Analysis: Trademark Infringement in Naming Products in Light of Divergent Precedents

Reading Time: 6-8 minutes

By: Tamanna Gupta, Student, RGNUL Punjab.

Introduction

Recently, the tussle between two leading conglomerates, Emami Ltd & Hindustan Unilever Ltd. (HUL) hit the headlines. In Hindustan Unilever Limited v Emami Limited (2020), Both the companies contended that the trademark of the phrase “Glow & Handsome” belonged to their respective organization. The row over the trademark began when HUL rebranded its skin lightening products in light of anti-racism protests. HUL removed the word “fair” from its skin lightening creams, replacing it with the word “glow”, thus rebranding the products as “Glow & Lovely” & “Glow & Handsome”. While HUL claims that it applied for the trademarks way back in September 2018, Emami claimed ownership of the trademark. However, the court denied relief to Emami stating that ‘prima facie’ it could be discerned that HUL applied for the trademark first, thus it has a right over using the phraseology for marketing, etc.

Several claims regarding Trademark Infringement under Section 29 of the Trademarks Act, 1999 have reached the court in recent times, which has led to an ambiguity in the criteria for deciding claims involving trademark infringement & deceptive similarity. While several tests have been laid down both nationally & internationally, the haphazard approach of the court in deciding the rights of the prevailing party with respect to use of trademark has led to complications, leaving the parties in a lurch as to the proper recourse. This article analyzes the divergent precedents laid down by the courts, further suggesting compliance with international precedents in order to present a unified stance in cases involving trademark infringement.

Laws Governing Trademark Infringement

In the Indian Context, the Trademarks Act, 1999 governs the disputes arising due to claims over trademark infringement. Section 2(h) of the Trademarks Act, 1999 defines “deceptively similar”, stating that a particular trademark shall be deemed to be deceptively similar in nature to another if there is a close resemblance between the two that is likely to deceive consumers or cause confusion amongst the consumers regarding the two. Furthermore, Section 29 of the Trademarks Act, 1999, under Clause (2) lays down the requirements for “Infringement of Registered Trademark”, stating under Section 29(2)(b) that similarity to another registered trademark is a ground for infringement. 

The Indian Trademark law falls in line with the acts governing common law countries, as can be ascertained from the provision regarding trademark infringement laid down under Section 10(2)(b) of the Trademarks Act, 1994 of the United Kingdom, that states that “similarity” is a ground for trademark infringement. In Australia, The Trademarks Act, 1995defines “deceptively similar” under Section 10 of the act, the definition in consonance with the Indian act. Despite such a watertight compartmentalized definition in the Indian Context, courts find themselves at sea when deciding claims regarding trademark infringement, due to varying precedents in cases involving deceptively similar trademarks & trademark infringement.

Conflicting Precedents & The Paradox of “Deceptively Similar”

When it comes to trademark infringement cases that are resolved by the courts, the court mainly has to deal with two categories of cases-

1. Cases wherein both the goods/services/products have a similar/identical name but both conflicting companies cater to different consumer base.
2. Cases wherein both the goods/services/products have a similar/identical name and the companies also work in the same line of business/ have the same consumer base.

In cases involving “deceptively similar claims”, but with companies working in different lines of business, or serving a different consumer base, the courts have laid down a pretty uniform interpretation. In the case of AMF Inc. v Sleekcraft Boats (1979), the plaintiff, involved in sale of boats meant for recreation, owned the trademark “Slickcraft”, while the defendant, dealing with sales of high speed performance boats, used the mark “Sleekcraft” for commercial purposes. While the court acceded to the fact that the name of the products sounded similar, the court stated that the two types of boats served substantially different markets, thus taking this factor into consideration, before ultimately deciding against the respondents. Thus, the jurisprudence regarding whether the businesses serve the same consumer base also came into play, which led to easy disposal of cases wherein the market was completely divergent from one another. However, most claims involving trademark infringement involve companies serving the same clientele, which leads to the question of which party should be given precedence.

In cases involving a similar/identical name and companies working in the same line of business, the courts have laid down various precedents. In the case of M/S Lakme Ltd. v M/S Subhash Trading (1996), involving an infringement claim by petitioner company “Lakme”, a cosmetic giant, against the respondent for using the mark “LikeMe”, and selling cosmetic products, the court stated that both the marks were “separate marks”, and do not cause confusion, despite the fact that both catered to the same target consumer base. Similar ratios were stated in the case of SM Dyechem Ltd. v Cadbury (India) Ltd. (2000) & M/S Allied Blenders & Distillers Pvt. Ltd. v Govind Yadav & Anr., wherein arguments regarding the fact that similar pricing, packaging & even the name of the product was likely to cause confusion amongst the “same consumer base”, were dismissed by the court. 

However, the court laid down a contrasting decision in the case of Cadila Health Care Ltd v Cadila Pharmaceutical Ltd (2001), wherein the plaintiff marketed medicines by the name of “Falcigo”, while the defendant sold medicines under the name “Falcitab”. Taking note of the fact that both the drugs were used to cure the same disease, the court held the marks to be phonetically & deceptively similar. The court also stated that due to the diversified population of the country, and factor such as illiteracy, confusion regarding the said products is likely to arise amongst the masses, thus holding them to be “deceptively similar”.

Haphazard Application of “Test of Likelihood of Confusion”

The test of “likelihood of confusion”, literally means analyzing both the trademarks, to find out whether any likelihood of confusion between the consumers is possible, which might lead to a consumer mistaking one product as the other and vice versa. While the term “likelihood of confusion” is not defined under the Trademarks Act 1999, several courts have laid down jurisprudential principles as to the components of the test. In the case of Frisch Rests Inc. v Elby’s Big Boy (1982), the court laid down several factors that could lead to an inference regarding the likelihood of confusion. The court stated that factors such as relatedness of goods or services marketed, likelihood of expansion of product line, and marketing channels used have to be taken into consideration, in order to decide claims involving trademark infringement. 

However, Indian Courts in most cases has not taken the aspect of “similarity of business” into consideration, rather relying solely on factors such as the appearance, spelling and phonetics of the trademarks in question. It can be inferred that the Indian jurisprudence & precedents are restricted to the trademark in question, completely disregarding external yet important factors such as consumer base, marketing & expansion of product lines. However, with the rise of claims involving trademark infringement, the direction in which Indian Courts proceed is yet to be ascertained.

Concluding Remarks

With the rise of disputes involving Trademark Infringement in the Indian Context, it is imperative that Indian Courts should also expand its horizons and expand factors taken into consideration while applying the “test of likelihood”, in cases involving trademark infringement. While the Indian jurisprudence in this context is yet to evolve, the Indian courts can also give wide berth with regards to inclusion of factors in applying the “test of likelihood” in resolving claims involving trademark infringement & deceptive similarity of trademarks. 

By: Tamanna Gupta, Student, RGNUL Punjab.

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Quantum Leap: Analysing the Transition from Traditional Institutional Arbitration to Online Dispute Resolution due to the COVID-19 outbreak

By-Tamanna Gupta, Student, Rajiv Gandhi National University of Law, Punjab.

Reading Time: 6-8 minutes

Introduction 

The onset of the COVID-19 (Coronavirus Disease) pandemic, which has disrupted economies worldwide, led to severe financial strain, and has led to the imposition of lockdowns worldwide, has left no domain of life unscathed. The Arbitration community has also faced several challenges due to the pandemic. The pandemic has forced several arbitral institutions to alter long-standing modes of functioning, shifting to virtual platforms to perform functions that were traditionally performed at the seat of the dispute concerned. While ad-hoc arbitration proceedings have witnessed considerable changes in lieu of the pandemic, a dramatic transition in institutional arbitration proceedings has been observed due to the pandemic.

A United Front: Joint Statement by International Arbitral Institutions 

In a statement issued by 13 major International Institutional Dispute Resolution Centers, including signatories such as International Court of Arbitration (ICC), Singapore International Arbitration Centre (SIAC), Hong Kong International Arbitration Centre (HKIAC), amongst others, major concerns raised by stakeholder parties & tribunals affiliated to or dealing with the institutes were addressed. The arbitral institutions jointly proclaimed their aim to support the continuation of stability and foreseeability in arbitration proceedings, by way of several measures, including speedier disposal of pending cases, without compromising on the rights of the parties to be heard in a fair and reasonable manner.

The Legality of Online Disputes Resolution

While it can be ascertained that the major institutes of arbitration have rapidly adapted to the change in circumstances, it is important to analyze the legality of the transition to Online Dispute Resolution (ODR) in light of the numerous challenges it raises. Article 2 of the United Nations Commission on International Trade Law (UNCITRAL) Arbitration Rules states that any notice for arbitration, including any notification, communication or proposal, is deemed to have been received if it is “physically delivered” to the addressee at his or her habitual residence. This clause stands as an exclusionary clause since no addition for electronic transmission of notices has been made. 

However, the United Nations Commission on International Trade Law (UNCITRAL), in its 46^th Session (2013), adopted the Rules on Transparency in Treaty Based Investor State Arbitration, wherein Sub-clause (2) states that dissemination of the Rules on Transparency in Treaty Based Investor State Arbitration must be done, both physically and electronically, thus acquiescing to the fact that electronic and online dispute resolution is an emerging trend, which shows no signs of subsiding in the recent future.

 It was stated by the Supreme Court in the case of State of Maharasthra v Dr. Praful B. Desai (2003) that video conferencing is an acceptable method of recording evidence in witness testimonies. Thus, ODR, which is based on video conferencing, is a conducive method for resolving disputes, especially in the COVID-19 context. 

Paradigm Shift: The leap from Institutional Resolution to Online Dispute Resolution 

While Online Dispute Resolution (ODR) as a mechanism for dispute resolution was fairly common in the pre-pandemic scenario, the extent of reliance on the same has increased exponentially. Earlier, only certain circumstances such as the physical impossibility of appearance, or electronic transmission of evidence warranted virtual or video-conferencing, however, in the present stage, virtual proceedings, even at crucial stages of the case have become a “norm” rather than the “exception”. Several institutions have released an organizational response, clearly demarcating an action plan for further disposal of cases. Several remarkable characteristics mark the advent of the Online Dispute Resolution Process initiated by various institutes- 

1. Shutdowns, Timings, and Disposal of Cases

Complete shutdowns marked the Modus Operandi of most of the Institutions, wherein employees from London Court of International Arbitration (LCIA), International Chamber of Commerce (ICC) & Singapore International Arbitration Centre (SIAC), etc. shifted to remote arrangements temporarily. Noting the easing of several restrictions during the subsequent stages of the lockdown, organizations such as Judicial Arbitration & Mediation Services (JAMS) announced a systematic and phased re-opening of offices, by June-July, 2020. However, several precautions have been taken such as installing Plexiglass screens, proper sanitization and cleaning at regular intervals, reduction in the number of cases being resolved daily in order to maintain social distancing, etc.

2. General Case Administration, Meetings & Hearings 

Most institutions have allowed the filing of notice for institution of arbitration proceedings via email/online modes of communication in light of the pandemic, while a few institutions such as Deutsche Institution Germany (DIS) depart from the status quo, continuing to accept hard-copies of requisite documentation, utilizing postal and courier services. The dissemination of information regarding changes instituted by various institution varies from case to case, with some institutions updating their website regarding the same.

3. Guidance, Hearing Service Providers & Helplines

In order to safeguard the various interests involved during the entirety of the arbitration process, steps have to be taken in order to ensure that maximum security is maintained. In order to serve the dual objectives of privacy & security during proceedings, several arbitral institutions have released “Guidance Notes”, which lays down measures for compliance in order to maximize security and minimize risks during the proceedings. 

International Chamber of Commerce (ICC) has released a Guidance Note, specifically taking into consideration conditions created due to the COVID-19 pandemic, also stating suggested clauses to inculcate in case cyber-security is involved. Furthermore, even language services are being provided in order to maximize the output of arbitration proceedings during the pandemic. 

4. Conduction of Events & Conferences

Due to the onset of the pandemic, several major arbitral events stood cancelled in light of the restrictions imposed due to lockdowns, etc. Other events were postponed to the year 2021, contingent to change in circumstances. Many institutes took to conducting their annual events and seminars relating to arbitration online, specifically discussing methodologies of adaptation in the COVID-19 context. Some examples of such enterprising arbitral institutions include Hong Kong International Arbitration Centre (HKIAC) that conducted a webinar series, Stockholm Chambers of Commerce (SCC) conducted Online Seminars, Conflict Prevention & Resolution (CPR) conducted a webinar on Alternative Dispute Resolution in the COVID-19 context etc. 

 Probable Way Forward & Concluding Remarks

“Justice Delayed is Justice Denied”

It is imperative that the COVID-19 pandemic is increasingly pressurizing the arbitration community to step up to the plate, regarding which the top-tier institutions of arbitral excellence have responded well. The arbitral community has systematically & swiftly adopted technologies for facilitating ODR, or virtual hearings. Three leading arbitration bodies, the Arbitration Place, Maxwell Chambers & International Disputes Resolution Centre (IDRC) have already formulated an alliance to facilitate hearings in conformity with COVID-19 guidelines. Many steps are being taken by other institutes swiftly, in order to dispose off the pending cases swiftly, and ensure no harm ensues to the parties due to the onset of the pandemic.

The current crisis has opened the doors of ODR for various stakeholders & arbitral institutions on a global scale. While ODR practices were prevalent even before the advent of COVID-19, the onset of the pandemic has speeded up the popularity of ODR as a mode of dispute resolution. While several concerns regarding ODR arise, such as cyber-security, data privacy, confidentiality, etc., major stakeholders are formulating guidance notes & rules to counter the same. In order to ensure minimum loss of time, technology has to be incorporated in the dispute resolution process on a large scale. Concerned stakeholders, such as arbitrators, judges, counsels, & parties must rapidly adapt to the advent of ODR, which will prevail even in the times to come, marking the future of dispute resolution.

Author: Tamanna Gupta, Student, Rajiv Gandhi National University of Law, Punjab.

Trademark Protection to Fictional Elements from Television Shows: An Emergent Reality

Author: Tamanna Gupta from Rajiv Gandhi National University of Law, Punjab.

Reading time: 8-10 minutes.

Introduction

Due to the increasing commercialization of television series & cinematic experiences, several new challenges in protecting the fictional elements presented in such works emerges. Television series & films profit from displaying such characters not only as a part of visual presentation, but also as a part of advertisements, franchising, feature films, mobile apps, outreach programs etc., thus it is no surprise that private entities often try to copy the themes presented in such shows in order to increase their outreach & appeal. Several courts have ruled that trademark protection extends to characters or elements in the “fictional” form also. This article analyzes the decision of the court in Viacom International v IJR Capital Investments (2018)(Hereinafter, Viacom’s Case) & other cases, in light of established precedents, in order to analyze to what extent a trademark over a “fictional entity” can be claimed.

The Tussle over Fictional Elements

According to the Lanham Act (1946), the term “trademark” includes any word, name, symbol, device or any combination thereof”. Trademarks are generally words, phrases, logos and symbols used by producers to identify their goods.  However, shapes, sounds, fragrances and colors may also be registered as trademarks, as has been stated by the court in the case of Qualitex v. Jacobson Products Co. Inc.

However, the court has broadened its horizons when interpreting the term due to need for distinctive analysis. In cases involving fictional entities, it has been stated in the case of Union Nat’l Bank of Tex., Laredo v Union Nat’l Bank of Tex., Austin (1990) that while registration of a trademark can be construed as a “prima facie” evidence of ownership, ownership can be established by “use” of the trademark rather than registration. In most cases wherein trademark infringement of fictional elements is alleged, the prior use of the said element is what aids the aggrieved party. In the case of Viacom International v IJR Capital Investments (2018), the court dealt with the question regarding whether specific elements within television shows, other than the title of the shows, receive trademark protection. The court concluded in the affirmative, stating that trademark protection may be granted to certain characters, places, & elements of an entertainment entity.

Also Read:

https://atomic-temporary-162775153.wpcomstaging.com/2020/08/26/analysis-glow-and-handsome-trademark-dispute/

Laws Governing Trademark

In India, The Trademark Act (1999) is the law governing Trademarks. Section 2(zb) of the Act defines trademark as follows- “Trade mark” means 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 colors.

Furthermore, the act provides for the definition of various types of Trademarks, such as Certification Trademark, defined under Section 2(e), Collective Mark, defined under Section 2(g), Registered Trademark under Section 2(w), Well-Known Trademark under Section 2(zg) of the act. Furthermore, Section 2(2) of the act lays down guidelines with regards to the use of the trademark.

In the United States, The Lanham Act (1946) governs Trademarks. Section 2 of the act defines trademark as a mark used in commerce, or registered with a bona-fide intent to use it in commerce. According to the act, the mark’s eligibility for trademark protection is limited by the application of the categories laid down under the act. The act also lays down detailed guidelines for registration, certification, renewal of registration, appeal, and other procedures under the act.

Juxtaposition of Owners Right vis-à-vis Other Claimants

In the case of Warner Bros., Inc. v. Gay Toys, Inc. (1981), it was held that trademark protection may be accorded to the specific ingredients of a successful T.V. Show. The court stated that trademark protection extends to a case where “General Lee”, an orange car with a confederate flag emblem that was “prominently featured” on the successful television show, “The Dukes of Hazzard”, thus according protection solely on the basis of featuring on a show.

In the Viacom’s case, Viacom sued IJR Establishments due to their alleged trademark infringement of the “Krusty Krab”, a fictional restaurant featuring in the show “SpongeBob SquarePants., after IJR proposed to open a seafood restaurant with the same name, further filing an intent-to-use trademark application with the name “Krusty Krab”. Viacom had not previously registered the “Krusty Krab” trademark. The court stated that Viacom had rights over the trademark, based on the following considerations-

• Viacom established its “use” of the trademark by way of licensing & sales of products involving the fictional “Krusty Krab”.
• Viacom proved that “Krusty Krab” had acquired distinctiveness, and its name can be sourced back to the show of “SpongeBob SquarePants”, which was produced by Viacom.
• Likelihood of Confusion could arise by IJR’s subsequent use of the trademark.

Interestingly, the court has broadened its horizons regarding “use” of trademark, after its decision in the case of Paramount Pictures Corp. v. Romulan Invasions (1988) (Hereinafter, Paramount Pictures Case) wherein Paramount Company claimed trademark protection regarding “Romulan Mark”, a fictional alien race in the popular “Star Trek” series. The “Romulan Mark” was featured on television, in movies, books, licensed plastic spaceship models as well as figurines & dolls, puzzles, games, etc. The Trademark Trial & Appeal Board (T.T.A.B.) concluded that the mark was merely “used from time to time” and held that Paramount failed to establish any clear use of the term “Romulan Mark” to distinguish its services. Despite the clear use of the “Romulan Mark” in various contexts, the court denied the claim of trademark infringement, which it subsequently broadened in the present context, as could be ascertained from the decision of the court in Viacom’s case.

The Road Ahead for Protection of “Fictional Elements” 

From a perusal of the abovementioned judgments, it can be ascertained that even in cases wherein the party fails to register a trademark based on the television show aired, protection can be accorded if a party can prove consistent “use” of the trademark. However, the jurisprudence regarding the interpretation of “use” is riddled with subjectivity, as can be ascertained from the Paramount Pictures Case, wherein despite showing clear use of the trademark, the appellant Paramount Pictures Corporation was denied relief. 

However, with the increase in commercialization of television series, the courts are taking into consideration broader factors such as the use of trademark, in addition to primary factors such as appearance & distinctiveness of the mark. Thus, it can be ascertained that it is imperative to widen the ambit of trademark infringement cases with the inclusion of fictional entities in the gamut, in order to ensure that the trademark owner rights are not infringed. Only with the inclusion of wide ranging tests such as the test of “use” can the rights of such parties be redressed, which shall remain an issue of contention in the times to come.

Conclusion

With the emergence of commercial ventures using fictional entities from television, there is an increasing need for television and online platforms to duly register their characters & symbolisms as trademarks. However, even if a fictional character is not registered with the trademark office, it does not spell a death knell on the rights of the creator of the character, etc. Fictional entities are now accorded equal protection vis-à-vis other entities. In the present day and age, various businesses attempt to copy themes, colors, and patterns that give a layperson the impression of a resemblance with a particular Television program. In light of these factors, there is a need for creating a balance between the rights of the owner/creator of the character accorded trademark, and that of third parties.  However, with an influx of litigation regarding protection to fictional entities, it can be inferred that the owner of the fictional entities have an upper hand in the present scenario. Only with a proper balance or “harmonious construction” of the conflicting interests of various stakeholders, such as creators, owners, and users, can a middle path be reached in the present state of affairs.

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Author: Tamanna Gupta, Student, Rajiv Gandhi National University of Law, Punjab.

Analysis: Delhi HC Judgement on Termination of Pregnancy

Reading time: 2-3 minutes.

The High Court of Delhi established precedence by permitting termination of 25-week foetus diagnosed with congenital anomaly. The Hon’ble court enunciated that “rigours of section 3(2) can be relaxed where the conditions of foetus is incompatible with life”.

MTP (Medical Termination of Pregnancy) Act, 1971 is the statutory law that governs the termination of pregnancy. With another court granting permission to terminate post 20-week foetus, the long-drawn debate over the much-needed amendment in the MTP Act has once again become the bone of contention.

In the light of the precedence established by Delhi Court, this post will attempt to briefly explain the MTP act and enunciate the loopholes of this 48 old law on termination of pregnancy.

What exactly does the MTP Act say?

Medical Termination of Pregnancy Act was passed in the year 1971 in the light of rising frequency and maternal deaths due to lack of proper amenities. MTP regulates the abortion provisions. Some of the hallmarks of MTP act are:

• A doctor can perform abortion if the pregnancy is harmful to pregnant woman’s life or mental health. Or if there is good chance that delivery of the child would seriously affect her mental and physical being.
• Pregnancy can be terminated by medical practitioner: (a) where the length of the pregnancy does not exceed 12-weeks (b) where the length of the pregnancy exceeds 12-weeks but does not exceed 20-weeks, only in special circumstances.
• Pregnancy may be terminated in a hospital established or maintained by government, or a place approved by the government.

What are the problems with this law?

To begin with, this Act puts a bar on termination of pregnancy transcending 20 weeks. The reason behind this was that it was medically dangerous at that time (in 1971) to terminate pregnancy beyond that maturity period. However, medical facilities have advanced significantly since then and now it is possible to have safe termination of pregnancy beyond 20 weeks.

Also, this act offends the feminist perspective by allowing healthcare providers to have the final say on abortion instead of the concerned woman herself. It creates an environment where women feel like being at the mercy of their healthcare providers.

What is the current status of this law?

In 2014, the Ministry of Health and Family Welfare released a draft of the MTP (Amendment) Bill, 2014. It proposes changes that could initiate a shift in the focus of the Indian abortion discourse from healthcare providers to women. The Bill also expands the base of healthcare providers by including mid-level and non-allopathic healthcare providers.

Additionally, the clause extending the gestational limit could trigger ethical debates on eugenic abortions and sex-selective abortions. Stated simply, it means that this bill seeks to address the shortcomings of the previous law by empowering women to take decision about the termination of her pregnancy even beyond 20 weeks. This bill must be enacted soon.

In conclusion…

The High Court of Delhi has given a progressive judgement and reiterated the need for amendment in the MTP Act. The said law is outdated as explained above. The government has taken a positive step by proposing an amendment in the law. We hope to see the realization of this amendment soon.