A Legal Proceedings Certificate or LPC is prima facie evidence of any entry made in the Trade Marks Register. As is the case in most countries, intellectual property offices (the Registrar of Trade Marks in case of India) issue a certificate of registration of a trademark. However, as per the rules governing trade mark practice in India, such a certificate of registration shall not be used in any legal proceedings. In legal proceedings, including proceedings for trade mark infringement, parties are required to submit a LPC that is issued by the Registrar of Trade Marks and is for use specifically in legal proceedings. Thus far, a LPC could be filed prior to the commencement of the trial and not necessarily along with the plaint. In this regard, a decision of the Bombay High Court in Pidilite Industries Limited v. Poma Ex Products [2017 (72) PTC 1 Bom] is important. In this case, the court observed that, at a preliminary stage, a certificate of registration can be filed for determining its evidentiary value, and a LPC can be submitted at the stage of the trial. However, on August 27, 2019, the Delhi High Court, in Amrish Agarwal v. Venus Home Appliances Pvt. Ltd.[CM (M) 1059/2018], ruled that a LPC must be mandatorily filed along with a complaint alleging trademark infringement. In this case, a LPC was filed at the stage of final arguments in the lawsuit. Arguments were made on behalf of both the parties. It was argued that it was impermissible to allow the LPC to be submitted at the late stage of final arguments. A counter argument was made that the renewal certificate was put on record and duly exhibited. The Court held that, in a trademark infringement matter, the court ought to be able to see the mark, and therefore, either a LPC or a Certificate of Registration along with the journal extract must be submitted at the initial stage itself. While allowing the LPC to be taken on record, the court imposed costs of INR 50,000 on the respondent for the late submission. Further, the court held that where the LPC is not available at the time of filing of suit and urgent orders of injunction are sought, a copy of the Certificate of Registration, a copy of trade mark journal along with the latest status sheet from the website of the Trade Marks Registry can be filed. A specific averment must be made in such cases in the plaint stating that no disclaimers are associated with the mark and the registration is duly renewed. Moreover, in such cases, the party must file the LPC prior to commencement of trial if any aspect of the trade mark registration is disputed by the opposite party. This case is also important because the court held that, at the time of admission/denial, parties will not be allowed to deny the factum of registration and other facts accompanying the registration as the same are easily verifiable from the online records maintained by the Registry.

Indian trademark law allows for the cancellation of a trademark registration if, for a continuous period of five years and three months from the date on which the mark was entered into the Trade Marks Register, there has been no bona fide use of the trademark for the goods/ services covered by the registration. Courts have, over the years, through numerous judgements, settled the definition of “use” in relation to cancellation actions. Thus, a trademark is considered to be in use if it is used on goods (say on packaging or on the good itself) or in relation to services (say in promotional material relating to a service). However “use” also encompasses actions other than actual sale of goods or rendering of services. For instance, it would be sufficient if a party can demonstrate that it has taken a “preparatory step” to use the mark in India. For instance, Indian courts have held that pre-use advertisement of a mark in India will also constitute as “use” in order to defend a cancellation action. All along, however, it has been amply clear that use made merely to preserve rights in a mark would be insufficient to ward off a cancellation action. Thus, use must be significant, commercial use of the mark on or in relation to the goods/ services. Given this, even a single incidence of commercial and bona fide use in India during the relevant period is sufficient to successfully defend a cancellation action against a trademark registration. As noted above, a trademark registration becomes vulnerable to a cancellation action if a trademark has not been used for a continuous period of five years and three months from the date of entry into the Trade Marks Register. The date of entry into the Register is the date on which the Certificate of Registration was issued. However, to ensure that a registrant’s rights are not jeopardized, Indian courts have ruled that, while a registration may be vulnerable to cancellation once a period of five years and three months has elapsed from the date on which the Certificate of Registration was issued, a cancellation petitioner must, in order to succeed in the cancellation action, show that there has been no use of the trademark in the five years and three months preceding the filing of the cancellation action. By way of example, if a Certificate of Registration was issued for a trademark registration in January 2005, it will be vulnerable to cancellation on the ground of non-use in April 2010 if there is no use of the trademark. However, if a cancellation application is being filed only in September 2019, then in order to succeed in a cancellation action, the petitioner has to show that the trademark has not been in use in the period June 2014 to June 2019. Any non-use of the trademark prior to the June 2014 to June 2019 period is irrelevant for the purposes of a cancellation action on the ground of non-use. From the above, it is clear that bonafide proprietors can rest easy in the knowledge that their rights in their registrations cannot be invalidated without reason.

On August 28, 2019 the Hon’ble Delhi High Court, in FaceBook Inc &Anr. v. Surinder Malik &Ors. CM(M) 1263/2019, clarified the scope of intermediary liability insofar as trade mark infringement is concerned. Surinder Malik had filed the suit against four (4) defendants who are alleged to be infringers on the grounds of trade mark infringement, passing-off, etc. seeking protection of the trademark DA MILANO. Defendants No. 1 to 4 were alleged to have put posts on the Facebook and Instagram advertising and offering to sell products bearing the mark DA MILANO. Mr. Malik impleaded Facebook Inc. and Instagram LLC as Defendants Nos. 5 and 6 so as to ensure that the posts containing the DA MILANO mark are taken down. Facebook and Instagram denied liability on the ground that they are intermediaries. The trial court passed an order requiring personal appearance of the representatives of Facebook and Instagram. Both defendants contested the order requiring personal appearance, while admitting their role as intermediaries. The Court also directed both parties to take down posts when the Plaintiff informs them of use of the DA MILANO mark on their platforms. The order clarifies the construction of “actual knowledge” by reiterating the narrowed down scope of actual knowledge in consonance with ruling in Shreya Singhal v. Union of India [2015] 5 SCC 1. The order takes into consideration that if the interpretation of ‘knowledge’ is not classified by the means of information, it would be very difficult for intermediaries like Google, Facebook, etc. to act when millions of requests are made and the intermediary is then to judge as to which of such requests are legitimate and which are not. Thus, attributing due consideration to the practical aspect of analysing such a large quantum of information regarding infringing content uploaded on online platforms, the Courts have narrowed down the ambit of “actual knowledge”.

It is fairly common for trials in intellectual property law suits to get prolonged incessantly owing to delaying tactics adopted by one or more parties to such suits. One such practice is that of making unsubstantiated/blanket/bare denials of each and every plea/ document of the adverse party to a suit. Recently, a single judge bench of the Delhi High Court in the case of Tullio Giusi SPA v. House of Trims Pvt. Ltd. (CS (COMM) 221/2016) came down heavily upon the practice of making bare denials as an attempt to “play a game of litigation in courts, governed by law, by putting on the opposite party, the onus of proving each and every plea, most of which are not really disputed, and in an attempt to take advantage, in my view unfair, of lapse in proving any of the pleas.” In this case, the defendant, more than a year after the framing of issues in the suit, filed a motion seeking amendment of the issues framed. The amendment sought was the addition of an issue with respect to the authority of the signatory of the plaint to sign and verify the plaint and to institute the suit. While the plaintiff had a specific plea regarding the signatory’s authority in its plaint, the defendant merely denied this authority in its written statement without any reasoning. Further, while this issue was present in the list of proposed issues handed over to the court before the framing of issues, it was not framed as an issue by the court. There was no explanation for the delay in noticing the non-framing of the issue. The court, while dismissing the defendant’s motion as being non-meritorious, noted that issues are to be framed only on ‘substantial pleas of laws and facts’ and not on each plea of law and fact. It further ruled that a bare denial of the signatory’s authority as above does not constitute a substantial plea, to invite framing of an issue thereon. The court observed that “if each and every such denial were to invite an issue, a large number of issues would be framed in each suit, requiring equally voluminous evidence and cross-examination and resultant delays in disposal of suits.” The expeditious disposal of suits envisioned by the Commercial Courts Act, 2015 will merely be diluted if bare denials were given due credence. Furthermore, the court gave an option to the defendant that if it desired the framing of the aforesaid issue (which would entail filing of documents in support of the issue, fresh filing of evidence and cross-examination), it should be willing to reimburse the costs (which were assessed at INR 5 lacs) associated with it to the plaintiff. The defendant’s rejection of the option only proved the frivolous manner in which an issue was sought to be framed to delay the suit proceeding. In another case of Burger King Corporation v. Techchand Shewakramani and Ors. (CS (COMM) 919/2016 and CC (COMM) 122/2017), a single judge of the Delhi High Court, while condemning the practice of indiscriminate denials of the documents filed by a party to a suit, observed that “such denials are completely bereft of merit and tend to prolong the trial in a suit.” She further opined that “the purpose of admission/denial is to deny only those documents whose existence, genuinity or authenticity is disputed and not to merely harass the opposite side into proving each and every document with certified copies/original.” The court, in this case, observed that documents which are publicly available and are verifiable, such as trademark certificates, copyright certificates from India and other countries, documents issued by governmental authorities and documents such as e-mail correspondences, legal notices, replies, Internet printouts, etc. ought not to be permitted to be denied. The foundation to expedited disposal of suits, laid down by the Commercial Courts Act, 2015 can only be strengthened if parties to a suit endeavour to adopt fair and bona fide practices and not intend to prolong proceedings. More the delaying tactics employed by parties to suits, more will be the timelines for their disposition, and, consequently, the prolongation of justice in the Indian judicial system.

On July 8, 2019, the Hon’ble Delhi High Court issued an interim injunction restraining major e-commerce platforms, including Amazon, Flipkart, HealthKart and Snapdeal, from selling products manufactured by Amway, Modicare and Oriflame that are direct sellers as defined in the Direct Selling Guidelines of 2016. These guidelines define direct selling as marketing, distribution and sale of goods or providing of services as a part of network of direct selling other than under a pyramid scheme. Under the concept of direct selling, Amway’s products, for example, are sold through direct sellers under a Direct Sellers Contract. The said direct sellers undertake to market, distribute and sell Amway products and provide services appurtenant thereto, directly to consumers. These direct sellers are provided training periodically. The Court held that the Direct Selling Guidelines had the force of law. The Court also held that web sites such as Amazon, Flipkart and Snapdeal were not mere intermediaries. The court held that sale of such products on the above e-commerce sites was in violation of Indian trademark law. Indian trademark law, while incorporating the “doctrine of first sale”, states that resale of goods in the market is not infringement if these goods have been previously put on the market under the registered trademark by the proprietor. However, Indian trademark law also stipulates that the above doctrine is inapplicable where the condition of goods has been changed or impaired after they have been put on the market. Interpreting the concept of “being put on the market” in the doctrine of first sale, and laying due emphasis on its “subtleties”, the Delhi High Court observed that the phrase does not refer to mere sale, but to “realization of economic value”. As per the Court, from this notion flows the need to acknowledge the added economic value that products from a direct selling entity have, by virtue of the additional warranties/guarantees, refund schemes, conditions and the reputation built based on these elements in the conduct of business of such direct selling entities. The Court held that “the economic value would only be realised if the products are sold in the manner they are meant to be sold”. In simpler terms, from a consumer’s perspective, the reputation associated with a trademark under which a product is sold is not only built upon the product per se but is also based on the added benefits or guarantees that come with those products. Hence, if those products are sold without these added benefits or with modified conditions, such reputation would be adversely affected, leading to erosion of the economic value of the product as well as dilution of the trademark under which it is sold. The Court held that the manner of sale on e-commerce platforms, constituted, inter alia, dilution/tarnishment of the Plaintiffs’ marks, products and businesses because selling those goods without the added benefits amounted to erosion of the economic value of those products which led to adverse effect on reputation, and hence, the value of the trademarks under which those goods were being sold. Since the sale of products of the direct selling entities by the e-commerce platforms without the above mentioned added benefits was held to be detrimental to the distinctive character of the trademarks under which these products are sold, the e-commerce platforms were disentitled from availing the defence of the doctrine of first sale. All in all, this judgment was based on the parameter of consumers’ perception, as it attributed due consideration to the effect of selling the same goods with different conditions on consumers’ experience and the perception they would be likely to form about the trademarks under which those goods are sold. This marks a major development in trademark dilution jurisprudence in the field of direct selling and modification of conditions under which goods are supposed to be sold.

Over the last few years, the Indian Trade Marks Registry (“Registry”) has taken the initiative to modernize its working by introducing initiatives such as e-filing, digitization of files, etc. Yet another initiative in the direction of modernizing is email communication. In May 2019 the Registry issued a public notice requesting all applicants, registrants and/ or authorized agents/attorneys who have filed applications, or own registrations, to submit their email addresses to the Registry with the objective of updating all files with these addresses to facilitate communication through these addresses. Applicants and registrants were given up until June 10, 2019 to submit the email addresses. This is a welcome initiative by the Registry and will, hopefully, address, in large, part communication glitches that have often faced by applicants and registrants. In the past few years, there have been instances of removal of registrations because a registrant did not timely receive the O-3 notice, or an application being abandoned owing to failure to receive an Examination Report. With email addresses being on record, there is little or no chance of mishaps occurring and applicants/registrants forfeiting their rights owing to communication failure. The Registry must be commended for this great initiative and continuing to take steps to modernize its working.

The Intellectual Property Appellate Board (“IPAB”) was established in the year 2003 primarily with the objective of rendering “technical” expertise in IP cases. However, in recent times, the IPAB has been plagued with a long pendency of cases, in large part due to lack of coram. Under the law, the IPAB bench shall comprise of a Judicial Member and a Technical Member. However, there might be a beacon of hope with the decision of the Delhi High Court in Mylan Laboratories Limited vs Union of India & Ors., (Order dt. 08.07.2019 W.P.(C) 5571/2019). In Mylan, Hon’ble Justice J. R. Midha expressed grave concern over the pendency of around 3935 cases at the IPAB due to vacancies in the posts of the Technical Members for Trade Marks, Patents and Copyright. It is notable that, currently there is only one Technical Member at the IPAB for cases relating to Plant Varieties Protection. Mylan Laboratories had filed an appeal along with a stay application at the IPAB, challenging an order passed by the Deputy Controller of Patents and Designs in a patent pre-grant opposition matter. However, since the matter was not heard by the IPAB owing to lack of coram, Mylan Laboratories approached the Delhi High Court for an urgent hearing of the stay application. Relying on the principles laid down in cases pertaining to other tribunals, namely, the Election Commission and the Delhi VAT Appellate Tribunal, the Hon’ble High Court invoked the “Doctrine of Necessity” in the above case, and held that the intention of the legislation is the continuity of the IPAB and not its cessation because of vacancy in its technical membership. The court held that the Chairman of IPAB and the Technical Member (Plant Varieties Protection) are competent to hear urgent matters relating to Patents, Trade Marks and Copyright till the vacancies of Technical Members are filled up, and orders passed in such cases would not suffer any invalidity on the ground of lack of coram. In Patent matters, the Chairman has been given the liberty take the expert opinion of a scientific advisor as provided for under the law relating to patents. Further, if the Technical Member (Plant Varieties Protection) is not available for any reason, the Chairman has been given the power to hear urgent matters single-handedly. The above order heavily relies on the principle that the right to life guaranteed to the citizens under the Indian Constitution includes not only the right to justice, but also access to justice. There is hope that this order will definitely provide “quicker” access to justice and help clear the heavy backlog at the IPAB. Such an approach may be helpful, especially in Patent cases, where the term of a Patent is only twenty years, and in many cases, due to lack of coram, the Patents have expired, and the rights of the parties have been severely prejudiced. On the other hand, the primary reason behind the constitution of the IPAB, i.e., to enable some level of “technical” expertise in IP adjudication, may get completely defeated in this attempt of clearing the logjam at the IPAB. It is pertinent to note that there are specific provisions which enlist the minimum qualification(s) to be possessed by a Technical Members of Patents, Trade Marks and Plant Varieties Protection. These provisions have been meticulously drafted, keeping in mind the different kind of expertise required to deal with different subject matters. As such, orders passed by the Chairman and the Technical Member (Plant Varieties Protection) in Trade Mark, Patent and Copyright cases, as well as orders solely passed by the Chairman in all IP cases, may lack due consideration of technical aspects.

India has joined three WIPO administered classification treaties designed to ease the search for trademarks and industrial designs. These treaties are the Nice Agreement, the Vienne Agreement and the Locarno Agreement. The treaties will enter into force on September 7, 2019. Although the Trade Marks Registry and the Designs Office have followed the classification systems under these treaties for some time, India has only now formally acceded to these treaties. The Nice Classification was established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks groups goods and services into 34 classes of goods and 11 classes of services. The Vienna Classification is an international classification system used to classify the figurative elements of marks. The Locarno classification is a classification destined for industrial designs. The Locarno classification contains a list of 32 classes and 219 subclasses with explanatory notes, as well as an alphabetical list of products to which industrial designs are incorporated, indicating the classes and subclasses to which they belong. India’s accession to these treaties is an important development in the country’s modernization of its IP systems. By formally acceding to these treaties, India has demonstrated yet another step in its efforts to harmonize its IP systems with global IP systems. Not only will this development encourage foreign applicants, but also pave the way for streamlining the procedures for IP practitioners in the country.

Recently the Bombay Stock Exchange and well-known comedian, Kunal Kamra, engaged in a battle on Twitter in connection with Mr. Kamra’s use of a photoshopped image of the iconic Bombay Stock Exchange (“BSE”) building in his tweets. BSE’s concern over the issue emanates from its trademark registration for the three-dimensional representation of the BSE building for stock exchange services in Class 36. Yes, the building is the subject of a 2017 registered trademark! The criteria for a building to be registered for a trademark under Indian law are the same as any other trademark such as a word or logo. Therefore, the mark must be capable of being represented graphically and should be capable of identifying the source of the goods or services. The graphic representation is not difficult—buildings can be easily represented graphically through drawings or photographs. As for the source-identifying function, an applicant would need to demonstrate that, owing to its long-standing use and goodwill, the building is solely and exclusively associated with the applicant. For example, in the application to register the BSE building, the applicant cited the three-dimensional representation of the building and claimed use since 1979 to show that the building has come to be associated with and only the applicant. The primary reason for registering a building as a trademark may be to restrict any kind of ‘copycat architecture’ and to prevent any kind of tarnishment or dilution through unauthorized use of images, etc. of the building. It is important to note that such a registration does not take away the rights of an ordinary citizen to take pictures or draw the registered building. However, registration would give the right to the trademark owner to prohibit use of images, pictures, miniatures, etc. of the registered building for commercial purposes. For instance, in the United States of America, the owners of the Empire State Building routinely license out rights to third-parties to make souvenirs. In conclusion, it won’t be incorrect to quote the great Bob Dylan and say ‘The times they are a changin’. There has been a meteoric rise of unconventional trademarks in the past decade and the concept of trademarks for buildings is a testament to that. It is predicted that applications and registrations for unconventional trademarks such as those involving sound and smell will only increase from here on and what remains to be seen is how India acclimatizes itself to this fast changing and dynamic scenario.

Recognizing that the rules governing the Copyright Act, 1957 (“Act”) need modernizing in this digital era, on May 30, 2019, the Government of India published proposed amendments to the rules. These draft rules are open for comment by the public until June 29, 2019. It appears that the draft rules flow out of the Bombay High Court’s recent judgment in Tips Industries v. Wynk Music, in which the court held that broadcasting via the Internet is not covered by the law on copyright, and it is clear that broadcasting licenses are only intended for radio and television broadcasters. The draft rules are, therefore, heavily focused on bringing in non-traditional broadcasters, such as web content generators and online streaming websites into the ambit of the law relating to copyright. If the rules come into effect, non-traditional broadcasters will require to obtain statutory licenses from, and pay a license fee, to a content owner. This could potentially ensure greater growth in India’s online content and streaming market. However, it is pertinent to note that the provision in the underlying law that governs statutory licenses continues to state that statutory licenses can only be granted to television and radio broadcasters. Since rules themselves are intended to supplement the underlying law, it will be interesting to see how litigants, especially internet broadcasters, interpret the Act and the amended rules, if and when they are implemented, in light of the clear inconsistency between the two. Some of the other amendments sought to be introduced by the draft rules are digitization of the entire copyright application process, the disbanding of the Copyright Board and grant of all powers to the Intellectual Property Appellate Board to decide disputes pertaining to statutory licenses and other matters, and measures to increase transparency in the working of the Copyright Societies.