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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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.

IPR laws in India

Reading time: 8-10 minutes.

The United States Trade Representative (USTR) kept India in its Priority Watch List in its Annual Special 301 Report released on 29 April 2020. As India persists to be on this list, it becomes very imperative to know about what USTR is and why the Annual Special 301 Report released by it has its value. The United States Trade Representatives is a specialized group of people having great deal of experience in trade and related functionalities over varied region of the globe. The United States believes in creating global market for its players. The U.S. Trade Representatives is vested with the power to coordinate, direct and monitor the United States’ trade with other economies. It can negotiate directly with the governments of different countries to enter into a propitious trade agreement.

The USTR after its annual review and analysis of the status of the Intellectual Property Rights protection in the US trading partner nations across the world, prepares and presents a report i.e. Special 301 Report. The report reveals the competency and effectiveness of the protection of IP rights of the trade partners. After all, it is to expose the policies and laws, which lacks to provide adequate protection of IP rights to the US based manufactures, companies, investors and inventors. Furthermore, it also gives suggestions to those countries, which fails in protecting the IP rights and are proving to be downturn for the United States.

Considering that, India is a part of “Priority watch list” in the 2020 report; it is requisite to throw light on this listing. The rationale given by the agency for placing India in the Priority watch list is that India has not been able to make considerable advancement in its IP set-up together with the new intricacies, which ultimately was leading to unfavourable conditions particularly for the right holders of US in India. The report points out that, innovators in India face perplexity in receiving and enforcing patent right in the country.

As per the report, the procedures for mandatory licenses, patent revocation and the narrow patentability laid down in patent laws of India, proves to be a trouble element. Pharmaceutical sector has been kept on the centre of the report for India. The patent issues continue to be of particular concern in India as long-standing issues remain for innovative industries and patent applicants continue to confront costly and time-consuming pre & post grant oppositions, long waiting periods to receive patent approval, and excessive reporting requirements. The inadequacy of patent laws, has kept the pharm sector unyielding. In addition, the administration too has been held responsible for this steadiness, whether it be in terms of coordination among several agencies, enforcement mechanism or the dispute settlement bodies. The USTR also hints at the serious issue of Piracy in India, it refers the OECD Trends in Trade in Counterfeit and Pirated Goods report 2019, which ranked India as one of the top five economies for fake goods. Nevertheless, USTR has recognized the progress made by India in the field of IP protection through amendments in the existing rules and coming up with some new sets of policies and laws, which suits the challenges of modern world.

IPR laws in India

India has done so far a lot to protect and manage Intellectual Property Rights. Here Intellectual property is classified into Patents, Trademarks, Copyrights, Industrial Design and Geographical indication. These intellectual properties except Copyright are administered by the Comptroller General of Patents, Designs and Trademarks which is under the control of the Department  of  Industrial  Policy  and  Promotion,  Ministry  of  Commerce  and  Industry. Copyrights and its related issues are regulated by the Ministry of Human Resource and Development.

India is a signatory to Trade Related Aspects of Intellectual Property Rights (TRIPS), which is the most vital and compendious agreement on Intellectual Property Rights. It lays down minimum standards for protection and enforcement of IP rights in member countries which are required to promote effective and adequate protection of IP rights with a view to curb impediments to international trade.

Copyrights:

To begin with copyrights, The Copyrights Act, 1957, regulates it. Registering for copyright is done through the procedure established by this enactment. In India, copyrights can be availed for artistic works, dramatic, musical, literary works. Some major amendments were made in the Act in the year 2012. Registration under the Copyright act works as an evidence that the person in the register is the original owner or author of the work. Infringement of copyright avails the owner to some remedies like damages and injunction of the activity. Registration of Copyright protects the owner of the work from copying of his work without having prior consent from him. Copyright protection commences the moment a work is created, and its registration is optional. The protection granted by this statute is not limited only to India but it extends protection in several countries, this is by the virtue of Berne Convention of which India is one of the member. The period of allotment of copyright varies for different type of works, like for literary and musical it extends to lifetime of author plus fifty years. Anonymous works and works of International organization are given copyrights for fifty years from date of its publication.

Trademark:

The Trademarks Act of 1999 govern registration of Trademarks in India. This act was amended as to make it TRIPS compliant. A registry of trademarks has been established by the act to register and grant protection of the trademarks, which is headed by the Registrar of Trademarks. “Mark” as defined under the Trademarks Act includes “a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or, combination of colours, or any combination thereof.” Any mark, which is fit for categorizing as a graphical representation and in some manner indicates its connection with trade, is entitled to get registered as trademark. The Act facilitates registration of trademarks for goods as well as services. Registration of trademarks that are counterfeit of some other trademarks are not permitted. An appellate board has been set up for speedy disposal of appeals and applications.

Patents:

Patents in India are subject matter of The Patents Act of 1970, the last amendment to this act was made in the year 2005 to make it TRIPS compliant. The term “invention” is defined under Section 2(1) (j) of the Patents Act as “a new product or process involving an inventive step and capable of industrial application”. Recognition of product patent protection under this act is provided for 14 years except for food, pharms and chemical products for which the protection is only for 7 years. The patent is to ensure commercial returns to the inventor for the investment in whatsoever form he has made for making a new product. Three types of patents are granted by this act, Ordinary patent, Patent of Convention and Patent of Addition.

Design:

The Designs Act of 2000 incorporates the minimum standards for the protection of industrial designs, in accordance with the TRIPS agreement. The act defines design as “The features of shape, configuration, pattern, ornament or composition of lines or colours applied to any ‘article’ whether in two or three dimensional forms, by an industrial process which appeals to the eye can be registered under the said Act.” To acquire registration of design under this act, the design must be applied to an article. In other words, a mere painting of a natural scene or its presentation on paper is not entitled for registration under this act. Application for registration can be made only when it is not published previously in any country and is not contrary to public order and morality.

Salient features:

• Patent laws in India provide for both the product as well as the process of making the product.
• The Patent Act has a provision which allows secrecy in inventions related to defence purposes.
• The recent amendment in the copyright laws has given the right to store. This right is available for artistic works, cinematography and sound works. This right includes “storing of it in any medium”.
• The trademarks act has enhanced the protection of well-known trademarks. The proprietor of well-known mark will be entitled to prevent use of identical or similar trademark in connection with goods or services.
• Under section 21 of the Copyright Amendment Act 2012, the author has an option to relinquish his copyright by way of public notice.
• The Design Act, 2000 uses Locarno classification in which the classification is based only on the subject matter of design. Under the previous provisions, the classification was made on the basis of the material which has been used to make that material.
• Getting GI tag registered in the name of an individual is not possible, but any association of individuals, producers or any authority recognized by law can apply for it. Also, there is no expiry for GI tag.

Critical analysis:

Having just a strong law for IPR will be of no means if there is no strong enforcement mechanism. Absence of strong and decisive mechanism fails in providing remedy and thereby causes negative effect on the investment and Research and Development in the country. European countries have a much rigid enforcement mechanism of IPR, hence they are easily able to attract much more investor as stricter entry ensures more returns and it makes new entry into the competition uneasy. Authorities responsible for providing remedies against infringement of IPR lacks expertise and training in IP. Imparting training is the first step which should be taken to strengthen the machinery of IPR. Delayed processing of applications and others actions is one of the major reasons for short enjoyment of intellectual property rights by the holders.

Scope of improvement:

• Indian IP laws have by far evolved a lot, it has many provision for remedies available in case of infringement of IPR, but lack of effective enforcement is the reason which hinders the growth of IP.
• Indian IP laws still does not incorporates the international best practises in field of IPR.
• Piracy is one of the major IPR violation which occurs in India, there is an urgent requirement of strict anti-piracy laws to limit this menace.
• In 2015 the Controller General reported that the patentability requirements of our country are below international standards. Efforts must be made to bring the standards at par with the international standards.
• Inadequate and inefficacious enforcement of remedies and penalties encourages the wrongdoers to commit IPR related offences.
• There is a need to create awareness regarding offences, crimes and remedies of IPR. In addition to that the police machinery should also be trained to deal with IPR crimes.

Conclusion:

In last two decades, Intellectual property rights have developed in India to such an extent that it has a large share in the economy. Laws and policies related to IPR exists in India since we achieved independence but after mid 90s the existing laws were amended and new set of rules were introduced to strengthen the regulatory system of IP. Protection of IPR is essential for trade and business in a modern economy. Since, there is a large scope of competition in our country, protection of IPR encourages fair practises and innovations. India has felt the need for protection of IPR and hence it has been a signatory of various international agreements and conventions. Recent judicial pronouncements and actions taken by other agencies shows that India is moving towards an economy with effective protection of IPR. No doubt, India has taken steps for improving IPR but yet many a steps needs to be taken in the coming years.

Author: Himanshu Chandrakar from Hidayatullah National Law University Naya, Raipur.

Editor: Shashank Shekhar from Central University of South Bihar.