and thereafter Prius, and therefore the Division Bench did not find any blemish in the logic of the search and the reasoning.

The Division Bench gave the following order in view of all the observations and submissions:

“We accordingly allow the appeal with respect to the limited issues which were argued in the appeal concerning the trade mark Prius and set aside the decree as per para 207(i) but limited to the injunction issued relating to the trade mark Prius. Since the appellants did not challenge the injunction order, which we find is upon a condition, concerning the trade mark Toyota, the Toyota device and the trade mark Innova, said part of the injunction granted is retained. Mandatory injunction as per para 207 (ii) is set aside.”

Thursday, 15 December 2016

India: Delhi High Court grants injunction in favor of GSK

In this case, Glaxosmithkline Pharmaceuticals (hereinafter referred to as the ‘Plaintiff’) filed a suit against Sarath Kumar Reddy (hereinafter referred to as the ‘Defendants’) to permanently injunct the latter from using the mark “GSK”. The Hon’ble High Court of Delhi ruled in favor of the Plaintiff vide order dated November 2, 2016.

Brief facts and background of the case

The Plaintiffs herein are -
1.      Plaintiff no. 1: GlaxoSmithKline Pharmaceuticals Limited (hereinafter referred to as ‘GSK India’)
2.      Plaintiff no. 2: SmithKline Beecham Limited (hereinafter referred to as ‘SKB’)

The Plaintiff no. 1 herein is a well-known pharmaceutical company, and the mark GSK is a commonly used abbreviation for GlaxoSmithLline, which has been in use since the year 2000 (as averred by the Plaintiffs in para 6 of the judgment). The Plaintiffs are a part of the GlaxoSmithKline Group, which is the parent company.

The Defendant herein is one of the directors of ‘GSK Life Sciences Private Limited (hereinafter referred to as the “company”). The Defendants were using the mark ‘GSK’ as a part of their trade name, along with the GSK logo in the drop form.

On May 30, 2013, the High Court had passed an ex-parte ad-interim injunction against the Defendant, thereby restraining the same from using the mark GSK and any other deceptively similar mark.

Plaintiff’s Submissions

The Plaintiff’s submitted that -
  • The GSK acronym has been in use since the year 2000.
  • They are the registered proprietor of the mark GSK and variations thereof in India in various classes.
  • That the Defendant Company is clandestinely carrying out its operations under the name ‘GSK Life Sciences Private Limited’.
  • That the Defendant’s use of the GSK name/mark/logo in relation to pharmaceutical products amounts to trademark infringement as  under Section 29(5) of the Act.
  • That the mark GSK is a well-known mark.  

Further, the Plaintiffs established that the Company (Defendant) had been manufacturing and dealing in products under the mark ‘GSK”. The Plaintiffs also relied on the Apex Court’s judgment in Time Incorporated v. Lokesh Srivastava, to pray for grant of exemplary and punitive damages.

The Court’s Decision

The Court observed that the Defendant was also operating in the pharmaceutical industry, and by using the mark ‘GSK’ was infringing on the Plaintiff’s registered trademarks. The Court also opined that the Defendant’s impugned logo is deceptively similar to that of the Plaintiffs.

Further, the Court did not grant the damages prayed for as the Plaintiffs couldn’t establish the extent of the sales of the Defendant and the quantum of loss caused to them by the Defendant.

The Court observed that the sales and turnover figures submitted by the Plaintiff in support of their claims is a significant factor whilst examining the reputation of the Plaintiff’s product. 

The Court thereby granted a permanent injunction against the Defendant, thereby restraining them from using the mark ‘GSK’.


The Football Wave Continues……SSR Football Team Semi Finalists in CII Soccer Fest!!

The Confederation of Indian Industry (CII) recently organized its 4th edition of the CII Soccer Festival on December 10-11, 2015, at the Commonwealth Games Sports Village, New Delhi, to create awareness, connect and involve the key influencers for football within the Indian Corporate world. A football tournament among various corporates was also organized as part of a myriad of activities.

The event was inaugurated by renowned cricketer of yesteryears, Ajay Jadeja, and Indian television host, Manish Paul, of Jhalak Dekhla Jaa fame. During the stellar inauguration, Mr, Jadeja spoke briefly about the state of Indian football, and ways in which we can encourage the youth of today to have a positive attitude towards the sport.

The event saw participation from 32 teams from various companies and firms in the men’s category, with 5 persons a side. S.S. Rana & Co., also participated in the grand event and qualified to the semi-finals in the Challenger cup category.


In the girls’ category, there was an unprecedented participation from 16 teams across companies and colleges, in which 2 teams from S.S Rana & Co. participated, 1 of which reached till the semi-finals stage. Kudos to the girls and boys for the successful tournament.  


Monday, 28 November 2016

Kimberly Clark Worldwide Inc V/S Lin Yanxiao

Brief Facts

The Complainant, Kimberly Clark Worldwide, Inc., is a registered proprietor of the trademark HUGGIES since 1976 in the US and since 1985 in India. It is a leading company in the tissues, diapers, personal and health care industry. The Complainant filed a complaint with the National Internet Exchange of India (NIXI) for recovery of the disputed domain name <www.huggies.in> registered by the Respondent, Lin Yanxiao as it incorporates the well-known and registered mark HUGGIES of the Complainant.

Contensions Raised By The Complainant

  • Its various HUGGIES and HUGGIES trademarks are registered under the Trade Marks Act in India as well as in the US.
  • They have acquired valuable goodwill and reputation under the trademark HUGGIES in relation to the goods and business of diapers, tissues and health care segments and the said trademark distinguishes the complainant’s products and business from its source and origin. The said trademark is therefore distinctive.
  • The said trademark is well known, well established, well used and advertised in India since 1985 in the market.
  • The term “HUGGIES” forms an integral part of the Complainant’s domain name- <www.huggies.com> that was registered on March 4, 1996 and <www.huggies.co.in> that was registered on October 7, 2007 and the complainant is the registrant of both the domain names.
  • Consumers associate the term HUGGIES with that of the Complainant.
  • The disputed domain name <www. huggies.in> is identical and similar to that of the registered trademark HUGGIES of the complainant, their registered domain names <www.huggies.com> and <www.huggies.co.in> and thus violates their rights.
  • Adoption of disputed domain name shows the malafide intention of the Respondent to obtain illegal gains and trade upon the goodwill and reputation of the Complainant’s registered trademark HUGGIES and related domain name.
  •  Respondent has illegally adopted the disputed trademark to mislead the online visitors and public into believing that the domain name belongs to the Complainant or is associated with them.
  • Respondent is also advertising the goods of the direct competitors of Complainant on the disputed domain name with malafide intention of disrupting the goodwill and reputation of Complainant’s mark. Therefore, Respondent is using the disputed domain name in bad faith and they have no legitimate rights and interests therein.

Discussion And Findings

The Arbitrator, while deciding the matter, made the following observations:

  • The disputed domain name <www.huggies.in> bears the complainant’s registered trade mark HUGGIES as an essential and memorable feature that would be remembered by the general internet users. An average consumer would believe that there is a nexus between the Complainant and the Respondent or of the disputed name.
  • The consumers would also believe that the disputed domain name is sponsored, licensed or affiliated to that of the trademark of the Complainant or is an extension of the Complainant’s business. Therefore, there is complete similarity/ identity between the complainant’s trademark HUGGIES and the disputed domain name.
  • The disputed domain name of the Respondent bearing the identical registered trademark HUGGIES of the complainant is a violation of Complainant’s rights of the Trade Marks Act, 1999. The Respondent’s acts are without leave and license. Therefore, such acts are considered to be a legal wrong. The Complainant would have no control over the quality of goods and services provided by the Respondent.
  • Respondent is commercially carrying out unauthorized advertisements and sale of HUGGIES products. The acts of the Respondent would tarnish the business and diminish, erode and eclipse the distinctiveness of the registered trademark HUGGIES of the Complainant’s. Therefore, adoption of the disputed domain name is actuated in bad faith, malafide and fraud.
  • The Respondent are also guilty of cyber piracy and cybersquatting.
  • Wrongs of Respondent are apparent from the fact that it has not traversed nor challenged the Complainant’s facts. The motive of Respondent was to derive unjust benefit from the registered trademark HUGGIES of complainant.

Decisions Of The Nixi Arbitrator

In light of all of the above facts and circumstances in the matter, the Arbitrator allowed the complaint directing that the Respondent’s domain name <www.huggies.in> be transferred to the Complainant.

Cases cited by Arbitrator

1.   Montari Overseas Ltd. vs Montari Industries Ltd.
Similarity in addition to being qualified as deception it also acts as evidence of bad faith and malafide intention on part of Respondent to gain illegal monetary benefits.

2.      Lt. Food Limited vs Sulson Overseas Pvt. Ltd
Disputed domain name bearing identical registered trade mark of Complainant would be in complete violation of the said registered trade mark of Complainant (Section 29 of Trade Mark Act, 1999).

3.   GramaxPlasticulture Limited vs Don and Low Nonwovens Limited
Bad faith has been defined to include dishonesty and dealings which fall short of the standards of acceptable commercial behaviors observed by reasonable and experienced men in particular area being examined.
Identifying Bad Faith in Registered Domain Names: ESPN Inc. Domain Admin

It was held in the case of ESPN Inc. v. Domain Admin[1] that the use of a domain name that is a well-known mark to promote competing or infringing products cannot be considered bonafide offering of goods and services. Even where a party passively holds a domain name conflicting with that of a well-known mark, it constitutes bad faith.   

Brief facts and background of the case

It is known that the complainant ESPN Inc. is a well-known company incorporated under prevalent Corporate Laws of the United States of America. The complainant provides sports entertainment services, including media coverage and broadcasting of sports world over through all media sources. 

A complaint was filed with the National Internet Exchange of India on August 18, 2016 by ESPN against the Respondent “Domain Admin” who registered the domain name www.espn.co.in GoDaddy.com. The Exchange had verified the complaint and discerned that it satisfied all the formal requirements of the Indian Domain Name Dispute Resolution Policy and the Rules framed thereunder.

A copy of the complaint was sent by the Sole Arbitrator Mr. Vinod K Agarwal to the respondent at their address registered in the WHOIS data records. However, no response was received from the end of the respondents pursuant to which the proceedings were initiated ex-parte. Also, the respondent’s activities remain unknown.   

Complainant’s Submission

The complainant contended that all elements specified in the policy were applicable to the dispute at hand. The complainant stated that they have been using their trademark ESPN in India as trade name, corporate name, business name, trading style etc. since 1994 without any interruption. The complainant further contended that their trademark registration in respect of ESPN is valid and still subsisting.

Pursuant to this contention they are the sole and absolute owners of copyright vesting in all artistic works around their trademark. Moreover, they own some other domain names incorporating the word ESP such as www.espn.com, www.espn.net, www.espn.in, www.espntv.com, www.espn.go.com, www.espncricinfo.com indicating that they are well known users of the word ESPN as their owners and that their domain name has become a business identifier for them and the conflicting domain name is likely to cause confusion and mislead netizens as it is similar/ identical to their name.

Respondent’s Submission

The respondent’s contentions were not known as they did not submit any response. Furthermore, their identity could not be determined owing to the unavailability of their complete address.

National Internet Exchange of India observed

The Sole Arbitrator observed that the complainant owns the trademark ESPN along with several domain names incorporating the word ESPN created much before the creation of the disputed domain name by the Respondent which is confusingly similar or identical to ESPN’s marks.

As no response was received from the respondents and lack of evidence that the disputed domain name is known anywhere in the world. Further, it could be inferred from the conduct of the Respondents that they had no legitimate interest, license, or authority to use the Complainant’s trademark in a domain name.

The sole Arbitrator deduced that the Respondent had intentionally attempted to attract netizens to their disputed domain name for commercial gain by creating a likelihood of confusion with the complainant’s trademark.  

Therefore, the disputed domain name was declared confusingly similar to that of the Complainant’s. The arbitrator inferred that the disputed domain name was registered in bad faith under the Guiding Policies and the Rules thereunder and passed an order transferring the disputed domain name www.espn.co.in to the Complainant. 



[1] INDRP/825