Our Senior Associate, Urfee Roomi discusses “The Case of the Bois Locker Room and the Role of Intermediaries” Recently, the social media platform, Instagram, caught public attention for all the wrong reasons when obscene messages shared among members of a private chat group called ‘Bois Locker Room’ became public. While objectionable content shared on this group left most of us enraged, it also opened the pandora’s box raising questions regarding the liability of intermediaries, such as Instagram, for hosting outrageous content. What aggravated the liability of Instagram in this case was that the chats were exchanged within the confines of a virtual chat room and were not meant for public viewing. Notably, intermediaries, being mere facilitators of information, enjoy conditional immunity in India under the Information Technology Act, 2000 to the extent that they are not actively involved in transmitting and modifying the content they host. This immunity, however, is taken away if the intermediary does not remove the questionable content upon receiving “actual knowledge” of it. The legal position on what constitutes actual knowledge in such cases has been settled by the Supreme Court of India in Shreya Singhal v. Union of India to mean knowledge by way of a court order or on being notified by the appropriate government agency. The Information Technology (Intermediary Guidelines) Rules, 2011 also casts an obligation on the intermediaries to carry out due diligence while discharging their duties. Further, the liability of intermediaries is enhanced in cases of offences against minors under the Protection of Children from Sexual Offences Act, 2012 (“POSCO Act”) where even a stranger having knowledge of an offence against a minor anywhere, including on a virtual platform, can file a complaint on behalf of the minor. Additionally, there is a duty cast on the intermediaries under the POSCO Act to provide the necessary details and to report the commission of any offence which is sexually exploitative of a child, within their knowledge, to the Special Juvenile Police Unit, or the local police. Taking this a step further, in March 2020, the Protection of Children from Sexual Offences Rules, 2020 were enacted under which an intermediary, in addition to reporting any such an offence, shall also hand over the necessary material, including the source from which such material may have originated, to the relevant police authority. However, these rules and guidelines are vain in instances such as the Bois Locker Room case. This is because social media platforms, such as Instagram, can effortlessly dodge liability for the crimes fostering on their own platforms owing to the private nature of the chatrooms. While platforms such as Instagram follow a Report Abuse Policy, the threshold to meet the requirements under this policy are quite high. Further, even if Instagram removes the objectionable content on receiving a complaint, there is no mechanism to control that such questionable content is not generated in the first instance. In this regard, the Ministry of Electronics and Information Technology has prepared a draft of the Information Technology (Intermediary Guidelines (Amendment) Rules, 2018. These guidelines amend the due diligence requirements for such intermediaries and require them to deploy automated tools to identify and remove unlawful content from public access. However, the same are yet to be notified. The horizon of intermediaries’ liability in India for content shared on their platforms surely needs to broaden. Until this happens, such interactive platforms the likelihood of crimes remains high.

Our Associate Aishwarya Pande dissscuss “Anti-Suit Injunctions“ Recently the Delhi High Court, in HT Media Ltd. & Anr. v. Brainlink International Inc. & Anr., granted an anti-suit injunction, restraining Brainlink International Inc. (the “Defendant”) from prosecuting a legal proceeding initiated by it against HT Media Ltd. (the “Plaintiff”) before the Eastern District of New York (“EDNY”), United States of America. The case of the Plaintiff was that the Defendant, a New York based corporation, is infringing its registered trademarks, HINDUSTAN and HINDUSTAN TIMES. The Plaintiff also alleged cybersquatting in respect of the domain name www.hindustan.com. The Plaintiff claimed that it approached the Defendant to purchase the disputed domain name. However, the Defendant quoted an exorbitant price and rejected the Plaintiff’s counter-offer. Thereafter, the Defendant surreptitiously filed a declaratory suit for non-infringement against the Plaintiff before the EDNY. The Plaintiff, then, approached the Delhi High Court to restrain the Defendant from infringing the Plaintiff’s registered trademarks, and to obtain an anti-suit injunction against the Defendant to restrain the Defendant from prosecuting the suit in the EDNY. The Delhi High Court followed the Supreme Court’s holding in Modi Entertainment Network v. WSG Cricket Pte Ltd, [(2003) 4 SCC 341] (“Modi Entertainment Case”). First, the Court observed that it must consider whether the Defendant’s activities have any connection with India. Secondly, it must examine whether the cause of action arises out of the Defendant’s activities in India and third, whether the exercise of the court’s jurisdiction would be reasonable. The Court observed that the owner of the Defendant was of Indian origin. The Defendant’s website was accessible to users in India and was targeted towards Indian audiences. Negotiations for sale of the disputed domain name were carried on in Delhi. In light of these factors, the Court found that the Defendant’s activities have a connection with India, and an integral part of the cause of action has occurred in Delhi. The Court also observed that the Defendant has not used the disputed domain name for any legitimate activity since the year 2000. Further, if a consumer accidentally reaches the Defendant’s website, whose content is unrelated to the content of the Plaintiff’s site, users may be deterred from accessing the Plaintiff’s website. This would lead to erosion of reputation and goodwill of the Plaintiff and weaken the value and strength of Plaintiff’s trademarks. Moreover, the exorbitant price quoted by the Defendant for the disputed domain name is indicative of the Defendant’s bad faith. Consequently, the Court held that refusal of an injunction would cause irreparable harm to the Plaintiff’s goodwill and will defeat the ends of justice. The Court noted that the suit filed by the Defendant against the Plaintiff before the EDNY is vexatious and oppressive. The Plaintiff’s marks are registered in India, and their goodwill spills over internationally. However, the Plaintiff does not carry any business in the USA. The Court held that the suit before the EDNY was filed with the sole intention to cause unnecessary hardship to the Plaintiff. On the basis of the above, the Delhi High Court held that the Plaintiff has made out a prima facie case for the grant of an anti-suit injunction. Granting the Plaintiff relief, the Court restrained the Defendant from proceeding with the suit filed before the EDNY or initiating any suit/proceeding in any other court and from using the disputed domain name and/or any other mark similar to the Plaintiff’s registered trademark.

Our Associate, Anand Kumar discusses “AMADAY v. ANADAY” The Hon’ble Delhi High Court, in an order dated May 6, 2020, refused to pass an order of interim injunction in favour of Ajanta Pharma Ltd. (“Plaintiff”) against use of the mark ANADAY by Zuventus Healthcare Ltd (“Defendant”) on and in relation to breast cancer medication. [Ajanta Pharma Ltd. vs Zuventus Healthcare Ltd. – CS (COMM) 336/2019]. The Plaintiff alleged that the Defendant’s use of ANADAY on and in relation to breast cancer medication infringed its rights in the registered mark AMADAY in respect of medicines for the treatment of high blood pressure and heart disease. The Defendant contended that the Plaintiff does not have a license to sell its medicine under the AMADAY mark in India. Rather the Plaintiff is allowed only to export such goods outside India. However, the Court noted that the argument put forth by the Defendant is fallacious because there is no territorial restriction on the use of the mark by the Plaintiff by virtue of registration of the trade mark. The Court also noted that the Plaintiff may, after obtaining the necessary licenses required under the relevant applicable law, sell its goods under the AMADAY mark in India. Further, the Court made an important observation that the language of the Trade Marks Act, 1999 (“Act”) is clear that the application in India of a trade mark, although to goods to be exported from India, shall be deemed to constitute use of the trade mark “for any purpose for which such use is material under the Act or any other law”. Hence, use of the Plaintiff’s mark on the goods meant for the purpose of export outside India, is relevant, though not necessary, to establish the act of infringement of the mark or for showing the goodwill in the mark. The Defendant also contended delay in filing the suit and acquiescence. On the question of the delay, the Plaintiff contended that even if there is delay in seeking the injunction, an injunction should not be denied because of public interest. However, the Court held that delay must be weighed against honesty in adoption of the mark by the Defendant. In the instant case, the Court noted that Defendant had honestly adopted the mark ANADAY by combining the first three letters of the molecule, ANASTROZOLE, and the word DAY (since medicine bearing the Defendant’s mark is required once a day). On the question of acquiescence, the Court observed that the Plaintiff had continued to participate in an opposition proceeding against the Defendant at the Trade Marks Registry. The Court also observed that Plaintiff, despite having knowledge of the sales figures alleged by the Defendant since the year 2008, did not show due diligence to enquire about the sales of goods under the Defendant’s mark ANADAY in the market. The Court stated, unequivocally, that the Defendant’s abandonment of the application for the mark ANADAY does not mean abandonment of the sale of the goods under the mark. While comparing the marks, the Court held that, even though the rival marks (AMADAY and ANADAY) are similar, the Defendant’s honesty in adoption cannot be ignored. Further, the Court held that while the Plaintiff’s mark AMADAY is used on and in relation to treatment of high blood pressure, heart disease etc., the Defendant’s mark ANADAY is used for treatment of breast cancer. Therefore, the therapeutic indications of the marks are different. Lastly, the Court held that, though it is correct that use of deceptively similar marks in relation to the pharmaceuticals goods are likely to cause confusion to the chemist owing to the bad handwriting on the prescription slip, such likelihood of confusion may be obviated owing to the fact that rivals goods are being sold in completely separate markets, one in India and other outside India. Citation: Ajanta Pharma Ltd. vs Zuventus Healthcare Ltd. – CS (COMM) 336/2019, order dt. May 6, 2020 by Delhi High Court.

Our Senior Associate, Deeksha Anand discusses “COVID-19 – A Defence to Non-Use Claims in Cancellation Actions?” The COVID-19 pandemic has brought the world to a standstill. India has been in lockdown mode since March 25. The pandemic begs the question – can it be used as a viable defence to a cancellation/rectification action based on non-use of a mark during the prescribed statutory period? Before analysing this defence, it would be prudent to revisit what constitutes “use” of a trademark under Indian law. As discussed in our post, Non-Use Cancellation Actions in India, it is amply clear that use made merely to preserve rights in a trademark would be insufficient to ward off a non-use cancellation action. “Use” must be significant commercial use of the mark on or in relation to the goods/services under question. To this effect, even a single incidence of commercial and bona fide use in India during the relevant period would be sufficient to successfully defend a non-use cancellation action against a registered trademark. Among other grounds, the law allows for removal of a trademark registration from the Register if, for a continuous period of five years and three months from the date on which the mark was entered into the Register, there has been no bona fide use of the trademark on/in relation to the goods/services covered by the registration. The law also states that a registered trademark is exempt from removal from the Register if “any non-use of a trade mark is shown to have been due to special circumstances in the trade, which includes restrictions on the use of the trade mark in India imposed by any law or regulation, and not to any intention to abandon or not to use the trade mark in relation to the goods or services to which the application relates.” While the term “special circumstances” has not been defined, courts and tribunals have interpreted the term broadly. The Supreme Court of India, in Hardie Trading Ltd. & Ors. v. Addisons Paint and Chemicals Ltd.[1], recognized that economic viability or the existing market condition were within the concept of special circumstances and that even an economical impracticability would amount to special circumstances. In Hardie, the court also took into consideration the definition of special circumstances as discussed in Aktiebolaget Manus v. R.J. Full wood and Bland, Ltd.[2] as “some external forces as distinct from voluntary acts of any individual” ……… where the impact of local condition makes impractical the ordinary usage of international trade”. In Cycle Corporation of India Ltd. v. T. I. Raleigh Industries Pvt. Ltd. and Ors.[3], the Supreme Court went a step ahead by putting the onus to show that non-user was strictly due to the special circumstances of trade, and not due to an intention to not use the trademark during the relevant period, on its registered proprietor. The court noted that if non-use was, in fact, due to some other circumstances and would have occurred whether the special circumstances had followed or not, the exception laid down in the law would not apply. In other words, non-use of the mark should not be due to some cause which would have operated, whether the special circumstances had arisen or not. From the above, it is reasonable to conclude, in my opinion that, to be covered within the above exception, non-use must be due to external forces, such as, war, imposition of severe trade restrictions by a government or peculiar or abnormal circumstances that make it commercially impracticable and/or impossible for the registered proprietor to use a mark in India. In my opinion, non-use of a mark owing to the COVID-19 pandemic would fall within the ambit of the definition of “special circumstances” envisaged by the law. Here, it is important to make a distinction between non-use during the lockdown and continuing non-use once the lockdown will end. While the nationwide lockdown would, in my opinion, be a legitimate defence to the non-use of a mark, the fate of non-use outside the lockdown period, but within the crisis period, will likely be decided on a case to case basis. Factors such as non-use by others in the same trade could be a consideration, for instance. This, alone, however, may not, in my opinion, be a sufficient defence against a cancellation action. Once it is established that, owing to the COVID-19 pandemic or the lockdown, a registered proprietor was unable to use a mark during the relevant statutory period, it must be shown that the proprietor did not have any intention to abandon the mark. This intention not to abandon must be demonstrated irrespective of the pandemic/lockdown. Steps taken by a registered proprietor to continue use of the mark, either before or after the special circumstance ceases to exist, could help establish such non-intention to abandon the mark. Lastly, COVID-19 is likely, and hopefully, to form a very small part of the relevant statutory period during which non-use of a mark is challenged. While parties defending non-use claims against registrations that become vulnerable to non-use cancellation during the COVID-19 pandemic may hide their non-use under the garb of the special circumstance created by the pandemic, this will surely not justify their non-use during the remaining relevant period. Parties filing non-use cancellation actions in the times to come should factor in COVID-19 as a defence to non-use claims before deciding on the timelines to file the actions. [1] 2003 (27) PTC 241 [2] (1949) 66 RPC 71 [3] AIR 1996 SC 3295

Amdist the ongoing pandemic and the extreme sadness it has brought around the world, some cheerful news! Sujata Chaudhri IP Attorneys is among Asian Legal Business’ 10 boutique firms to watch for in 2020! All of us at the firm are elated at this accolade which won’t have been possible without our great team of lawyers, paralegals, and other staff!

Our Associate, Madhurima Gadre discusses “Colour Marks are Inherently Distinctive” On April 8, 2020, the Court of Appeals of the Federal Circuit (“CAFC”) in the United States held that colour marks, i.e., marks consisting solely of one or more colours without words or designs, can be inherently distinctive. It all started in 2014 when Forney Industries, Inc. filed an application to register a colour mark (shown below) as applied to packaging for its goods. During examination of this application at the United States Patent and Trademark Office (“USPTO”), the Examining Attorney refused registration of the above mark on the ground that it is not inherently distinctive. Once the Examining Attorney issued a subsequent Office Action, Forney Industries, Inc. appealed the decision before the Trademark Trial and Appeal Board (“TTAB”). The TTAB affirmed the decision to refuse registration of the above mark on the basis that a colour mark applied to product packaging can never be inherently distinctive. Accordingly, Forney Industries, Inc. appealed the decision before the CAFC. The CAFC disagreed and observed that colour marks can be inherently distinctive when used on product packaging depending upon the character of the colour design. Further, as per the CAFC, the TTAB erroneously stated that a multicolour product packaging mark, such as the above mark, can never be inherently distinctive. The TTAB’s decision suggests that a multicolour mark must be associated with a specific peripheral shape in order to be inherently distinctive, which was also deemed to be erroneous by the CAFC. Accordingly, the CAFC vacated and remanded the TTAB’s decision to refuse registration of the above mark in order to conduct further proceedings consistent with the CAFC’s observations. While the CAFC’s ruling is encouraging for those seeking to register marks that comprise solely of a colour combination, it remains to be seen whether the mark shown above is finally granted registration in the United States. It is worthy of mention that single colour marks, in the United States, are not recognized as being inherently distinctive. Therefore, in case of single colours, it would be necessary to demonstrate secondary meaning. In India, the Trade Marks Act, 1999 (“Act”) defines a “mark” and “trade mark” as including a “combination of colours”. Moreover, there does not appear to be any precedent in India that has held that a combination of colours cannot be inherently distinctive. Therefore, in India, a mark comprising solely of a combination of colours may be held to be inherently distinctive and, therefore, capable of functioning as a source identifier. As regards single colour marks, the Act is silent on whether single colours are protectable as source identifiers. However, in the absence of a specific bar, it is to be presumed that single colours may be granted a trade mark registration in India. In fact, Christian Louboutin has secured a registration for its popular red sole mark after submitting evidence demonstrating that the mark had acquired distinctiveness (See Registration No. 1922048). However, whether single colour marks can be granted registration based on a claim of inherent distinctiveness remains to be seen! Citation: In re Forney Industries, Inc., Appeal No. 2019-1073, 2020 WL 1696314 (Federal Circuit, April 8, 2020).

Our Associate and Manager (Trade Mark Prosecution and Oppositions), Ajaya Kumar V, discusses on “COVID 19 and the IPR World in India” Due to the COVID 19 pandemic, India has been under a lockdown since March 25, 2020. Although the lockdown is slated to end on April 14, 2020, it appears that the lockdown may be extended further. In addition, there are several administrative steps being taken to prevent the spread of the deadly virus, such sealing of areas identified as hotspots. The Trade Marks Registry and all other IP Offices in the country are closed until further notice. The Registry, in a public notice, dated March 25, 2020, announced that all the deadlines that fall until April 14, 2020 will be extended and the new deadline shall be the date on which the Registry re-opens for business. Since most documents at the Trade Marks Registry can be filed online, and the online filing portal of the Registry continues to function well, filings continue to happen. We, at Sujata Chaudhri IP Attorneys, have been working from home for about 4 weeks now and have been using the online filing portal extensively to meet clients’ deadlines. For instance, we are seeing that most clients are extending deadlines to file evidence owing to difficulties in notarization. However, the Registry’s portal is not accepting requests to extend deadlines to oppose. Nonetheless, opposition deadlines have been moved forward until the Registry re-opens. The Registry has also witnessed filings for “COVID-19 related” trade mark applications. It remains to be seen how the Registry will examine these applications, in particular, whether they run afoul of any provisions of the Trade Marks Act, 1999. It is also a high possibility that the infringement and passing off activities may rise in the field of healthcare and pharmaceuticals, health related goods, ventilators, diagnostics kits, etc. To successfully overcome this situation, the manufacturing facilities of the IPR right holders of these industries should be given more priority. There should be more vigilance needed for the quality of the goods that were used in the health care industry. Additionally, a lot of research works are also going on for the possible vaccine for COVID 19 virus in almost all the countries. It is now interesting to see the battle among the companies to protect the IPR rights on such vaccines for and naming of such vaccines. All in all, in the coming days, names of COVID 19 and CORONA will be the talk of the IPR industry.

Our Associate, Vishesh Kumar discusses ” The Scope of Amendment of Pleadings in a Civil Suit” On March 16, 2020, a Division Bench of the Delhi High Court, in D&H India Ltd. v. Superon Schweisstechnik, decided a highly contentious question of amendments to complaints filed in suits for trademark infringement and passing off. By this order, the Court clarified the scope of amendments to complaints in civil proceedings, and placed limits on the scope of powers of the Joint Registrars in deciding requests for such amendments. Lastly, the Court also called out the ambiguity of the provisions of law that led to confusion on these issues in the first place. The Plaintiff in the original suit, Superon Schweisstechnik, filed a suit against the Defendant D&H India Ltd., alleging infringement of the trademark SUPERON. The Plaintiff alleged that it has used SUPERON for its business of manufacture, marketing and exporting of welding electrodes since the year 2004. The Defendant, who was using the trademark SUPERCROME, claimed that it was the prior user of the mark, owing to use since 2001. The Plaintiff then filed a request for amendment of its pleadings claiming that, even though it was incorporated in the year 2004, a sister concern had been using the mark since the year 1994, which clearly establishes the Plaintiff as the prior user. The Plaintiff’s request was allowed by the Joint Registrar of the Court despite opposition by the Defendant. The Joint Registrar observed that since issues had not been framed no prejudice would be caused to the Defendant as it had every opportunity to rebut the contentions put forward by the amendment. Aggrieved by the above order, the Defendant filed an appeal with a Single Judge of the Delhi High Court. The Single Judge affirmed the order of the Joint Registrar. The Defendant then appealed the order of the Single Judge before a Division Bench of the Court. The Division Bench decided the following issues in the manner set out below: Whether the appeal was maintainable? The Plaintiff contended that The Commercial Courts Act, 2015 (“Act”) specifically excludes appellate jurisdiction in questions of amendments of complaints, barring in specific instances quoted in the Order XLIII of the Code of Civil Procedure, 1908. The Court held that the provisions of Act are enabling rather than disabling. In other words, the Act specifies orders against which appeals shall lie, but does not specify orders against which appeals shall not lie. The Court further stated that excluding the jurisdiction of this Court may amount to rewriting the relevant provisions of the Act. Notwithstanding the above, the Court went on to state that the present appeal is maintainable, even it is not specifically enumerated in Order XLIII of the Code of Civil Procedure, under the Delhi High Court Original Side Rules, 2018. While deciding the present issue, the Court also went on to do a lengthy analysis of prior rulings in this regard and held that such rulings were not applicable to the present case because they did not pertain to commercial cases. Did the Joint Registrar act within jurisdiction while deciding the application for amendment of plaint? The Court stated that, as per the Delhi High Court Original Side Rules, a Joint Registrar is empowered to decide applications for amendments of pleadings where the amendment sought is formal in nature. However, the Court was also quick to note that the provision does not define the scope and ambit of the word ‘formal’ and what exactly constitutes a formal amendment. Further, the Court went on to state that the amendment in the present case was clearly not ‘formal’ in nature since it sought to introduce a substantive change and not a change of form. Accordingly, as per the Division Bench, the Joint Registrar exceeded the jurisdiction vested in him. However, since a Single Judge had already heard and decided an appeal from the order of the Joint Registrar, the significance of the Joint Registrar’s order ceased to be of any significance. Whether the amendment requested by the Plaintiff ought to be allowed? The Court, while affirming the decision of the Single Judge, held that by allowing the present amendment, no prejudice would be caused to the Defendant since issues had not been framed in the present matter. It follows that the Defendant has every chance to rebut such claims. On the other hand, if such an amendment is not allowed, the Plaintiff will suffer irreversible prejudice as the date of the use of trademark is very relevant to decide the controversy between the parties. Further, the Court held that whether the claim was justified or whether the Plaintiff had adduced sufficient evidence in support of its claim, were issues to be adjudicated in trial and not while deciding the present appeal.

Our Associate, Caroline Mathews discusses “E-rickshaw Manufacturer Restrained from Infringing the BMW Mark The Delhi High Court recently granted well-known German auto manufacturer, Bayerische Motoren Werke AG (?BMW AG?), an interim injunction against use of the DMW and DMW Stylized marks (shown below) by Om Balajee Automobiles (India) Private Limited (?Om Balajee?) on and in relation to ?e-rickshaws. Sujata Chaudhri IP Attorneys represents BMW AG in this matter.? BMW AG?s suit was based on its registrations for the BMW mark in Class 12, extensive and long use of the mark in India, worldwide fame of the mark and the similarities of the respective goods (e-rickshaws v. luxury automobiles).? In the alternative, BMW AG contended that even if the rival goods are dissimilar, its BWM mark was entitled to a broad scope of protection because it was well-known.? Therefore, Om Balajee?s use of the DMW and DMW (Stylized) marks on and in relation to e-rickshaws dilutes the distinctive quality of the BMW mark.?? Om Balajee?s defense was that e-rickshaws are of a completely different nature compared to luxury cars and Ourthat the class of buyers and trade channels were also different. Further, the Defendant also stated that colour, font and size of the rival marks were not similar. Granting BMW AG an interim injunction, the court held that the DMW and DMW Stylized marks are visually and phonetically similar to the BMW mark, such that they are likely to deceive and cause confusion to an average consumer. The Court went on to appreciate the quantum of evidenced placed on record by BMW AG, and ruled that the BMW mark is well-known that is to be afforded protection regardless of the goods/ services on which the infringing mark is used. The Court also ruled that use of the DMW and DMW Stylized marks constitutes trademark dilution under Indian trademark law. Om Balajee was, therefore, held to be prima facie infringing upon BMW AG?s rights in the BMW mark and encashing upon the reputation and goodwill which BMW AG enjoys in the BMW mark. Om Balajee also contended that it has been manufacturing e-rickshaws under the DMW and DMW Stylized marks since 2013.? Therefore, BMW AG?s suit, which was filed in 2017, should be dismissed on the grounds of delay and laches. The Court ruled that Om Balajee?s contention regarding delay and laches was meritless.? BMW AG learned of Om Balajee?s use of the DMW and DMW Stylized marks in July, 2016, sent a cease and desist letter soon after, and filed the suit in early 2017. The Court relied on Midas Hygiene Industries (P) Ltd. vs. Sudhir Bhatia and Others (2004) 3 SCC 90 to hold that ?even if there was delay on the part of the plaintiff in filing of the present suit as has been claimed by the defendant, the same delay would not be sufficient to deter grant of injunction in favor of plaintiff?. On the basis of the above, the Court concluded that the balance of convenience lay in favour of BMW AG and passed an interim injunction thereby restraining Om Balajee from manufacturing, exporting, importing or offering for sale, advertising or in any manner dealing with goods, not limited to, e-rickshaws bearing the mark DMW or any other marks which are identical or deceptively similar to the BMW marks.

Our Associate, Sandeep Gupta discusses “India—Protectability of Slogan Marks” A slogan is a repetitive, short, instantly appealing and memorable group of words that people will identify with goods and services instantly. Its variants are former headlines, taglines (also called straplines in U.K) and brand jingles. Brand owners generally use slogans as part of their marketing strategy to draw attention to one or more aspects of their product and services. Continuous use of catchy and memorable slogans often creates a unique brand identity which lasts in consumers’ minds. Many a time consumers can identify the source of a product or service with a slogan even in the absence of a brand name. Such an association may play a major role in business’ success, so it is important to protect slogans! Slogans are competent to be trade marks under the Trade Marks Act, 1999 (“Act”). As per the Act, a trade mark includes a combination of words, brand, heading, device or any combination thereof capable of being represented graphically and capable of being a source identifier. So slogans are covered by this inclusive definition. The draft Trade Marks Manual released by the Trade Marks Registry in the year 2015 is instructive insofar as registrability of slogans is concerned. It states the following: 1. One or more words constituted as a slogan mark may be registrable provided it is distinctive per se or has acquired distinctiveness. 2. Slogans serving a promotional function will be objectionable because average consumers are not in the habit of making assumptions about the origin of products on the basis of such slogans. 3. Plain descriptive phrase of a slogan is always considered non-distinctive. In Reebok India Company v Gomzi Active1, the Karnataka High Court held that the slogan “I AM WHAT I AM” was only a common generic English phrase and the proprietor of such a slogan, without any design, has to establish that, by extensive and continuous use, the slogan had become distinctive of the products of the plaintiff, so that the phrase having lost its primary meaning acquired a secondary meaning in the market in relation to such products manufactured by the Gomzi Active. In Stokely Van Camp Inc. v Heinz India Private Limited2, the division bench of the High Court of Delhi, while dealing with the infringement of registered mark/expression ―Rehydrate Replenish Refuel in relation to energy drinks held that a registered trademark is not infringed when it is used to describe the characteristics of a product. Therefore, slogan marks are governed by the same rules as traditional trademarks. Accordingly, a slogan is registrable if it is (a) available for registration, and (b) is inherently distinctive or has developed a secondary meaning. Under Indian copyright law, a slogan is not literary work. Generally, a slogan consists of few sentences on their own and does not reveal sufficient information, instruction or literary enjoyment to qualify as a literary work. The High Court of Delhi, in Pepsi Co. Inc. and Anrv. Hindustan Coca Cola and Ors.3, considered whether the phrase “Yeh Dil Maange More” is copyrightable. The court held that advertising slogans are prima facie not protectable under copyright law. Rather, they may be protected under the law of passing-off. Further, the High court of Delhi, in Godfrey Phillips India Ltd. vs Dharampal Satyapal Ltd. & Anr.4, while dealing with the question whether the slogans and/or phrases are copyrightable or not, held that the slogan “Shauq Badi Cheez Hai”, being combination of common words, would not fall within the scope of literary work. The Court held that the slogan “Shauq Badi Cheez Hai” does not appear to be an outcome of great skill, inasmuch as it uses the short stereo type combination of words. In fact, both the slogans, that is, “Shauq Badi Cheez Hai” as well as “Swad Badi Cheez Hai” are commonly spoken in Hindi language in day to day life. END NOTE 1. Reebok India Company v Gomzi Active 2. Stokely Van Camp Inc. v Heinz India Private Limited 3. Pepsi Co. Inc. vs. Hindustan coca cola Ltd. and Ors. 4. Godfrey Phillips India Ltd. vs Dharampal Satyapal Ltd.