With the emergence of high-profile lawsuits involving well-known companies, India's intellectual property sector has expanded substantially. Trademarks, being one of the most fundamental parts of intellectual property, are no exception. In India concerns involving trademarks is governed by the Trademarks Act, 1999(hereinafter, TM Act )which defines a Trademark as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours”[1] . The function of a trademark is to pinpoint the source of a certain commodity or service so that buyers can make an informed buying decision. Because India is a free market, it is critical for businesses to be able to safeguard their brand value and identity in order to win out the competitors and secure a favourable position. Trademarks aid businesses in obtaining brand recognition that the general public associates with quality and uses to make purchase decisions. Since a trademark is lucrative, its violation can cause financial harm to the trademark owner as a consequence of a loss of goodwill and brand value. It is always preferable to be cautious and prevent possible infringers from capitalising on a company’s brand goodwill and reputation.
As per Section 29 of the TM Act, Trademark is infringed when an unauthorized person uses a trademark which is identical to, or deceptively similar to a registered Trademark under the Act to provide a good/service associated with the authorised Trademark. It is pertinent to note that a mark should appear deceptively similar to an average person or regular intelligence .A proprietor of a Trademark registered under the TM act has the right to claim statutory remedy under civil law as well as invoke criminal proceedings. Through the Tribunal Reforms (Rationalisation and Conditions of Service) Ordinance 2021, the government recently dissolved the Intellectual Property Appellate Board (IPAB) which earlier used to be the body to deal with matters on Trademark infringement. The IPAB's powers have been delegated to the high courts of India, according to the ordinance. All original and appellate proceedings will be adjudicated by the Delhi High Court’s Intellectual Property Division. In the event that a civil suit is filed for trademark infringement, the court may grant the following remedies as defined under Section 135 of the TM Act:
1. Temporary/Permanent injunction
2. Damages for loss occurred due to the infringement
3. Account of profits earned from the infringement of the Trademark
4. Terminating all the services/ goods which use the unauthorized trademark. Preventing import or export of infringing goods is also an extension of this remedy. The Customs
Act of 1962, and the Intellectual Property Rights (Imported Goods) Enforcement Rules(2007), both provide for border enforcement against the entry of infringing goods in India. Customs officials can stop, seize, and confiscate infringing goods at the border under the IPR Rules. To enable border protection, the trademark owner must register his or her registered brand with customs by applying in the required manner, requesting that infringing imports not be permitted.
5. Cost of legal proceedings incurred as a result of the breach
Section 115 of the TM Act makes infringement a cognizable criminal offence for which the court can impose imprisonment for a period of 6 months to 3 years or a fine ranging from 50,000 rupees to 2,00,000 rupees, provided infringer has not acted innocently. However the officer(not below the rank of superintendent) should consider the opinion of the Registrar of Trademarks before undertaking arrest and seizure.
A person or a corporation can also be held liable for an infringement through the principles of Vicarious liability provided he had knowledge of the same and assisted in such infringement as per Section 114. According to this section, if a company commits an offence under Act then every person who is responsible for the company will be liable, except a person who acted in good faith and without knowledge of the infringement.
Infringement protection does not just apply to registered Trademarks, but also unregistered ones. However, in this circumstance, the sole remedy for protection against misrepresentation is that of a common-law one, known as ‘passing off remedy’. This remedy was recognised and pre-requisites were laid down to seek such a remedy in the case of Reckitt & Colman Products Ltd v Borden Inc[2] or the Jif Lemon case. In this case laid the essentials to claim remedy for passing off as follows:
1. “The goods or services have acquired goodwill or reputation in the marketplace that distinguishes such goods or services from competitors;
2. The defendant misrepresents his goods or services, either intentionally or unintentionally, so that the public may have the impression that the offered goods or services are those of the claimant; and
3. The claimant may suffer damages because of the misrepresentation.”[3]
Although passing off remedy is a relatively unexplored concept in India, Indian courts have recognized the Jif Lemon case and granted injunctions and monetary compensation for the same.
Despite the fact that there are several precedents in the legal realm that reaffirm the rules controlling trademark infringement, only a few have had a substantial influence on the legal sphere as a whole. These cases have underscored several critical indicators which have shaped the evolution of Trademark Infringement litigation and contributed substantially to the Trademark landscape as it exists today and made it more concrete.
1) Satyam Infoway Ltd vs Siffynet Solutions Pvt. Ltd [4]
The Supreme Court of India upheld the intellectual property rights associated with internet domain names. The appellant in this case had used the domain name “sify” as an abbreviation to their company name, Satyam Infoway and got the same domain name registered under Internet Corporation for Assigned Names and
Numbers(ICANN). The Respondent also used the same domain name “sify” as a representation of their company’s name and got it registered with ICANN , but only after appellant did. The appellant claimed that the respondent. The Respondent was allegedly attempting to pass off its services as those of the Appellant by utilising a deceptively similar term in its domain name, according to the Appellant. The appellant contended that this would cause confusion among relevant customers, who would mistake respondent's services for those of appellant. The respondents argued that a domain name cannot be considered to be a Trademark to pass off in the first place.
The court held that the domain name contains all the characteristics of a valid
Trademark and the consumers can be misdirected and deceived by domain name.(It is pertinent to note that the court did not mention that both were the same, and differentiated them on the mode of operation ).
Hence it would make sense to guarantee protection to a proprietor’s domain name to prevent loss of goodwill to his business. However this remedy is statutory one, but a passing off remedy under common law.
2) Astra-Idl Limited vs Ttk Pharma Limited[5]
In this case the Bombay High Court laid down clear cut to be considered while deciding if it is a case of infringement. The court observed that the effect on consumers should be considered to determine if it would cause deception in their minds to an extent where it affects their purchasing decisions. In this instance, the Court also established that the mere possibility of confusion is sufficient grounds for an infringement action to be filed; showing actual confusion is not essential in trademark infringement claims.
3) Wyeth Holdings Corp. And Anr. vs Sun Pharmaceuticals Industries[6]
In this case the court held that the test of probability of confusion does not apply to pharmaceutical products. Both of parties of the case manufactured a medicine for
Parkinson’s disease and plaintiff alleged that the defendant infringed his Trademark
“Pacitane” by producing a similar medicine to the same consumer base named “Parkitane”. The court acknowledged the same and granted an injunction and held that the test of probability of confusion does not apply here , rather the test of possibility of confusion does.
4) Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. and Ors7
In this case the Supreme court dealt with the territorial complexities surrounding Trademark infringement. The plaintiff had used registered the term “Prius” long before the defendant did, however in the global market. The court held that since the defendant has not gained sufficient goodwill in the Indian Market , there can be no confusion in the minds of the average Indian consumers. On those grounds the court ruled in favour of the defendant due to the lack of goodwill of the plaintiff in the domestic market.
5) M/s DRS Logistics Pvt. Ltd. and Anr. v. Google India Pvt. Ltd.[7]
This case brought to light the liability in intermediaries such as google in Trademark infringement. The plaintiff alleged that the search engine mechanism as employed by google which facilitates providing results based on keywords provided various results which employed the same keywords. They claimed that such use of the plaintiff's trademarks caused
a. consumer confusion about the source of the competitor's services, and
b. online traffic to be diverted from the plaintiff's website to that of the competitor/advertiser.
The plaintiff's allegation of confusion was backed by an affidavit from a consumer who was defrauded by a third party advertising under the plaintiff's brand while thinking he was receiving services from the plaintiff. While the defendant claimed that their service does not qualify as ‘use’ as required by the TM Act to constitute valid infringement , the court rejected the argument stating that the advertising revenue that google makes from facilitating such a search is enough to bring it within the ambit of ‘use’ as they clearly benefit from it . Under Section 29(6)(d) of the Indian Act, use of a trademark in advertising is explicitly considered "use" sufficient for infringement. The court also held that the visibility criteria as google claimed was essential was not necessary to violate a Trademark. Thought the court did not grant an outright injunction , they advised google to look into issues posed by the plaintiff and take due care of their search engine system of Keyword to aid in removing websites which potentially seek to misrepresent and Infringe Trademarks.
6) Sun Pharmaceutical Industries vs Cipla Limited[8]
In light of the given pandemic this case holds utmost relevance. The defendant had violated the trademark of the plaintiff and the court granted an injunction acknowledging the infringement . Defendant stated that, given the pandemic, the medications created were in great demand since they aid patients in achieving Covid relief and drugs having a one-year expiration date. The argument of urgency and public interest was rejected as having no relevance on the issue of trademark infringement and could in no way justify infringement by violating the plaintiff’s rights.
7) Phonepe Private Limited vs Ezy Services & Anr.[9]
The plaintiff claimed that the defendant's logo and use of the term "BharatPe" infringed on its registered trademark “PhonePe” and amounted to the defendant passing off their services as those of the plaintiff. As a result, the plaintiff requested a permanent order prohibiting such use. The court considered comparing the two logos as a whole as well as comparing the dominant part of them. The court referred to several cases and Section 17(2) of TM Act which states that Trademark is conferred upon the entire composite mark and does not confer within it , the right top individual parts within the mark. This is more commonly known as the “anti-dissection” rule.
The Delhi High court also considered the “dominant mark “test as held in M/S. South
India Beverages Pvt. vs General Mills Marketing Inc..The Court held that “while a mark is to be considered as a whole, importance or ‘dominance’ could be accorded to parts of a mark in the case of composite marks and where a particular element enjoys prominence with respect to other elements, it would be a ‘dominant mark’.” While as a general rule a Trademark is given for the whole logo the court should ascertain the prominent part of that logo and if the defendants conduct in anyway constitutes an infringement of the prominent part, the defendant can be held liable for an infringement. For that the court considered if “Pe” had a distinctive meaning of its own.
However the court rejected the injunction plea of the plaintiff as consumers will not be misled by the same because both operate on different domains . The consumers could make out the difference between the two and hence there is no damage to the plaintiff’s goodwill. The plaintiff pushed for charges at higher court challenging the appeal and withdrew it later.
8) Playboy Enterprises Inc v Bharat Malik[10]
The plaintiff had filed a case against the defendant, a Playway magazine publishing firm, seeking a permanent injunction. It was stated that the plaintiff's and defendant's publications are mostly sex-oriented, with information on current events, national interests, celebrity interviews, humour, and photographs of semi-nude models strewn throughout the infringing magazine 'Playway,' among other things. The plaintiff claimed that the use of the term "Play" from the “Playboy” mark was ill-motivated, unlawful, misleading, and even phonetically identical to the “Playboy” mark, resulting in a flagrant infringement of the plaintiff's registered trademark. The defendant was disallowed from using the trade name "Play" by the Hon'ble High
Court on the basis that the same word was the main and dominant of the plaintiff's Trademark. Court also identified that the defendant had clearly falsely represented to cause harm to the goodwill of the plaintiff.
9) Cadila Healthcare v Cadila Pharmaceuticals. Ltd[11]
This case laid down the important criteria for an passing off claim. The court laid down the factors to consider while deciding if a Trademark is deceptively similiar..
1. The nature of the mark;
2. The degree of similarity between the marks;
3. The nature of goods in whose respect the mark is being used;
4. The similarities in terms of nature, character, and performance with the trademark of the rival trader;
5. The class of purchasers who are supposed to be purchasing the concerned product;
6. The mode of purchasing;
7. Any other surrounding circumstance that contributes to the similarity index.
In conclusion, it is fair to say that India's trademark regime has progressed significantly. There are undoubtedly a slew of new legal issues regarding digital search engines, to put it that simply. Overcoming such obstacles, on the other hand, will simply strengthen the system to that level. With this framework in place, India will become a favourable and dependable location for intellectual property. As a result, we should expect a surge in not just international investments but also domestic businesses. With the current surge in start-ups, we can anticipate increased competition, and a strong trademark protection system can only serve to keep that rivalry competitive and authentic. It helps both customers and business owners. India has designated various nations as convention countries, granting Indian nationals the same benefits as its own residents. A person or corporation from a convention nation may apply for trademark registration in India within six months of filing an application in their home country. This can further favour business prospects.
Alternate dispute resolution is also growing with the respect to Trademark infringement. The effectiveness of the same can be capitalized upon to the maximum extent possible. The same is solidified in Hero Electric Vehicles Private vs Lectro E-Mobility Private[12] This decision confirms that IP disputes can be divided into two categories: those involving rights in rem, such as infringement and registration of IP rights, which cannot be arbitrated, and those involving subordinated rights in personam, which are granted solely through contractual or licencing agreements and can be referred to arbitration. This judgement is certainly a foreshadowing of what is to come.
[1] §2(z)(zb) Trademarks Act(1999). [2] Reckitt & Colman Ltd v Borden Inc, [1990] 1 All E.R. 873 [3] Id. [4] Satyam Infoway Ltd vs Siffynet Solutions Pvt. Ltd 2004 (3) AWC 2366 SC [5] Astra-Idl Limited vs Ttk Pharma Limited ,AIR 1992 Bom 35. [6] Wyeth Holdings Corp. And Anr. vs Sun Pharmaceuticals Industries 2004 (28) PTC 423 Bom. 7 Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. and Ors, AIR 2018 SC 167. [7] M/s DRS Logistics Pvt. Ltd. and Anr. v. Google India Pvt. Ltd [8] Sun Pharmaceutical Industries vs Cipla Limited 2007 (109) Bom L R 445 [9] PhonePe v. BharatPe, decision dated 15 April 2021 passed by the Hon’ble High Court of Delhi in FAO(OS) IA 8084/2019 [10] Playboy Enterprises Inc v Bharat Malik, 2001 IVAD Delhi 356 [11] Cadila Healthcare v Cadila Pharmaceuticals. Ltd 2001 (2) PTC 541 SC [12] Hero Electric Vehicles Private vs Lectro E-Mobility Private, 2021 SCC Del 1058
This article is written by Vikram Krishnan of Tamil Nadu National Law University.