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Intellectual Property Rights
Intellectual Property Rights
The Trade Marks (Amendment) Bill, 2009
In order to enable Indian nationals as well as foreign nationals to secure simultaneous protection of trademarks in other countries, Ministry of Commerce and Industry had introduced the Trade Marks (Amendment) Bill 2009 (“Amendment Bill”) in the Parliament.
Certain important and recent legal developments and case laws in this area are set out below:
Intellectual Property Rights
The Trade Marks (Amendment) Bill, 2009
In order to enable Indian nationals as well as foreign nationals to secure simultaneous protection of trademarks in other countries, Ministry of Commerce and Industry had introduced the Trade Marks (Amendment) Bill 2009 (“Amendment Bill”) in the Parliament.
The Amendment Bill proposes to add a new chapter IVA containing special provisions relating to protection of international registration of Trade Marks under the Madrid Protocol (“Protocol”), which was adopted by the United Nations in 1989.
The Protocol, administered by the International Bureau of the World Intellectual Property Organization (“WIPO”), provides for a simple, facilitative and cost-effective system for international registration of trademarks. It enables the nationals of the member countries of the Protocol to obtain protection of trademarks within the prescribed span of 18 months by filing a single application with one fee and in one language in their country of origin. This in turn is transmitted to the other designated countries through the International Bureau.
The Amendment Bill aims to empower the Registrar of Trade Marks (“Registrar”) to deal with international applications originating from India as well as those received from the International Bureau and maintain a record of international registrations.
The Trade Marks Registry acting as an office of origin in respect of applications originating from India will be responsible for certification of international applications received by it that the particulars mentioned correspond to the application pending or registered with it and transmit them immediately to WIPO for registration and thereafter forwarding it to the designated countries where protection is sought.
The Amendment Bill further imposes strict time limits on the Registrar to dispose of applications for registration of trademarks locally and in the matter of protection of international trade marks under the Protocol.
The Amendment Bill also proposes to remove the discretion of the Registrar to extend the time for filing notice of opposition of published applications and provide for a uniform time limit of four months in all cases.
With a view to simplify the law relating to transfer of ownership of trademarks by assignment or transmission and to bring the law normally in tune with international practice and modern business needs, Section 45 is proposed to be modified.
Lastly, the Amendment Bill proposes to omit Chapter X of the Trade Marks Act, which deals with special provisions for textile goods.
Cases
Intellectual Property Rights
Shelke Bevarages Private Ltd. v. Rasiklal Manikchand Dhariwal and Dhariwal Industries Ltd.
In this case, the respondents Mr. Rasiklal Manikchand Dhariwal, in or about the year 2001 invented a method of producing Oxygen Enriched Packaged Drinking Water and an Apparatus. The said invention was fully secured by Indian Patent under the Indian Patents Act 1970. Since 2002 the respondent had been processing, marketing and dealing in innovative "Oxygen Enriched Healthy Packaged Drinking Water" of a Unique Purity and Utility and had adopted distinctive mark "OXYRICH" which was registered as a Trade Mark under the Trade Marks Act, 1999.
The respondents in June 2009 noticed that the appellants had commenced bottling and marketing packaged drinking water by adopting and/or using the artistic Trade Mark label having identical colour scheme, get-up, design and layout which is deceptively similar to the respondents artistic label and registered Trade Mark. Therefore, the respondents through an Advocate's notice sought to restrain the appellants from infringing their registered Copyright and Trade Mark and claimed damages for violating intellectual property rights.
The appellant by its reply denied the contentions in the notice and contended that they are carrying on business of packaged drinking water honestly by adopting a distinctive label “OXYCOOL” as a trade mark and have got the same registered with the Trade Mark Registry in Class 32 in respect of packaged drinking mineral water. The appellant contended that it adopted “OXYCOOL” as a distinctive trademark for packaged drinking water like OXY-LIFE, OXYLIFE, OXYLITE, OXYPLUS, OXYWELL, OXYJAL, OXYZAL, OXYFLOW, OXYCARE, OXYSIP, OXYDUE, OXYBLUE etc., for selling packaged drinking water. The appellants contended that they had no intention to tread upon the goodwill of the respondents and that their Trade Mark “OXYCOOL” is distinct and dissimilar to the respondents' product.
The appellants further submitted that there were many traders using the common word “OXY” for selling and identifying their products of packaged drinking water. The word “OXY” has root in Oxygen; a colourless tasteless, normally a gaseous element most abundant in earth's atmosphere, which is a chemical element “O2”. While water is a chemical substance in liquid form composed of hydrogen and oxygen which is vital for all forms of life visualized ordinarily as represented by sky blue or light blue colour and the word “OXY” is a generic term and cannot be monopoly of anybody - selling safe drinking water in packages.
The Bombay HC after hearing both the parties noted that the get up and features of two labels on the bottles, when compared, were dissimilar as there were some distinct features between the two and the appellant's presentation of the label could not be said to be deceptively similar to that of the respondents. No buyer could be deceived to buy the appellants' product believing the same to be product of the respondents. The respondents had not produced affidavit of even a single customer to swear or solemnly affirm that he was ever misled in to buying the appellants' product believing it to be the product of the respondents. The advertisement of the respondents' product laid more stress on purity and uniqueness of the product than a trade mark on the get-up of the label. There was no evidence to justify the interference that the appellants have copied get-up of the respondents. The only similarity might be the blue colour back ground but that also could not constitute a special characteristic of the respondents' product, different colour combination, design and style is exhibited for labels.
The Bombay HC further stated that the terms “Oxygen” is common and the formula for water is known as H2O in Chemistry and consequently the respondents cannot claim any exclusive title to use the word “OXY” by reason of their having partly used it for labeling their product since the registration of the Trade Mark. Phonetic and visual similarity or dissimilarity would play pivotal role to distinguish one mark from the other. Reading and comparing get-up and variations of the script style, arrangement of words, fonts on labels used by the appellants and the respondents would certainly overrule the possibility of any average buyer from being deceived in to assuming connection between the “OXYRICH” and “OXYCOOL” on assuming that they enumerated from same source. Label of appellant is good and distinctly indicate that packaged drinking water do not originate from the respondents but have been produced by the appellants giving their detailed address and ISI mark for quality. Hence, the Bombay High quashed the interim injunction granted by the singly judge against the appellant.
R.G. Oswal Hosiery Industries v. Union of India (UOI) and Ors.
In this case, the respondent had filed a petition in the Intellectual Property Appellate Board (“IPAB”) for removal of the marks registered by the petitioner. The petition was filed mainly on the ground that the Petitioner herein had never filed an application for renewal of the trademark and the renewal filed by M/s. Kedia Knitwear was void ab initio.
The petitioner filed a reply to the said application and denied that the registration was bad on the ground that the petitioner herein did not file the application for renewal. It was asserted that the application for renewal of the Trademark was “filed by a competent and authorised person”. It was maintained that M/s. Kedia Knitwear was a licencee of the petitioner and that in the public notices Kedia Knitwear had made “no claim in instant proprietary rights and consequentially there was no conflict of rights”.
The IPAB agreed with the contention of the respondent that an application for renewal of a registered trademark could only be made by the registered proprietor of the said mark and not by the licencee of the registered proprietor and held that an application for renewal made by a licencee of a registered proprietor could not be entertained and the renewal of registration in such circumstances ought to be declared as not valid.
Aggrieved by the order of the IPAB, the petitioner challenged the decision in the Delhi HC contending that IPAB fell into error in holding that an application for renewal had to be filed only by the registered proprietor. The petitioner submitted that although Section 25(2) of the Trade Marks Act, 1958 (“TM Act”) read with Rules 66 and 67 of the Trade & Merchandise Marks Rule, 1959 (“TM Rules”) envisage an application for renewal “made by the registered proprietor of a trademark” permit a registered user or a licencee of a trademark to act on behalf of the registered proprietor. In particular, the petitioner referred to Section 48 of the TM Act which stated that a person other than the registered proprietor of a trademark may be registered as a registered user. The petitioner stated that this could at the best be considered to be irregularity and not an illegality. For such irregularity, the Petitioner should not be punished with the extreme punishment of removal of the marks themselves.
The respondent contended that that even under Rule 63(3) of the TM Rules, 2002 where the application for renewal is not by the proprietor, an affidavit will have to be shown to demonstrate “continuity of title” from the registered proprietor in whose name the last renewal was affected “to the present owner along with the supporting chain of documents.”
The Delhi HC stated that M/s. Kedia Knitwear made a false statement before the Trade Marks Registry that it was the registered proprietor of the marks, when it obviously was not.
The Delhi HC further held that even in terms of the Rules 63(2) and (3) of the TM Rules 2002, an application for renewal has to essentially be made by the registered proprietor of the trademark. Rule 63(3) requires that if the applicant for renewal is not the registered proprietor then an affidavit will have to be filed “along with supporting chain of documents”, by the subsequent owner “to show continuity of title from the registered proprietor to the present owner”. This also did not therefore permit a mere licencee of a registered proprietor to apply for renewal. The word “agent” used in Rule 63(2) has to be understood in terms of Section 145 of the TM Act which defines an agent either to be a legal practitioner or a trademarks agent or a person in the employment of the principal. Here again the question of a licencee of a registered proprietor applying for renewal of registrations does not arise as a 'licencee' is not an 'agent'.
Therefore the legislative intent even under the new regime brought out by the TM Act and the TM Rules, 2002 is that an application for the renewal of the registration of a trademark can be made only by a registered proprietor and not by a licencee of such registered proprietor.
This Delhi HC held that the contention of the petitioner that what had happened in this case was a mere irregularity cannot be accepted.. The renewal of registrations in respect of both marks on the basis of applications of M/s. Kedia Knitwear stood vitiated since M/s. Kedia Knitwear has made a false submission in the applications that they were not in fact the registered proprietors. Consequently, this Delhi HC upheld the order of the IPAB.
Aveda Corporation v. Dabur India Ltd
In the present case, “Aveda” and “Uveda” the two marks were subject matter of consideration under present application. “Aveda” is the trademark of plaintiff for which plaintiff had a registration certificate showing registration in the name of plaintiff since 1986 for hair care, skin care and other beauty products. The name of plaintiff itself was “Aveda Corporation”. The defendant has adopted a mark “Uveda” for its skin care and beauty products recently.
The contention of the plaintiff was that plaintiff had popularized this trademark throughout the world by spending considerable amount on promotional activities/advertisements. In the year 2008-09, an amount in excess of 50 million dollars was spent on promotion of goods worldwide by the plaintiff. Defendant introduced fairness cream, face wash and moisturizer under the mark “Uveda” in August, 2009. The mark “Uveda” adopted by defendant was phonetically similar to the plaintiff's mark. It was being used by the defendant for similar products and the mark was deceptively similar to that of the plaintiff. The defendant though a well known company was trying to take advantage of the reputation of the plaintiff.
The defendant contended that the plaintiff had no sales in India and the mark of the plaintiff “Aveda” was not known in India. Plaintiff was admittedly supplying its beauty products in India to only one Spa in Rishikesh (city in India) and its products were not available at any shop in the market anywhere in India. There was no question of same consumer getting confused since the products of the plaintiff were not even available in India for sale. The other ground taken is that the plaintiff was catering to a very high end limited market as compared to that of the defendants. The packaging of the defendant was altogether different and the style of writing “Uveda” and “Aveda” was also different and there was no reason for confusion of the customer and there was no chance of passing off the goods of the defendant as that of the plaintiff since “Dabur” was prominently written over the word “Uveda”. The get up and mode of writing was also altogether different.
The Delhi HC stated that it is an undisputed fact that the plaintiff's presence in India was miniscule. The product of plaintiff was not available in the market and plaintiff was supplying only to one spa in Rishikesh. The question of arising of confusion among the common customers thus did not arise. Spa in Rishikesh where the product of plaintiff is used is not a common customer. Spa is a known spa which caters to the need of high end customers and it is evident that the owners of spa, despite availability of many other similar beauty products in India, are using particularly costly products of plaintiff, only because they know about the product of the plaintiff, thus there is no question of confusion as far as owners of spa is concerned. The product of the plaintiff was not available in the market at any shop. Under these circumstances, the question that the defendant was making an effort of passing off its product as that of plaintiff did not arise. It is not the case of plaintiff that defendant has made any effort to export its products to any person representing that this was product of the plaintiff thus; it is not a case of passing off.
The issue of confusion even otherwise did not arise because the defendant's product clearly mentions that it is a product of 'Dabur', though the font of 'Dabur' is smaller than the font of “Uveda” but the defendant could be told to make the two fonts equal so that 'Dabur' is written on the product is equally prominent. It might appear that the defendant was inspired by using the word “Uveda” because of this word is associated with “Veda” and the plaintiff has prior registration of word “Aveda” as a trademark in its name and ultimately the Delhi HC might conclude that use of word “Uveda” amounted to infringement of the trade mark of the plaintiff but mere prima facie case is not sufficient to grant an interim injunction. However, to meet the ends of justice the defendant was directed that it would use the word “Dabur” more prominently and in a larger font as UVEDA on all future packaging of its cream, and the defendant is directed to maintain an account of sales of all its products under the mark “Uveda” so that if ultimately incase, the Court upholds the right of the plaintiff to claim damages from the defendant the damages can be determined.
Pine Labs Pvt. Ltd v. Gemalto Terminals India Pvt. Ltd and Ors.
In this case, while deciding a dispute relating to the ownership of the copyright, the Delhi HC explained the concept of assignment of copyright in detail. The Delhi HC observed that the assignment of copyright is one of the modes of acquisition of title on a copyrightable work. The assignment of copyright can be made under the provisions of the Copyright Act and can be subject to several limits which the copyright owner can impose at the time of entering into an assignment agreement. As the Copyright Act is protective legislation because it protects the interests of the authors, the statute itself provides the limits on the interest passed at the time of assignment if the assignment is silent on territoriality, time limit etc.
The Delhi HC stated that there are two types of agreements, one being assignment and the other being an agreement to assign. One being assignment of existing work and the other being assignment of future work. Assignment of copyright in existing work can pass right, title and interests in the copyrighted work either absolutely or partially. The said assignment is subject to covenants entered into by the parties which are determinative factors as regards the absolute or partial interest in the work.
The other agreement is the agreement to enter into assignment or agreement to assign future work. The law as it emanates from various judicial authorities and English law on the subject recognizes marked differences between the two kinds of agreements.
The basic difference in both kinds of assignment is that in the actual assignment, the interest, whether absolute or partial, passes along with the beneficial interest. On the other hand, the agreement to assign or other vernacular for the same being 'assignment in equity' exists independent from the actual assignment. The said agreement is termed as 'equitable assignment' due to the reason that the said assignment is such which passes rights and interests in equity to the assignee with the assignor/author retaining beneficial rights. This generally happens in commissioned works where the parties enter into agreement to assign future works. The equitable assignment exists in cases involving the agreement to assign future work and equitable assignment generally flows from contractual relations where work is commissioned.
The Delhi HC further discussed the status of the right of equitable owner vis-a-vis legal owner. The relation between the equitable owner and the first owner is that of a beneficiary and of a trustee. The equitable owner has a legal right of enforcement by way of specific performance or declaration asking for vesting of the copyright title. The Delhi HC quoted Copinger for explaining the relation between the two owners:
“5-183. Rights as against legal owner. By definition, except as against a purchaser of the legal title for value without notice, the equitable owner has a right to an assignment of the legal title which may be enforced by a decree of specific performance or perhaps an order vesting the copyright in him.”
The Delhi HC further stated that the said concept of equitable assignment is not new to our Indian copyright jurisprudence and the same has been recognized by a Single Judge of this Court in Sunil Aggarwal and Anr. v. Kum Kum Tandon and Ors. wherein the court stated that even in the absence of assignment in writing, equitable assignment is permissible.
Hence, it can be inferred that an assignment in equity by its very nature is a creation of equity and is unaffected by statutory assignment. Section 19 imposes several prerequisites and conditions which operate on an assignment as per the provisions of the Act. The assignment in equity is based on the intention of the parties whether express or implied and is unfettered and unbridled by the provisions of Section 19.
Authors:
Rahul Goel (e-mail: rahul.goel@sethdua.com) is a Partner and Sushil Mehta (e-mail: sushil.mehta@sethdua.com) is a Senior Associate with Seth Dua & Associates, Solicitors & Advocates, India