This post discusses the registrability of letter marks in India, and provides helpful tips to overcome common objections against their registration. Single letter marks, in India, are generally considered devoid of distinctive character for goods because of the tendency in trade to use letters as references. For instances, care should be taken to avoid filing applications to register single letter marks that are customary in trade, such as the letter “M” for clothing. If, upon examination, a single letter mark is found to be descriptive, customary in the trade and/or devoid of any distinctive character in respect of the goods or services concerned, registration would be refused unless there is evidence of acquired distinctiveness. Where combinations of letters are concerned, they are also generally not considered inherently distinctive unless it can be shown that owing to extensive use of such marks, they have acquired distinctiveness. It may, however, be difficult to establish acquired distinctiveness if the mark, by itself, is incapable of being associated with a single source despite extensive use. For instance, the letters such as “ABC” for guide books or directories, or “XL” would be unregistrable. Additionally, there is also an element of pronounceability of letter marks. A mark comprising of letters that is capable of being pronounced, such as ‘OX’ will enhance the chances of registrability because the mark may be construed as a short word mark. The following suggestions might be helpful in choosing letter marks for use in India.  Firstly, the more random and atypical the letters, the more likely it is that the mark will have the necessary distinctive character. Secondly, the well-known practices of trade must be considered. The more a letter mark resembles signs commonly used in the relevant trade, the less likely it is to be distinctive. Thirdly, where two/three letters form a non-descriptive pronounceable word, it may be acceptable, unless they are objected on the grounds of being identical/similar to any prior mark, or have identical/similar goods as any other prior mark. Lastly, the chances of overcoming objections of lack of inherent distinctiveness will rise if the applicant files for a design mark or at least stylizes the letters in the mark. In India, in general, distinctiveness of letter marks lies at the lower end of the strength continuum. Therefore, at the first step, sound establishment of distinctiveness of the mark – inherent or acquired, must be ascertained to get a go ahead from the Indian Trademark Registry.

The implementation of the European Union’s General Data Protection Regime (“GDPR”) is touted to bring sweeping changes in the data protection regime across the world. This post discusses how the GDPR impacts Indian businesses. The GDPR is not only applicable to EU members, but also governs entities in foreign countries that deal with data of EU citizens. Indian businesses that collect data from EU citizens are now required by the GDPR to (a) obtain user consent before collecting data, (b) clearly mention the purpose of using the collected data, and (c) provide users free access to their data. Further, in cases of cross border data transfer of an EU citizen’s data, the transferee country must have adequate levels of data protection. The new law also requires accountability and transparency at each level which makes it different and stringent from the previous law. Non-compliance could even invite fines up to 4% of the annual global revenue. Indian entities dealing with an EU citizen’s data such as government agencies, banks, hospitals, etc. will now have to put in more resources to comply with the stringent requirements under GDPR. Such Indian entities should expect costs and expenses are to increase. Indian businesses can achieve the desired results if they adhere to the strict guidelines so as to prevent being penalised. They can certainly make changes to their approach to avoid any violation. They can provide training to their employees about the functioning of the new regulations. There should be periodical review of the data  and users must be given  information about any application of their data. While the legislature is yet to introduce GDPR-like provisions in India, an ongoing case in the Supreme Court, Karmanya Singh Sareen and Anr. v. UOI and Ors. (The WhatsApp case) challenges the Indian government’s privacy rules and attempts to prohibit cross border sharing of data without user’s consent. The petition claims that WhatsApp altered its privacy laws upon being acquired by Facebook, and divulged user’s data with Facebook, a company that is headquartered outside India. The privacy policy of such websites/ applications are drafted on a ‘take it or leave it’ basis, making it confusing for users to either accept the terms or not use the website/application at all. Right now, although the GDPR is only applicable to EU countries, its impact on the Indian companies collecting EU citizens data is immediate. Small companies are expected to struggle to assemble resources and put in place a mechanism to ensure GDPR compliance.

With the advent of superhero movies and comic book characters coming to life in cinema, cosplay has become a popular way for fans to appreciate and emulate their favourite characters. However, is cosplay copyright infringement or fair use? A cosplayer will need to show that, he/she has in fact, used his/her skill and creativity, inspired by the original work, and that the cosplay is not merely a mechanical reproduction of the original work. For example, a cosplayer who has blended two characters into one, say Superman and Batman, has clearly introduced his own flavor of creativity into his cosplay and is not merely reproducing identical depictions of either of the characters. In Eastern Book Company & Ors vs D.B. Modak & Anr [(2008), 1 SCC, 1], the Supreme Court of India laid down a rather ambiguous definition for a derivative work. A derivative work, according to the Supreme Court, is “a contribution of original material to a pre-existing work so as to recast, transform or adapt the pre-existing work.” Further, the court held that, this reproduction must be with the exercise of “skill and judgement with a flavor of creativity”. This kind of a definition has left room for interpretation and we are yet to see litigators use this to their advantage. As for fair use, Courts in India have recognized certain tests to decide what qualifies as fair use, explained as follows. First, the substantiality of the dealing. Indian courts have generally used quantitative and qualitative factors to determine what would constitute ‘substantiality’. Hence, when and how cosplay would amount to a substantial dealing remains subject to judicial interpretation as and when such a matter is litigated. Second, the purpose of the dealing. Section 52 of the Copyright Act, states that a work used for a private or personal purpose, including research does not constitute infringement. Courts in their interpretation of Section 52, have held that, no claim of copyright infringement can subsist if the work is being used for a private, non-commercial purpose, or if the purpose served by the subsequent work is substantially different from the purpose served by the original work. Cosplay is mostly done on an informal, non-commercial basis. Further, its purpose is to emulate and honour the character that it is based on, and therefore does not serve the same purpose as that of the original work. Third, the impact on the potential market. In ESPN Star Sports v. Global Broadcasting News Limited [2008 (38) PTC 477(Del)], the Delhi High Court talked about “the likelihood of competition” and held that, if the work is being used to convey the same information as the author, for a rival purpose, it may be unfair. Therefore, only when cosplay is used for a commercial purpose that threatens the market share of the original work does it have the potential to constitute infringement. Thus, individual cosplayers dressing up for their own entertainment will not constitute infringement. However, as soon as they derive commercial gain from their cosplay, for example, if they start charging money for getting pictures clicked with them, it would threaten the market share of the original work and consequently, constitute infringement. Ultimately, cosplayers are safe so long as there is no commercial exploitation of the original work. Copyright owners generally tend to ignore copyright infringement by cosplayers, because it is in fact the biggest form of flattery.

For long, India suffered from an Intellectual Property office mired in inefficiency and inordinate delays in prosecution of trademarks with right holders having to wait for close to seven (7) to eight (8) years for a registration. The problems on the post registration recordals and oppositions was in dire straits as well with oppositions taking close to ten (10) years to get cleared in some cases and post registration recordals taking forever to get recorded. On March 6, 2017, with much fanfare, the government introduced the new Trade Marks Rules 2017 (“Rules”) bringing a host of changes which were welcomed. Scepticism still reigned as to how the implementation of these new rules would be like. One year on, lets examine the effect these new rules and an improved IT infrastructure have had on each step of the prosecution process. APPLICATION With the advent of digital platform to file trademark applications, and the difference in fee between a filing made online and one made at the counter at the Trade Marks Registry (“Registry”) (a 10% rebate in filing online), more practitioners started filing trademark applications online. As per the recently released annual report 2016-17, online filings have gone up 80% from prior years. However, the new rules dictated that applicants who were filing applications claiming use, file an affidavit with evidence of such use.  Though this seems to have been done to ensure that applicants do not misrepresent dates of use to claim an advantage in a contentious proceeding, this has proved to be a challenge to numerous applicants as they are unable to find evidence dating back a few decades. Thus, a relaxation of this rule and a look at it on a case to case basis is the need to the hour. Alternatively, the Registry could look into the acceptance of the affidavit in the absence of evidence for such matters as well. EXAMIANTION Once the application is filed, a preliminary check is done to ensure that documents such as the affidavit of use (if the application has been filed claiming a date of use), the Power of Attorney, priority documentation etc have been filed is done. In the absence of such documents, the Registry issues an official communication by email instructing the applicant to file the missing documents within thirty days (30) of the issuance of such official communication. In the absence of filing the required documentation, the Registry will proceed to abandon the application. Though the preliminary checks are a good step to ensure that the rules are complied with, the Paris Convention regarding the time period of two (2) months for the submission of priority documentation from the date of filing the application is overruled with issuance of such an official communication. Further streamlining of this process is required. Pendency at the examination stage in the prosecution process was a major problem. At times, it used to take close to fourteen (14) months for such examination to take place. With the new rules and the new digital platform, such examination is taking place within a time period of one (1) month. Over five lakh applications have been examined in 2016-17 which is a substantial increase over the two lakh which were examined in the year 2015-16.  Procedural reforms in examination has resulted in increase in the acceptance of applications for publication from 10% to 40%. Digitization has indeed helped in speedier examination of a trademark application. PUBLICATION, OPPOSITION Weekly e-publication of the Trade Marks Journal (“Journal”) has been the norm for the last few years. However, with the increase in acceptance of trademark applications, the journal has become extensive, going up to close to 10,000 pages per week. The number of increase in publications is directly related to the number of applications being accepted at the examination stage which reflects better examination procedures on part of the Registry. This is a welcome step in the right direction which replaces a system where nearly all applications filed used to face objections, some being ludicrous as well. The new rules have also changed the time period of filing an opposition to four (4) months from the prior three (3) months. Furthermore, no person wishing to initiate an opposition proceeding can seek an extension of time. Extensions of time at the evidentiary stage etc have also been removed. The removal of extensions of time have been brought in to reduce undue delay in the opposition proceedings. Oppositions, counterstatements and now evidence can be filed online through the digital portal. This is a good step to aid in faster service of documents to speed up the opposition proceedings. Over the last few months, this step has been effective in bringing down the time of oppositions. Additionally, the Registry has commenced service of   oppositions and counterstatements and orders online as well. This system is still in its nascent stages with more work having to be done in acquiring the e-mail ids of applicants an/or their attorneys.  Currently, practitioners are facing a system where service of order and/or scheduled hearings are happening to the wrong email id or to a prior attorney.  The Trade Mark Registry has been notified of this and they have requested practitioners for more time to correct such problems. REGISTRATIONS The issuance of Certificates of Registration has been fully automated. This replaces the system of sending the Certificate of Registration by post. Furthermore, only e-Certificates are issued. This has helped bring down the time for the issuance of Certificates of Registration. The annual report 2016-17 states that the number of registrations have increased 284.5% from the previous year. This is a phenomenal increase by any standards. RENEWALS Renewal requests can now be filed one (1) year prior to the date of renewal as per the new Rules. This replaces the time period of six (6) months prior to the date of renewal under the old Rules. Having filed renewals one (1) year prior to the date of renewal, we can safely state that the renewals are processed

Many multi-national companies have a complex corporate structure that often involves local Indian subsidiaries and a foreign parent, with trade mark ownership resting with the parent. In such a situation, must the foreign parent assign its Indian marks to the local subsidiary and must the subsidiary be impleaded as a co-plaintiff in a suit brought by the foreign parent? The Delhi High Court, in Levi Strauss & Co. v. Rajesh Agarwal recently held that complex corporate structures are to be treated as “one economic entity” in a suit for infringement, dispensing with the need to assign rights to the entity using the trademark. The appeal arose out of a suit filed by Levi Strauss & Co. against a decision of a lower court vacating an injunction issued in favor of Levis. As per the lower court, Levi Strauss & Co. put on record sales and advertisement expenditure incurred by its local affiliate, Levi’s Strauss India Pvt. Ltd. However, it failed to produce any deed of assignment in favour of the Indian affiliate. Accordingly, the ex-parte ad interim injunction in favor or Levi Strauss & Co. should be vacated. Levi Strauss & Co. appealed, asserting that it, with all its affiliate and associate companies, including subsidiaries and related companies, ought to be treated as “one economic entity”. The Delhi High Court held for Levi Strauss & Co., holding that the fact that the sales and advertising were carried out through the Indian affiliate company does not in any manner prejudice Levi Strauss & Co. because its Indian affiliate, Levi’s Strauss India Pvt. Ltd. and Levi Strauss & Co. ought to be treated as `one economic entity. The Court also held that, given that Levi Strauss & Co. is the registrant of the marks in question, no further assignments are required to establish the proprietary rights in the marks. Furthermore, the Court held that Levi’s Strauss India Pvt. Ltd. was not a necessary party to the suit. This decision will, hopefully, encourage companies to do better business in this country. The decision of the Delhi High Court reinforces the law in regard to the issue in question. It also underscores the harmonization of trade mark law to make it consistent with the developments in trading and commercial practices, to keep up with increasing globalization of trade and industry, to encourage investment flows and transfer of technology, and to simplify and harmonize trade mark management systems.

Over the years, the Delhi High Court has come to be recognized as the most preferred court in India for filing trade mark suits, primarily because of judges who have exposure to, and understand, nuances of the applicable law. Generally viewed as pro-plaintiff, in recent times, this view appears to be changing, in particular because of issues relating to territorial jurisdiction. This post captures the recent developments on the much debated issue of territorial jurisdiction in the Delhi High Court. An Additional Forum to Sue – A background In India, a trade mark infringement suit may, simply speaking, be filed in a court having jurisdiction in the place where (a) the plaintiff resides or carries on business; or (b) where the defendant resides or carries on business; or (c) where the cause of action, partly or wholly, arises. While territorial jurisdiction of the court where the defendant resides/does business or cause of action arises is conferred by the civil code governing court practice in India, the law governing trade marks has created an additional forum for plaintiffs to sue, i.e. where the plaintiff resides/ does business. In cases where the defendant resides/does business in Delhi, or the cause of action arises therein, there is little to contemplate on the Court’s territorial jurisdiction. The Court has, off late, however, taken a harsh stand in cases where the defendant or its activities have no connection with Delhi, but only the plaintiff does business in Delhi. It has recognized ‘cause of action’ as continuing to have a co-relation with the issue of territorial jurisdiction. In early 2016 in Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar Chaubey and Ors., the bench formulated a matrix of situations when a plaintiff can sue in courts having jurisdiction where the plaintiff (being a corporation/company) has principal/subordinate offices. Importantly, a plaintiff cannot sue in Delhi courts even if its subordinate/branch office is in Delhi, if the cause of action arises at the place where its principal/registered office is located. Likewise, a plaintiff cannot sue in Delhi courts even if its principal/registered office is in Delhi, if the cause of action arises at the place where its subordinate/branch office is located. In effect, if there is an overlap between the place where the cause of action arises and where one of plaintiff’s offices is located, the suit must be filed at that place, and no other. The Evolution Following the footsteps of the division bench, in late 2016, a highly acclaimed single judge of the Delhi High Court returned plaints and vacated interim orders on the ground of lack of territorial jurisdiction (Piruz Khambatta & Anr. v. Rajmohan Rupaji Modi & Ors. (popularly, the RASNA case) and Pepsico Inc. & Anr. v. M/S. Sagarnil Enterprise & Ors.). In RASNA, the plaintiff filed the suit in the Delhi High Court on account of having a branch office in Delhi and a minor part of the cause of action arising in Delhi. The judge returned the plaint in as much as the plaintiff’s (as also the defendant’s) principal place of business was located at the place where the cause of action essentially arose. In Pepsico, the first plaintiff’s principal place of business was located in the USA. Its wholly owned subsidiary (second plaintiff) had its principal place of business in a state bordering Delhi, and a branch office in Delhi. The suit was returned because neither the plaintiff’s principal office, nor the defendant’s office or the cause of action arose in Delhi. Contrary to the stringent view taken in the above referred cases, another single judge of the Court, very recently in August 2017, in Burger King Corporation v. Mr. Ashraf & Anr., admitted a suit merely on account of the plaintiff’s trademarks (forming core of the subject matter of the suit) being registered with the Trade Marks Registry, Delhi. The judge was of the view that the infraction by the defendant of the plaintiff’s statutory rights in Delhi was sufficient for an integral part of the cause of action arising within its territorial jurisdiction. The year 2017 saw another lawsuit concerning a permitted user’s right to institute a suit for trade mark infringement (P.K. Sen v. Exxon Mobile Corporation & Anr.) being returned for lack of jurisdiction by a division bench of the Court. The first plaintiff was a company incorporated in the USA with no office in India, with the second plaintiff being its wholly owned subsidiary. The second plaintiff was the permitted user of the subject trade mark in India through a license agreement with the first plaintiff, and had a registered office in Delhi. The defendant carried on business elsewhere and had no business in Delhi. The Court affirmed that a permitted user is prohibited from instituting a suit for trade mark infringement. It returned the suit, ruling that even if use of the mark by the permitted user was deemed use by the first plaintiff, and that the Delhi office was the first plaintiff’s branch office, even then it would not have the requisite jurisdiction to entertain the case in as much as the cause of action arose elsewhere. Online Jurisdiction The last one year also witnessed a series of cases on territorial jurisdiction in which one or more party carried on business online. In such cases, unless it is proved that the party’s web site specifically targets consumers in Delhi, or that the web site is interactive and enables to conclude a commercial transaction with the web site user in Delhi, a party cannot be said to be carrying on business in Delhi. For instance, a single judge in Federal Express Corporation v. Fedex Securities Ltd. & Ors. this April, returned a suit for lack of jurisdiction despite the defendant allegedly carrying on business in Delhi through its web site. The principal registered office of the Plaintiff was in the USA and its branch office was in Delhi. The defendants’ registered offices were in Mumbai. The plaintiff invoked the Court’s territorial jurisdiction on,

An infringing competitor is a bane. However, in a suit for injunction, an infringing non-competitor could be the greater annoyance. The likelihood of succeeding against such non-competitors has as much to do with the ownership of strong copyright and trademark claims, as it has to do with creative lawyering. If infringed, copyright ownership can even entitle a tax consultancy firm to an injunction against a seller of dairy products. Both business proximity and size are irrelevant in a copyright claim, and so is deceptive similarity. Although copyright ownership is undoubtedly useful in infringement actions against unrelated businesses, it is wrought with the limitation of copyright subsistence. For example, while the copyright owner of an artistic Tiger Design, who prints the logo on biscuit packets, would succeed against a shoemaker who prints the exact logo on his shoeboxes, the biscuit seller may not enjoy similar success against a shoemaker printing a different tiger design. Copyright, after all, does not entitle one to an injunction against all possible depictions of tigers, even if trademark law would render such depictions deceptively similar. In addition to copyright, injunctions against infringing parties in unrelated businesses can also be claimed on the basis of trademark rights (both statutory and common law). To claim an injunction, the claimant must typically show that a defendant’s use of the mark/trade dress dilutes his brand. A biscuit seller, who has built his brand identity on the concept of health-consciousness, would rightfully fear brand dilution should a tobacco manufacturer use a visually similar logo. However, evidencing brand dilution is not always such a cake-walk. The same biscuit-seller may find it difficult to injunct a toy-manufacturer from using a visually similar logo. In such cases, the strength/ reputation of the complainant’s brand plays an important role. If the biscuit maker were an industrial giant that has, through many years of extensive use, etched its logo upon consumer memory, consumers may still associate the toy-manufacturer with the biscuit-maker. Thus, unless copyright subsistence is clear and well-evidenced, it is advisable to base a lawsuit against an infringing party in a dissimilar business on trademark grounds as well, although, the threshold of evidence would be very high in such cases. Significantly, the grant of an injunction on trademark grounds is heavily influenced by evidence and the surrounding facts and circumstances of the case at hand (unlike copyright – a relatively straight-forward statutory claim). Thus, overcoming weaknesses in a complainant’s case (such as the defendant being in an unrelated field of business) is possible, if deceptive similarity can be shown through the projection of an equitable narrative of facts. For example, the fact that the defendant was a former employee of the complainant who went on to use a similar logo (albeit in a non-competing field), could be used to build a case around the defendant’s dishonest adoption of the mark. A case of dishonest adoption can also be built around the defendant’s explanation (or lack of explanation) for adopting the infringing mark. Even besides dishonest adoption, there is tremendous scope for creative lawyering in shaping a narrative that improves the likelihood of success in seemingly borderline cases. The ability to do so and dismiss the defendant’s version of reasonableness is, essentially, the measure of litigating lawyers. If a copyright claim is untenable, a lawsuit based on trademark rights may still hold good against a party in an unrelated business. Such a suit is greatly aided by the reputation of the complainant’s trademark. But, that is not to say that only behemoth brands may pursue trademark claims against unrelated businesses. Since the likelihood confusion (the essence of a trademark claim) is, ultimately, dependent on evidence and the facts and circumstances of each case, there is sufficient scope to deploy creative lawyering as a means to an injunction even in seemingly borderline cases. There is, however, no substitute for the ownership of strong copyright and trademarks.

A registered trademark is the exclusive property of its owner, and its use by a third-party without the permission of the owner is an infringement of the rights of the trademark owner. However, this is not a blanket rule. There may be instances in which unauthorized use may not constitute trade mark infringement. In particular, unauthorized use may be permissible if it constitutes fair use of the trade mark in question. Fair use may be of different kinds. Descriptive fair use means use of a trademark to describe goods or services, as opposed to use as a trademark to indicate the source of the goods or services. For a defence of descriptive fair use to prevail, it must be proven conclusively that there is no intention to derive any association with the registrant or use the term in question as a source identifier. For example, in the case of ICC Development (International) Limited v. Arvee Enterprises, 2003 (26) PTC 245 (Del), the Court ruled that the use of the words ‘world cup’ and ‘world cup cricket’ by the defendants constituted descriptive fair use since there was no intention to derive any association with the ICC or use ‘world cup’ in a manner of trademark significance. Another kind of fair use is nominative fair use. Generally speaking, to prevail in a defence of nominative fair use, it is necessary to show the following: the product must be one not readily identifiable without the use of the trademark, only so much of the mark may be used as to reasonably identify the product, and the user must do nothing that would suggest sponsorship or endorsement by the trademark holder. The nominative fair use defence can be utilized in cases where a trademark is used in order to refer a trademark owner or its goods or services for purposes of reporting in a news article, commentary on the television or radio, in cases of a healthy criticism, and parody, as well as in cases of comparative advertising. Parody and fair criticism, another subset of nominative fair use, as a defence was recently examined by Indian courts in the case of Tata Sons v. Greenpeace, 2011 (45) PTC 275 (Del). In this case, Tata Sons had initiated an action for infringement of their TATA Design mark and the T Circle Design mark against Greenpeace International. Greenpeace had released a game which depicted turtles being chased by the TATA Design mark. The game used the TATA Design mark and the stylized version of its T Circle Design mark. The game was based on the intent to raise awareness on the alleged adverse impact of the Dharma Port Project on Olive Ridley turtles. The Court held that the use of a trademark as the object of critical comment, or even attack, does not necessarily result in infringement. If the third-party’s intention is to focus on some activity of the trademark owners, and is denominative and drawing attention of the reader or viewer to the activity, such use can prima facie constitute due cause, which would disentitle the plaintiff to a temporary injunction. The court ruled that Greenpeace’s use of the TAT Design and the T Circle Design marks was clearly denominative and considered fair use. Fair use, especially nominative fair use such as use in parodies and fair criticism, as a defence appears to be an evolving concept in India as compared to the West. Indian courts currently appear to be mindful of the resources invested by the registrants while considering defences of fair use. Nonetheless, brand managers should be conscious that such a defence may be taken by defendants in order to escape the penalty of infringement.

Designs Under the law of designs in India, only the features of shape, configuration, pattern, ornament or composition of lines or colours, applied to an article, in either two-dimensional or three-dimensional or both forms, are eligible for protection. Rights in a design accrue only on registration, which confers on its proprietor the exclusive right to apply the protected design to the concerned article for the period of registration. Three-dimensional design registrations are quite prevalent in India. This post focuses on the road less travelled – registrability of two-dimensional designs in India. Goods/ articles to which designs are applied are classified into classes and sub-classes under the Indian design law. The classification of goods followed by India is a prototype of an International Classification for Industrial Designs established by the Locarno Agreement (hereinafter “Locarno Classification”), to which India is not a signatory. Under the Indian classification, goods fall under thirty-one (31) classes. The Locarno Classification, on the contrary, comprises of thirty-two (32) classes, the last class being for “graphic symbols and logos, surface patterns, ornamentation”. This additional class in the Locarno Classification, in effect, addresses two-dimensional designs. While three-dimensional designs can be easily classified into one of the 31 classes, classifying two-dimensional designs in India creates hurdles. Since there is no specific class that is akin to Class 32 of the Locarno Classification in India, a proprietor of a two-dimensional design application is very likely to receive an objection of misclassification from the Designs Office. Further, since India does not accord design protection to graphic symbols, logos, surface patterns, ornamentation by themselves, i.e. in isolation of an article, claiming priority from a foreign design application filed in Class 32 is bound to attract an office action regarding the inconsistency in the particulars. Insofar as the depiction of a design in India is concerned, ordinarily the Designs Office requires an applicant of a three-dimensional design to depict four to six views of the design (applied to the article) in which rights are claimed. It is yet to be tested whether a single view of a two-dimensional design hinders the registration process. As against some jurisdictions, such as the European Union, where design rights can be accorded even to logos, the existence of an article carrying the design is a quintessential requirement under the design law in India. Further, rights to the exclusive use of any words, letters or numerals forming part of a design must mandatorily be disclaimed from the design in India. Going by the Designs Office’s current practices, seeking protection for two-dimensional designs may not be viable. Further, claiming priority from a foreign application filed in Class 32 remains a grey area. Due to this, it is difficult, if not impossible, for design owners to claim priority in respect of their two-dimensional designs from foreign registrations. Till the time there is some clarity regarding the fate of two-dimensional designs in India, claiming trademark or, where available, copyright protection for two-dimensional figures, is the best way forward. Designs Under the law of designs in India, only the features of shape, configuration, pattern, ornament or composition of lines or colours, applied to an article, in either two-dimensional or three-dimensional or both forms, are eligible for protection. Rights in a design accrue only on registration, which confers on its proprietor the exclusive right to apply the protected design to the concerned article for the period of registration. Three-dimensional design registrations are quite prevalent in India. This post focuses on the road less travelled – registrability of two-dimensional designs in India. Goods/ articles to which designs are applied are classified into classes and sub-classes under the Indian design law. The classification of goods followed by India is a prototype of an International Classification for Industrial Designs established by the Locarno Agreement (hereinafter “Locarno Classification”), to which India is not a signatory. Under the Indian classification, goods fall under thirty-one (31) classes. The Locarno Classification, on the contrary, comprises of thirty-two (32) classes, the last class being for “graphic symbols and logos, surface patterns, ornamentation”. This additional class in the Locarno Classification, in effect, addresses two-dimensional designs. While three-dimensional designs can be easily classified into one of the 31 classes, classifying two-dimensional designs in India creates hurdles. Since there is no specific class that is akin to Class 32 of the Locarno Classification in India, a proprietor of a two-dimensional design application is very likely to receive an objection of misclassification from the Designs Office. Further, since India does not accord design protection to graphic symbols, logos, surface patterns, ornamentation by themselves, i.e. in isolation of an article, claiming priority from a foreign design application filed in Class 32 is bound to attract an office action regarding the inconsistency in the particulars. Insofar as the depiction of a design in India is concerned, ordinarily the Designs Office requires an applicant of a three-dimensional design to depict four to six views of the design (applied to the article) in which rights are claimed. It is yet to be tested whether a single view of a two-dimensional design hinders the registration process. As against some jurisdictions, such as the European Union, where design rights can be accorded even to logos, the existence of an article carrying the design is a quintessential requirement under the design law in India. Further, rights to the exclusive use of any words, letters or numerals forming part of a design must mandatorily be disclaimed from the design in India. Going by the Designs Office’s current practices, seeking protection for two-dimensional designs may not be viable. Further, claiming priority from a foreign application filed in Class 32 remains a grey area. Due to this, it is difficult, if not impossible, for design owners to claim priority in respect of their two-dimensional designs from foreign registrations. Till the time there is some clarity regarding the fate of two-dimensional designs in India, claiming trademark or, where available, copyright protection for two-dimensional figures, is the best way forward.

In a not-so-puzzling case of an unauthorized use of a trade mark as a film title, Justice G. S. Patel of the Bombay High Court restrained film maker Mahesh V. Manjrekar and others from releasing/ continuing to work on their forthcoming Marathi film bearing the title ‘Rubik’s Cube’ set to release on April 14, 2017. A copy of the order can be accessed here. The Plaintiffs, Rubik’s Brand Limited, and its sole Indian licensee, Funskool India Limited, were represented by Sujata Chaudhri IP Attorneys and SSP Legal, its local counsel in Mumbai. Rubik’s Brand Limited derives the right to use the RUBIK’S/RUBIK’S CUBE mark from Professor Erno Rubik, a Hungarian professor who created/invented the well-known toy cube puzzle in Hungary in the year 1974. Rubik’s Brand Limited has a substantial business in licensing the RUBIK’S /RUBIK’S CUBE marks, and regularly grants licenses to use the marks RUBIK’S/RUBIK’S CUBE and/or a representation of the 3-D cube to companies around the world. Licensing is Rubik’s Brand Limited’s primary source of revenue. In fact, Rubik’s Brand Limited is no stranger to licensing of its toy puzzle cube in films and commercials. It boasts of licenses granted to well-known films and commercials such as the Play Station 3 Commercial (2006), the Google Play Commercial (2012), Danny MacAskill’s Imaginate (2013), De La Soul’s song “Get Away” (2013), and The Snowden Movie (2016). Mr. Manjrekar, the defendant 1, is a well-known film maker. He has produced a Marathi film named RUBIK’S CUBE that was due for release on April 14, 2017. The plaintiffs learned of the film’s imminent release through a well-known Bollywood web site that featured an article about the film’s music release graced by well-known star, Salman Khan. A promotional poster of the film (shown above) features the mark RUBIK’S CUBE written in four of the six colors of the plaintiffs’ toy puzzle, followed by the tagline “YOU RARELY GET THE COMBINATION RIGHT EVEN IN LOVE”. On first learning about such illegit use, the plaintiffs’ lawyers wrote to the defendants offering them a license to use the mark RUBIK’S CUBE as the title of their film. When no response was forthcoming, the plaintiffs moved the Bombay High Court on, inter alia, the grounds of passing-off, dilution and unfair competition. The Notice of Motion was listed in Justice Patel’s court on the morning of April 5th. While restraining the defendants from, inter alia, releasing the film under the title RUBIK’S CUBE, the learned judge termed the instant case as “one of those rare passing off actions that ought to be decreed the moment it is filed”. Going further the learned judge said that the RUBIK’S CUBE toy puzzle is “an extremely popular puzzle, one that has achieved almost legendary status in the public domain” and that Mr. Manjrekar “ought to be disabused” of the notion that the mark RUBIK’S CUBE can be freely adopted and used at will. Acknowledging the plaintiffs’ exclusive rights in respect of the “well-known puzzle and toy”, Justice Patel has surely given the mark a broad scope of protection across classes. Even further, he conferred the highest degree of protection to the mark RUBIK’S CUBE by recognising it as an invented and coined word. Justice Patel held that the plaintiffs had proved all three elements of passing-off. As regards reputation and goodwill, Justice Patel noted that “there is nothing that the Defendants can possibly say to assail the Plaintiffs’ claims to both”. As for misrepresentation, he noted that the defendants had used the exact mark RUBIK’S CUBE, and, consequently, anyone would be led to believe that the defendants’ film has something to do with “the Plaintiffs’ well-known mark as applied to an extremely popular and well-known puzzle or toy”. As regards the likelihood of damage, Justice Patel held, “there is already considerable damage caused to the Plaintiffs in terms of dilution of their brand and their mark”. He went on to recognize the defendants’ knowledge of the plaintiffs’ RUBIK’S CUBE mark as being apparent from the use of the very mark in the defendants’ promotional poster written in four of the six colours of the puzzle. The tag line, he noted, is a direct reference to the toy itself. The plaintiffs have not viewed Mr. Manjrekar’s film, and do not know whether the mark RUBIK’S CUBE or the three dimensional toy puzzle cube are featured in the film or whether the story line weaves in the cube or the mark RUBIK’S CUBE. Notwithstanding this, the plaintiffs’ position is that even if this were the case, the defendants had no grounds to raise a defense of nominative fair use or any other fair use defense. Mr. Manjrekar surely needs to solve the puzzle he chose to play with, sooner than later. Will he seek a license from the plaintiffs to use the mark or will the movie see the light of the day with a changed name? Surely a twisted puzzle!