Wednesday, 4 April 2018

India: Delhi High Court says BOOKMYSHOW Trademark has not Acquired Distinctiveness


The Delhi High Court on 13th December 2017 in the case of Bigtree Entertainment Pvt Ltd V. Brain Seed Sportainment Pvt Ltd & Anr. while examining on the issue of acquired distinctiveness decided that ‘BOOKMYSHOW’ has not acquired any distinctiveness.
Brief Background
  • The Plaintiff in the case ‘Bigtree Entertainment Pvt. Ltd’ is a company established in 1999. It provides ticketing solutions through its website “www.bookmyshow.com” and mobile app BOOKMYSHOW.
  • The Defendant in the case ‘Brain Seed Sportainment Pvt Ltd’ is a corporate entity established on May 15, 2017. It provides for booking sports facilities through an online platform www.bookmysports.co.
  • The Plaintiff has secured several trademarks under Classes 41 and 42 for BOOKMYSHOW word marks and logos, notwithstanding filing applications for numerous other BOOKMYSHOW and BOOKMY trademarks as well.
  • The Plaintiff in December 2015, through one of its employees came to know about the Defendant. A media article on the Internet detailing the Defendant’s launch was found.
  • The Plaintiff claimed that the Defendant’s trademark “Book My Sports” was deceptively similar to the Plaintiff’s trademark and could mislead prospective clients into associating the Defendant’s domain with that of the Plaintiff’s.
  • Thus, Plaintiff filed an infringement and passing off suit before the Delhi High Court (hereinafter referred to as ‘the Court’) seeking permanent injunction against the Defendant, its partners, proprietors, or as the case may be, assignees in business franchise licensees, distributors, dealers and agents from in any manner using the mark “BOOKMYSPORTS”, or using the prefix “BOOKMY”.

Issue
  • Whether the Defendant infringed or committed an act of passing off by using the prefix ‘BOOKMY’?
  • Whether the prefix ‘BOOKMY’ is a descriptive phrase or an invented term?
Plaintiff’s Arguments
  • It stated that it has developed itself to be a prominent player in the market since the launch of its website in 2007.
  • It stated that it is the official ticketing partner for major sports events and cinema houses and has a substantial presence in the Indian and International market.
  • It claimed that it is the registered proprietor of the word marks and logos BOOKMYSHOW in Classes 41 and 42 and has filed applications for numerous other BOOKMYSHOW and BOOKMY trademarks as well.
  • It submitted that the BOOKMYSHOW trademark has acquired a secondary meaning being associated with the Plaintiff owing to its performance in the ticketing industry and wide publicity.
  • It further claimed that the prefix BOOKMY has also acquired a distinctiveness over a period of time and is exclusively associated with the Plaintiff. In addition, the prefix forms an essential part of its registered trademark. 
  • It submitted that the domain name www.bookmysports.co., of the Defendant, remained parked from March 6, 2010 to May 15, 2015 on the World Wide Web with no activity.
  • It argued that the Defendant’s trademark is deceptively similar to the Plaintiff’s and can mislead prospective clients into associating the Defendant’s domain with the Plaintiff’s due to the substantial goodwill and publicity acquired by Plaintiff.
  • It acknowledged that it does not possess trademark on the prefix BOOKMY but averred that it is not the words BOOK, MY, and SHOW in isolation, but the interplay of these words which give the trademark distinctiveness.

Defendant’s Arguments
  • It stated that the Plaintiff has specifically, but falsely pleaded to be the exclusive user and adopter of the mark BOOKMY and BOOKMYSHOW. In addition, the Plaintiff has also concealed third party use and registrations, oppositions and rectifications filed against its trademark ‘BOOKMY’ and ‘BOOKMYSHOW’ and has misrepresented qua cause of action.
  • It also stated that the Plaintiff has admitted in a letter to the Registrar of Trademarks that Defendant’s trademark BOOKMYSPORTS is dissimilar and distinct from Plaintiff’s trademark BOOKMYSHOW.
  • It claimed that its domain of activity being booking sports facilities is squarely different from that of the Plaintiff’s except insofar as they are both engaged in facilitating online bookings.
  • It further claimed that the prefix BOOKMY is not an invented phrase meriting legal protection, but a descriptive one that is common to the particular business being run. In support of this, details of several domain names using the prefix “BOOKMY” was placed on record. Therefore, the alleged claim of the Plaintiff that its use of the prefix conveys distinctiveness toward the Plaintiff’s brand is defeated.
  • It is submitted that its trademark is visually, structurally, and conceptually different from the Plaintiff’s and is not likely to cause deception or confusion.

Court’s Analysis
  • The Court observed that the Plaintiff owns a trademark for its domain name, www.bookmyshow.com.       
  • To decide on the question of a phrase being descriptive or invented the court examined the judgment given by Honorable Supreme Court in the case of J.R. Kapoor v. Micronix India[1] wherein it was held that ‘a word which is descriptive of the industry or market in which the concerned party operates cannot be deemed to be invented’ and F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Private Ltd[2] wherein the Supreme Court applied the principle of using the characteristics of the market in which a party operates as a test to determine descriptiveness or inventiveness.
  • Referring to P.P. Jewellers Pvt. Ltd v. P.P. Buildwell Pvt. Ltd[3]. it held that ‘existence of other companies bearing the prefix in question in itself may suggest that the word is descriptive rather than distinctive.’
  • The Court took note of the fact that there are several pages of domain names beginning with "BOOKMY", that have existed both before and subsequent to the Plaintiff's website. Therefore, it held that the prefix is a descriptive one.

The Court held that the Plaintiff’s trademark “BOOKMYSHOW” has not acquired a distinctive meaning and that the words ‘BOOKMY’ is descriptive in nature and declined to grant the injunctive relief to BookMyShow.



[1] 1994 Supp (3) SCC 215
[2] (1969) 2 SCC 716
[3] (2010) ILR 2 Del 165

India: Enforceability of Foreign Country Registered / Unregistered Copyright


The term ‘foreign work’ is not defined under the Copyright Act, 1957, (hereinafter referred to as the ‘Act’). However, to determine “foreign work”, it can be reasoned that any work which does not qualify as “Indian Work” under Section 2 (l) of the Act is classified as “foreign work”. In order to protect Indian works in foreign countries, India has become a member of the following international conventions on copyright and neighboring (related) rights:[1]
  1. Berne Convention for the Protection of Literary and Artistic works
  2. Universal Copyright Convention
  3. Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms
  4. Multilateral Convention for the Avoidance of Double Taxation of Copyright Royalties
  5. Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement.

The aim of all the copyright conventions / agreements / treaty is focused on the principle that the original creativity or works of the mind, which is the subject matter of protection under copyright law, should be disseminated and distributed regardless of their national borders.[2] Therefore, the simple principles on which the major Copyright Conventions are based are:[3]
  1. Principle of National Treatment - Works originating in one of the Contracting States (that is, works the author of which is a national of such a State or works first published in such a State) must be given the same protection in each of the other Contracting States as the latter grants to the works of its own nationals.
  2. Principle of “Automatic” Protection - This means that such national treatment shall not be depending on any formality, i.e. Protection must not be conditional upon compliance with any formality.
  3. Principle of “Independence” of Protection - This means that the enjoyment and exercise of the rights in a protected work in a certain country is independent of the existence or non-existence of protection in the country of origin or in any other country.

The International Copyright Order, 1999, was formulated to provide the authors / owners of the foreign copyright works to enforce protections beyond the national limits. The above said principles are the basic foundations of the International Copyright Order 1999.

Under the Indian Legislation, copyright of works of the countries mentioned in the International Copyright Order are protected in India, as if such works are Indian works.[4]  The benefits granted to foreign works will not extend beyond what is available to the works in the home country and that to only on a reciprocal basis, i.e., to say the foreign country must grant similar protection to works entitled to copyright under the Act.[5]

In the matter regarding Registration of Copyright Application Titled “In Grief then in Joy, We Wed”, wherein on scrutiny of the application with Diary Number 11596/2015-CO/L, it was found that the work submitted for registration under the Copyright Act 1957, was already registered in United States of America, and hence a discrepancy was raised. The Learned Registrar of Copyrights, vide order dated  January 16, 2018, observed that “In accordance to the provisions of Section 40 of the Copyright Act, 1957, read with International Copyright Order 1999 states that the copyright of nationals of countries who are members of the Berne Convention for the Protection of Literary and Artistic Works are protected in India. A list of such countries are made available in the Part 1 of the Schedule mentioned under the International Copyright Order 1999.” Further, the Learned Registrar of Copyrights also agreed that the Applicant, if they wish so, may also seek registration of their works in India by complying with the requirements of the Copyright Act 1957 and Copyright Rules 2013.

Since the foreign works, as under the International Copyright Order 1999, are protected under the Copyright Act 1957, and therefore the provisions with respect to enforcing the rights under the Copyright Act is also available to the foreign copyrights holders. Paragraph 3 of the International Copyright Order 1999, extends the protection under the Copyright Act 1957 to the foreign works and therefore, both civil and criminal remedies for infringement under Chapter XII and Chapter XIII are available to the foreign works. The Copyright Act of India provides dual legal machinery to the right holders for enforcing their rights. The enforcement is possible through -
  1. The Intellectual Property Appellate Board and
  2. The Courts.
The Copyright Act, 1957, initially established a quasi-judicial body called the Copyright Board, which is now merged with Intellectual Property Appellate Board (hereinafter referred to as the ‘Appellate Board’) pursuant to Finance Act 2017, with effect from April 01, 2017. The Appellate Board is assigned with the task of adjudication of disputes relating to copyright registration,[6] assignment of copyright,[7] grant of licenses in respect of works withheld from public,[8] unpublished Indian works,[9] production and publication of translations,[10] and works for certain specified purposes.[11] Further, it also hears cases in other miscellaneous matter instituted before it under the Copyright Act, 1957.

Similarly, as per Section 62 of the Copyright Act 1957, the District Courts have jurisdiction in the matters pertaining to the infringement of Copyright in any work or the infringement of any other right conferred by the Copyright Act. However, an appeal against the order of the IPAB can be preferred before the Hon’ble High Court having the jurisdiction.


[1] Government of India - Ministry of Human Resource Development (Department of Secondary Education and Higher Education), A Hand Book Of Copyright Law, available at http://copyright.gov.in/documents/handbook.html.
[2] WIPO National Workshop For Judges, International Legal Framework For The Protection Of Copyright And Related Rights (December 13 to 15, 2004), WIPO/IP/JU/RYD/04/1, Pg 4.
[3] WIPO National Workshop For Judges, International Legal Framework For The Protection Of Copyright And Related Rights (December 13 to 15, 2004), WIPO/IP/JU/RYD/04/1, Pg 5; WIPO, Summary of the Berne Convention for the Protection of Literary and Artistic Works (1886), available at http://www.wipo.int/treaties/en/ip/berne/summary_berne.html. 
[4] Government of India - Ministry of Human Resource Development (Department of Secondary Education and Higher Education), A Hand Book Of Copyright Law, available at http://copyright.gov.in/documents/handbook.html.
[5] P. Narayanan, Intellectual Property Law, 4th ed., p.201 (2004).
[6] Section 6, The Copyright Act. 1957 (Act 14 of 1957).
[7] Section 19A, The Copyright Act. 1957 (Act 14 of 1957).
[8] Section 31, The Copyright Act. 1957 (Act 14 of 1957).
[9] Section 31A, The Copyright Act. 1957 (Act 14 of 1957).
[10] Section 32, The Copyright Act. 1957 (Act 14 of 1957).
[11] Section 32A, The Copyright Act. 1957 (Act 14 of 1957).

India: 'Be U' Bengaluru Becomes India's First City to Have Its Own Logo


Source: yourstory.com
A city’s logo is a culmination of its identity, aspirations and everything that it represents. A logo, thereby, becomes a beacon via which tourists, travelers, and even citizens identify the city of their choice. However, such creative representation becomes and is the property of the city that creates it and thus becomes responsible to ensure the protection of such creativity and eventually, intellectual property. Hence, it becomes essential for the city’s authorities to ensure that they can exercise the right to use a representation of their home without it being misused by third party infringers. However, out of all cities in the world that do boast of logos, a fraction have sought to protect themselves by registering it!

Above: City Logos filed as trademarks/ protected from around the world
However, in most developing countries where, due to the proximity of manufacturing industries, there is an abundance of counterfeit markets, it is an absolute necessity to register trademarks in order to ensure that merchandising revenues find their way to the right coffers. Japan is a good example of the same, having filed and received a registration for its city logo in anticipation of the 2020 Olympics. Events of such magnitude cause a resurgence of counterfeit merchandize, as has been discussed with a case study below. As of 2017, the city of Bengaluru has joined the ranks of other well-known tourist destinations such as Singapore, London, and New York City and became the first Indian city to boast of a logo of its own. It was unveiled at the Nammo Bengaluru Habbo festival by Karnataka Tourism Minister Priyank Kharge. The logo in question is one that has been crowd sourced from over 1350 entries and reads “Be U,” which is a mix of typography in English and Kannada. The logo was designed by Nammur, a design start-up that won a contest and received a prize money of INR 5 lakhs. The idea of the logo is that it is meant to be easily pronounced, associated with everyone and be a representation of the kind of self-expression and acceptance that is associated with the city.
Coming with an option of colors (green, yellow and red), the logo is intended to further tourism and be replicated on all types of merchandise. The theory here is that a design that comes from the people is representative of the spirit of the city and thus putting it on souvenirs and merchandise that can be bought is a reminder of the city to everyone who visits it. The entire philosophy behind creation and city logos is centered around the creation of a brand that represents the city, its people and the values it stands for (Amsterdam’s I AM logo which was revamped as a reminder of the city’s culturally inclusive philosophies). Not only is this likely to boost the morale of the city, but will also create an industry around the licensing and manufacturing of t-shirts, mugs, and other city-specific memorabilia.
However, as are with all creations, all ideas instituted to bolster economies require protection from those who seek to benefit from their unauthorized usage. The creation of a distinctive logo and exclusive merchandise for the city also comes with a window of opportunity for counterfeit markets to take root and exploit the intellectual property of the city. Thereby, a Trademark of the logo accompanied by acquisition of the consequent merchandising rights is a must if one aims to boost the city and state’s tourism.
Registration of the trademark as exclusive property of the city is a given necessity. However, merchandising while using such registrations is an equally essential avenue that needs to be explored. Aside from being an effective tool to guard IP, it is also an invaluable marketing tool as it gives the merchandised goods’ owners the distinct feeling of belonging and ownership that the city aims to inspire. Similarly, it can also be licensed out to third party manufacturers for mass production of merchandise. Due to the novelty of city brand logos, the practice neither of its creation nor its IPR protection has been seen before. However, reference can be drawn from the Citywide Merchandise Licensing Program carried out by NYC & Company, which provides licensing rights for the City and its agencies. While allowing each of the individual agency the discretion of issuing its licensing rights to third parties, it ensured registration and crackdown of counterfeits across the city, leading to almost 600 cease and desist orders to vendors. This was all in response to an increasing culture of counterfeit goods that had been produced featuring the City’s agencies, specifically the New York City Police Department (NYPD) and the Fire Department of the City of New York (FDNY), due to their inconsistent licensing policies and lack of action against counterfeiters.
Here is a list of certain city departments, which are registered as trademarks with United States Patent and Trademark Office (USPTO)


However, in the same spectrum the government cannot endeavor or be allowed to gain the rights over every aspect of the city – especially a city that belongs to its people first. In a case where the Port Authority of New York and New Jersey (PA) took the souvenir shop Fishs Eddy to court for their representation of the New York Skyline and other signature landmarks of the city on their dinnerware, stating it “interferes with the Port Authority’s control of its own reputation” and may create an association with the 9/11 attacks. The authority dropped the matter a little while after, possibly understanding that legal action would have to be taken against the thousands of souvenir shops selling similar merchandise for their actions to prove successful.

Bangladesh: DPDT imposes 15% VAT over Govt. Fees on all IP Matters



The Department of Patents, Designs and Trademarks, Bangladesh  (hereinafter referred to as “DPDT, Bangladesh”) vide an official notification dated March 12, 2018, has imposed 15% Value Added Tax (hereinafter referred to as “VAT”) under local VAT Rules (Rule 18(e) of Value Added Tax Rules, 1991) over Government Fees i.e. official fees, on all Intellectual Property matters in Bangladesh. 

DPDT, Bangladesh vide such order has imposed 15% VAT on the total amount of money received from beneficiary for proceedings relating to the registration/renewal of Patents, Designs and Trademarks in Bangladesh. The Official Notification of the DPDT can be accessed over here.

In Bangladesh, protection of industrial property comes under the purview of Ministry of Industries. On behalf of the Ministry of Industries the DPDT administers all the activities relating to industrial property.

Tuesday, 20 March 2018

India: Bombay High Court on the test to be applied in Passing-Off cases


Recently, the Division Bench of Bombay High Court in Ansari Bilal Ahmadlal Mohd. V. Shafeeque Ahmed Mohammed Sayeed held that in case of passing off the test to be applied is of a person of average intelligence and imperfect recollection. The device, label mark has to be seen in its entirety and after taking into consideration the facts of the case, a decision has to be arrived at as to whether the mark of the Appellant is deceptively similar to the Respondent’s one.’

Brief Facts


Ø  In 1993, Mohammad Sayeed Gulam Husaain Attarwale (hereinafter referred to as the ‘Respondent’s Father’), independently created a distinctive label i.e. ‘SUKOON OIL’ and ‘NAGEENA SUKOON OIL.’ The Respondent’s father was using the label since 1993. ‘SUKOON OIL’ used as a pain-relieving massage oil was, manufactured and marketed under the said distinctively designed label and mark. The Respondent’s father in the name and style of M/s. Nageena Ayurvedic Pharmacy carried out the said business.
Ø  Shafeeque Ahmed Mohammed Sayeed (hereinafter referred to as ‘the Respondent’) has been running the said pharmacy business, after the death of his father, Mohammad Sayeed Gulam Husaain Attarwale, in 2000.
Ø  In July 2016, the Respondent discovered that JBM Herbal Pharmacy (hereinafter referred to as ‘the Appellant’) is also selling products under the mark ‘SUKOON’ in Mumbai.
Ø  The Appellant was also engaged in the manufacturing, marketing and selling a similar Ayurvedic/Unani medicine under the Trademark ‘SUKOON’ and under the deceptively similar label bearing the word ‘HEENA’ written and depicted in similar manner to the word ‘NAGEENA’, the Respondents’ label.
Ø  The Respondent filed a suit for infringement of registered trademarks being a label mark of ‘SUKOON OIL’ and infringement of copyright in ‘SUKOON’ label, before the Learned Single Judge Bench of the Bombay High Court. 
Ø  The Learned Single Judge Bench after carefully listening to the contentions of the parties as well as considering the statement of year-wise purchases and sales from the year 2002-2003 to 2014-2015, granted interim relief to the Respondent in Notice of Motion dated October 26, 2016.  
Ø  Being aggrieved by the order of the Learned Single Judge, an appeal was filed by the Appellant before Learned Division Bench of the Bombay High Court. 

Appellant’s Contentions


Ø  The Appellant contended that the calligraphy used by the Appellant Company is of different style compared to that of the Respondent Company. The differences pointed out by the Appellant were:
o   The Respondent’s label display lungs, whereas the label of Appellant display full skeleton.
o   Representation is different.
o   Respondent’s label is totally different from that of Appellant,
o   In no manner both the bottles i.e. bottle of Appellant and Respondent is likely create confusion,
o   The word ‘SUKOON’ reflects the nature of the product,
o   The word ‘SUKOON’ written in one of the bottles of the Appellant is different in fonts, color, and style as compare to the bottle of the Respondent.
Ø  It contended that since the two trademarks are entirely different, the Respondent could not seek protection on the ground of usage of the word ‘SUKOON’, as the same is not even registered at the behest of the Respondent.
Ø  It is submitted that the word ‘SUKOON’ on the product is being used in the descriptive sense and not as a trademark.
Ø  On the claim of passing off, the Appellant took protection under Section 35 of the Trade Marks Act, 1999, since the expression used by them is bonafide expression of character and quality of its own goods. It also submitted that the Respondent has failed to make out a prima-facie case of passing off.
Ø  It submitted that the word ‘SUKOON’ is used in association with ‘HEENA’, which is distinctive in nature. Further, the Appellant states that it is using the word ‘HEENA’ since the year 2012.
Ø  It was further submitted by the Appellants, that the registration of the label mark titled ‘SUKOON OIL’ was on the condition that the Appellants put a disclaimer that registration of the mark shall give no right to the exclusive use of the device of lungs and the independent use of the word OIL and the letters N, A, and P. Therefore, ‘SUKOON’ Trademark is not distinctive with the ayurvedic preparation of Respondent and is not exclusively associated with the Respondent.  
Ø  It submitted that there is nothing distinctive in the label mark of the Respondent. The registration of the Respondent is a device mark. Color combination of Respondent's label and Appellant's label are entirely different. The design and description of the words are entirely different and dissimilar; therefore, there is no question of the Appellant carrying his trade transaction with the product ‘HEENA SUKOON OIL’ with a deceptively similar label as of the Respondent, which is sold in the market as ‘NAGEENA SUKOON OIL’.
Ø  It submitted that there is an error on the part of the Learned Single Judge in allowing the Notice of Motion. It has suffered a grave loss and injury due to restrictive orders passed by the learned Single Judge of this Court, which has affected his business.

Respondent’s Contention

Ø  According to the Respondent, in 1993, his father, Mohammad Sayeed Gulam Husaain Attarwale (hereinafter referred to as the ‘Respondent’s Father’), independently created a distinctive label i.e. ‘SUKOON OIL’ and ‘NAGEENA SUKOON OIL.’ The Respondent’s father was using the label since 1993. ‘SUKOON OIL’ used as a pain-relieving massage oil was, manufactured and marketed under the said distinctively designed label and mark. The Respondent’s father in the name and style of M/s. Nageena Ayurvedic Pharmacy carried out the said business.
Ø  On February 12, 1994, the Respondent’s father applied for Trademark registration of ‘SUKOON’ label. However, on June 4, 2000 the Respondent’s father had expired.
Ø  After the Respondent’s father expired, the Respondent has been running the pharmacy and manufacturing labels. Again, on August 17, 2005, the Respondent applied for registration of Trademark ‘SUKOON’ label. The said Trademark was registered in Class 05. The Respondent also stated that he is registered proprietor of word mark ‘NAGEENA.’
Ø  The Respondent states that by manufacturing, selling and/or offering for sale the impugned product, the Appellant is violating Respondents’ valuable, intellectual and intangible proprietary rights contained in the registered Trademark ‘SUKOON’ label and/or its essential ingredients i.e. word ‘SUKOON.’
Ø  It is stated that Appellant has deliberately adopted the impugned Trademark with malafide intention of passing off their product as and for that of the Respondent.
Ø  It contended that the Appellant is applying wrong test in trying to establish that there is no deceptive similarity. The label of the Respondent is an essential prominent feature, which is ‘SUKOON’. It has also applied separately for registration of the word ‘SUKOON’ and is using the mark since 1993.
Ø  It further submitted that the Learned Single Judge has gone through the entire record and after taking into consideration the material placed on record and submissions advanced, has reached the conclusions mentioned in the order.  

Court ’s Decision


Ø  The Learned Division Bench of the Bombay High Court (hereinafter referred to as ‘the Court’) threw light on the observations of the Learned Single Judge. It noted that the statement of year-wise purchases and sales from the year 2002-2003 to 2014-2015 submitted by the Respondent showed that, the sale of the product had risen considerably from INR 29,208/- in 2002-2003 to the extent of INR 1.52 Crores in the year 2014-2015. It also took note that the Learned Single Judge had even described in detail the discrepancies in labels of both the parties.
Ø  The Court stated that the Respondent has obtained the registration of the mark, hence prima-facie the Respondent has established that the Appellant has been using the label marks on his products, ‘HEENA SUKOON OIL’, which is deceptively similar to the Respondent's product known and styled as ‘NAGEENA SUKOON OIL’.
Ø  The Court held that ‘during the course of hearing it was submitted that majority of consumers of these products are laborers from Bhiwandi area. The test to be applied in the case is of a person of average intelligence and imperfect recollection. The device, label mark has to be seen in its entirety and after taking into consideration the facts of the case, a decision has to be arrived at as to whether the mark of the Appellant is deceptively similar to the Respondent's one.’
Dismissing the appeal, the Court noted that the Respondent has made out a strong prima-facie case of passing off. In addition, there is no arbitrariness in the view adopted by the Learned Single Judge. The Learned Single Judge has dealt with the issues in a reasonable and judicious manner.

For the knowledge of the reader, the details of the status of various Trademarks of the Respondent as per the records of the Trademark Registry is given below:


India: Delhi High Court clarifies on what is new and original under the Designs Act



Design is that aesthetic feature which adds the exclusive quality to the product. Any product can become visually appealing through its design. This is exactly what the Designs Act, 2000 (hereinafter referred to as ‘the Act’) protects i.e. the aesthetic appearance. Designs, as defined by the Act, is the ‘features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article in two or three-dimensional form, or both, by any industrial process or means – whether manual, mechanical or chemical, separate or combined – which in the finished article appeal to and are judged solely by the eye’. The Act also lays down the necessary parameters that are requisite conditions for a design to be registered under the Act. The very first and foremost condition is that the design should be new or original, not previously published or used in any country before the date of application for registration. Focusing on this criterion, recently, the Delhi High Court its judgement, in the case of Crocs Inc. Usa V Liberty Shoes Ltd. & Ors., on February 8, 2018, cancelled the registered design of Crocs Inc. USA and dismissed the claim of piracy of design made by the Company. The Court held that, ‘it is necessary for protection of a registered design that the registered design must be an Intellectual Property Right created after application of sufficient time, labor, effort, etc. and that there must be sufficient newness or originality i.e. existence of requisite innovation and that trade variations of known designs cannot result in newness and originality.’

Brief Background

  • Crocs Inc. USA (hereinafter referred to as ‘the Plaintiff’) are proprietors of certain registered designs related to footwear in India. The registered design in issue in the case bear registration numbers 197685 and 198786. The tabular representation of the designs are given below -


  • In the plaint, the Plaintiff stated that Liberty Shoes Ltd. and others (hereinafter referred to as ‘the Defendants’) has been violating the rights of the Plaintiff by imitating its registered design shown above. It claimed piracy of design under Section 22 of the Act.
  • The Plaintiff filed a suit for permanent injunction against all the Defendants from manufacturing, marketing, supplying, using, selling, soliciting, exporting, displaying, advertising by any other mode or manner the impugned design or any other design which is deceptively similar to or is a fraudulent and/or any obvious imitation of the Plaintiff ‘s design.
  • The Plaintiff also filed interim applications seeking pendente lite restraint against the Defendants from manufacturing, marketing, supplying, selling etc. the footwear of the Defendants which footwear as per the Plaintiff have been manufactured and sold by infringing the registered designs of the Plaintiff.
  • The Defendants challenged the interim injunction application.
Issues

  1. Whether the registered designs, of the Plaintiff, lacked novelty and originality?
  2. Whether the registered designs existed in public domain prior to the registration being granted in favor of the Plaintiff?
  3. Whether the Defendants are guilty of piracy of designs? 
Plaintiff’s Contentions

  • The Plaintiff alleged that the footwear manufactured by the Defendants were more or less same or similar, with color variations or other changes with respect to placements of the perforations/open spaces/holes in the footwear or certain other aspects for creating visual appeal.
  • With regard to the website evidence filed by the Defendant in pursuance of issue no. 2, it argued that depiction in the website is no guarantee that depiction of the footwear in question in fact took place as on December 10, 2002, as stated in the printouts downloaded and filed by the Defendants.
  • The Plaintiff contended that once the registration is done, there must be a presumption of newness and originality and the onus should be on the Defendant to prove that there is no newness or originality.
Defendant’s Contentions

  • They contended that the registration of design with respect to footwear is in itself invalid. Taking defence under Section 22 (4) of the Act, they argued that since the registration of the design granted to the Plaintiff is not valid, hence no case could be made out of piracy of the registered design of the Plaintiff.
  • They further claimed that the registered design of the Plaintiff’s when registered lacked any newness/originality. The design was in public domain at the time of registration.
  • To prove issue no. 2, the Defendants produced the internet-downloaded pages from the website of the company ‘Holey Soles’, the footwear designs of which were similar to that of the Plaintiff. The designs on the page were stated to be archived on the page since December 12, 2002. The 'Holey' in the 'Holey Soles' is because of holes/spaces/gaps existing in the footwear of this company.
  • It was submitted that the registration date granted to Plaintiff in India was May 28, 2004. Since, the design of the footwear of the Plaintiff was found in the public domain since 2002, therefore, the registration granted to the Plaintiff was clearly faulty and liable to be cancelled under Section 19 of the Act.
Court’s Decision

  • The Court analyzed Sections 2 (d), 4, 19 and 22 of the Act.
  • Regarding issue no. 1, the Court went on to evaluate the meaning of a design being new or original. The Court revisited its judgement in Pentel Kabushiki Kaisha & Anr. Vs. M/S Arora Stationers & Ors., and held that mere variations to existing products which do not result in requisite amount of newness or originality cannot be considered as innovations having newness and originality for being granted monopoly for fifteen years.
  • Further adducing the test of newness and originality, the Court held that it is necessary for protection of a registered design that the registered design must be an Intellectual Property Right created after application of sufficient time, labor, effort, etc. and that there must be sufficient newness or originality i.e. existence of requisite innovation and that trade variations of known designs cannot result in newness and originality.
  • Dealing with issue no. 2, the Court reiterated that according to Section 19 of the Act a design, which existed in the public domain prior to grant of registration under the Act, is a ground for cancellation of the design. Rejecting the contentions of the Plaintiff, the Court prima facie accepted that such design existed in public domain prior to Plaintiff's registration, the Plaintiff therefore, cannot claim exclusivity for its registered design merely on the ground that Plaintiff ‘s footwear/registrations does have a strap at the back of its footwear.    
  • The Court opined that in cases where the registered design is associated with something so common to human lifestyle, for example in this case footwear, the bar of newness and originality automatically increases. It said that it requires an effort larger than an ordinary effort to create a different footwear than the known types of footwear, to be an innovation/creation having such requisite newness and originality for that creation to become an Intellectual Property Right as a design in terms of the Designs Act.
  • In the present case, in Court’s view the design of Plaintiff’s footwear is nothing but a sandal. Sandal with open spaces are only trade variations of a sandal. Trade variations of footwear/sandals cannot be and should not be given exclusive monopoly. In addition, the features which were argued on behalf of the Plaintiff, as existing in its sandals/footwear of mounds or humps or straps (or lack of them) or soles designs or perforations/open spaces etc., even when taken as a whole, or even individually for that matter, cannot be said to result in innovation or creation of newness or originality.
  • The Court also assessed the claim of cost payable to the Defendants. Taking into consideration the Commercial Courts Act, 2015, read with Section 35 of the Code of Civil Procedure, the Court held that ‘the Court had the power to order costs at the interim stage, and that, in this case, the Plaintiff, in refusing to settle the interim applications with the Defendants, and ‘obdurately and illegally continuing proceedings’, and imposed costs of a whopping INR 2 lakhs per Defendant, in addition to legal costs’.