On March 6, 2017, the Government of India (“GOI”) announced new rules governing trade mark practice. These rules are effective with immediate effect. Set out below is a summary of changes brought about by the new rules. Fee Increase: The filing and processing fees have been increased. Online filings will cost less compared to paper filings. For applications, the filing fee has more than doubled to INR 9,000 (approximately USD 134, as per today’s exchange rate) (small enterprises and start-ups pay approximately USD 67). The filing fee for a renewal is also INR 9,000 (approximately USD 134, as per today’s exchange rate). In respect of oppositions, there is a marginal increase from INR 2,500 to INR 2,700 (approximately USD 40). Increase in fee is also prevalent for assignments, change in name requests as well. Affidavits of Use: The new rules seem to state that if an application is based on use, the applicant will be required to furnish an Affidavit of Use. Although the rules do not explicitly state so, it is possible to file an Affidavit of Use after the filing date. We believe that important change has been brought about because there have been many instances of false use dates in applications. Renewals: It is now possible to renew a registration one year prior to the renewal deadline (the old rules prescribed a six-month period). Well- Known Marks: The rules lay out a well-defined procedure for granting well-known status to a mark. However, the rules do not set a time limit to review and dispose of such applications for well-known mark recognition. Interested applicants must pay a fee of INR 1,00,000 (approximately USD 1500, at today’s exchange rate). The high fee appears to be set in order to reduce the number of requests received. Email Addresses of Applicants: The rules make it mandatory for applicants and other parties filing documents to provide an email address to the Trade Marks Registry. Specification of Goods/ Services: The rules will make it harder for applicants to file for class headings or file broadly. The new rules indicate that the Trade Marks Office will now refuse the application unless there is a justification that the applicant is using or proposing to use the mark in respect of such a broad specification of goods and services. This seems to be a measure to discourage applicants from applying for the class heading and claiming rights in respect of goods and services that the mark may not cover and may never intend to cover. Non- Traditional Marks: The new rules expressly state that applications to register 3- dimensional marks, shape marks as well as sound marks will be accepted. Furthermore, in a welcome step, the Trade Marks Office will accept a thirty second sound clip in mp3 format which can be uploaded when the applicant is applying for a sound mark. Oppositions: It is now possible to file a single Notice of Opposition against a multi-class application. The Registrar is required ordinarily to serve a Notice of Opposition on applicants within 3 months from date of receipt. If an applicant files a counter statement to a Notice of Opposition on the basis of a copy of a Notice of Opposition that is available on the web site of the Trade Marks Office, then requirement to serve the Notice of Opposition is dispensed with. Additionally, to prevent applicants from claiming numerous adjournments in respect of the final hearing, the number of adjournments that can be claimed has been fixed at two with the time limit between each adjournment not being more than thirty days. Imposition of Costs: Significantly, the new rules impose costs upon opposers that file, but do not prosecute, oppositions, and applicants who had reasonable notice of oppositions, but fail to file counter statements. Video Conferencing: It will now be possible to conduct oral hearings through video conference.

This post examines trends emerging from the Delhi High Courts’ decisions of 2016 on the subject of territorial jurisdictions in trade mark and copyright matters, and analyses what complainants should do to avoid an outright rejection of the suit for a lack of territorial jurisdiction. The surest way to fulfill the Delhi High Court’s territorial jurisdiction requirement is to show that a part of the injury suffered by the Complainant has been suffered in Delhi. In recent decisions, the High Court has made it clear that the complaint must clearly explain as to how a part of the injury has been suffered in Delhi, and not merely make the unexplained assertion that it has. This is a significant departure from precedent that required the complaint to merely assert, without substantiation, that a part of the injury has been suffered in Delhi, and leave further elaboration to be done at trial, and not when the complaint is filed. If one cannot show that a part of the injury suffered by the Complainant has been suffered in Delhi, the complainant is left at the mercy of the nuances of statutory interpretation. Depending upon the inclination of the judge to strictly go by what the statute says, the extent to which the judge adheres to the Supreme Court’s decision in IPRS v. Sanjay Dalia, how the judge interprets the legislature’s intent, and the familiarity of the judge with precedent on internet jurisdiction, the court could reach a different conclusion. In such situations, it would serve the complainant well to research the position taken by the judge before whom the matter is listed in his most recent decisions, and seek permission to amend the complaint accordingly, if required. In other words, realism is the best route. By doing so, though the complainant risks compromising the likelihood of obtaining an ex-parte order on appeal, the complainant could, at least, avoid an outright rejection of the suit. Therefore, to avoid a situation where the court does not hear arguments in relation to the grant of an ad-interim injunction because it is not convinced that it has territorial jurisdiction, the complainant should make an effort to investigate if the defendant has any commercial presence, has carried out any professional or business activity, has solicited work, or rendered services under the impugned mark, in Delhi. And as discussed above, to avoid being at the mercy of statutory nuances, it is crucial for the complainant to include details of such an investigation in the complaint.

This post examines trends emerging from the Delhi High Courts’ decisions of 2016 on the subject of territorial jurisdictions in trade mark and copyright matters, and analyses what complainants should do to avoid an outright rejection of the suit for a lack of territorial jurisdiction. The surest way to fulfill the Delhi High Court’s territorial jurisdiction requirement is to show that a part of the injury suffered by the Complainant has been suffered in Delhi. In recent decisions, the High Court has made it clear that the complaint must clearly explain as to how a part of the injury has been suffered in Delhi, and not merely make the unexplained assertion that it has. This is a significant departure from precedent that required the complaint to merely assert, without substantiation, that a part of the injury has been suffered in Delhi, and leave further elaboration to be done at trial, and not when the complaint is filed. If one cannot show that a part of the injury suffered by the Complainant has been suffered in Delhi, the complainant is left at the mercy of the nuances of statutory interpretation. Depending upon the inclination of the judge to strictly go by what the statute says, the extent to which the judge adheres to the Supreme Court’s decision in IPRS v. Sanjay Dalia, how the judge interprets the legislature’s intent, and the familiarity of the judge with precedent on internet jurisdiction, the court could reach a different conclusion. In such situations, it would serve the complainant well to research the position taken by the judge before whom the matter is listed in his most recent decisions, and seek permission to amend the complaint accordingly, if required. In other words, realism is the best route. By doing so, though the complainant risks compromising the likelihood of obtaining an ex-parte order on appeal, the complainant could, at least, avoid an outright rejection of the suit. Therefore, to avoid a situation where the court does not hear arguments in relation to the grant of an ad-interim injunction because it is not convinced that it has territorial jurisdiction, the complainant should make an effort to investigate if the defendant has any commercial presence, has carried out any professional or business activity, has solicited work, or rendered services under the impugned mark, in Delhi. And as discussed above, to avoid being at the mercy of statutory nuances, it is crucial for the complainant to include details of such an investigation in the complaint.

This post outlines the major differences between procedures involved in obtaining a trade mark registration in the United States of America and India. In both countries, only a person with a bona fide intention to use a mark can apply to register it. However, while the United States Patent and Trade Mark Office (“USPTO”) asks for a declaration, made under penalty of perjury, attesting to such bona fide intention, the Trade Marks Registry (“TMR”) does not require such a declaration. Proof of lack of such bona fide intention can have serious consequences in both countries such as invalidation of the resulting registration. In both countries, applications can be filed on the basis of use or proposed use. If filing on the basis of use in the United States of America, an applicant must be using a mark in inter-state commerce or in commerce between the United States of America and a foreign country. Any intra state use is not counted. In India, however, there are no such requirement of inter-state use or use in foreign commerce, as long as a mark is used commercially. In India, it is not necessary to file evidence of use of a mark before obtaining a registration. In the United States of America, however, it is necessary to show use before obtaining a registration subject to some exceptions. Technically speaking, in India, an application can cover class headings. However, in the United States of America, class headings or broad descriptions of goods/services are impermissible. For example, “clothing” will not be acceptable in the United States of America. Each item of clothing must be listed out. In India, responses to Examination Reports must be filed within 1 month or an extension to file a response must be sought. In the United States of America, applicants have 6 months to file responses. No extensions are available. Also, in India, the TMR only issues one Examination Report, unlike the USPTO, which issues more than one. If the USPTO is dissatisfied with arguments filed in a response to an Examination Report, it issues a final Office Action, giving an applicant one more opportunity to file arguments. This is not so in India. Applicants get one opportunity to file responses in writing. If the Registrar is not satisfied with the written arguments, he/she may schedule an oral hearing at which an applicant can present his/her case. The Registrar will typically make a decision at the oral hearing. Furthermore, in the United States of America, an abandoned application may be revived under certain circumstances. In India, however, it is not possible to revive an abandoned application. As regards oppositions, in India, applications are open to oppositions for a 4 month period counted from the date of publication. No extensions are allowed. On the other hand, in the United States of America, an application is open for opposition for 30 days from the publication date. Extensions are available, but only for a maximum period of 180 days. In both countries, applications are examined on formal and substantive grounds, published and Certificates of Registration issued. In the United States of America, however, there is one additional step, namely, the issuance of a Notice of Allowance. This step occurs after publication, and gives an applicant 6 months to file evidence of use of a mark. The 6 month period is extendible for a total of 36 months. Both countries allow applicants to delete goods/services or an entire class from an application. However, in India, an entire class must be deleted only pursuant to division of an application, and letting the divided application with the class that is to be deleted become abandoned. There is no need to divide before deleting a class in the United States of America. Awareness about these differences can help in effective prosecution of applications in both countries.

Copyright is a legal right that protects the interests of creators of original works. One such category of works is “artistic works”. The term “artistic works” brings to mind the paintings and murals of the likes of Van Gogh and Michelangelo. However, to qualify as an “artistic work”, a work need not possess a high level of artistic quality. A work can be an “artistic work” even if it has de minimis artistic quality. However, the work must be “original”. In other words, the work must have been created by an original expression of thought. The expression in the work should be the result of application of skill and judgement on the part of the artist creating the work, that is, the artist must have applied more than some mere mechanical exercise in order to create the work. Consider a situation wherein a company has a logo that is a bird or an animal. Can such bird or animal qualify as an artistic work? Or would copyright protection be denied because the bird or animal is a creation of nature on which no single party can have exclusive rights. The short answer is “yes,” as long as the logo, that is a rendering of a bird or an animal, was created by application of some skill and judgement on the part of the artist. Since a creation of nature can be expressed in innumerable forms, a depiction by an artist, applying his skill and judgement, would be unique to the artist, and thus, capable of copyright protection. Courts in India have time and again recognized that creations of nature can be protected as copyrighted artistic works. For instance, the famous Panda logo of the World Wildlife Federation and the Crocodile logo of the famous French clothing brand, Lacoste, have been recognised as protected artistic works by the Delhi High Court. The requirement of originality, therefore, would not bar a copyright in an artistic work such as a painting or a drawing embodying a creation of nature, such as an animal or a bird, because the originality of the work would be judged on the basis of the manner in which such a creation of nature is depicted and not the idea of the creation of nature itself.

It is not uncommon to see Defendants in trademark infringement law suits challenge the validity of the trademark registration(s) relied upon by Plaintiffs. For a trademark infringement claim to lie, the Plaintiff must have a trademark registration. Challenging the very validity of such a registration, in effect, threatens the claim of trademark infringement in the suit. This post discusses the utility of filing a cancellation action as a defensive strategy to a pending law suit. Parallel proceedings before two forums While suits of trademark infringement and/or passing off are tried by Civil Courts, petitions for cancellation/ rectification of trademarks fall within the exclusive domains of the Trade Marks Registry and the Intellectual Property Appellate Board (“IPAB”). Notably, a cancellation action must necessarily be filed before the IPAB when the validity of a trademark registration is challenged during the pendency of a trademark infringement suit. Owing to such a clear demarcation of powers, Indian trademark law makes it possible for the infringement suit and the cancellation action to proceed simultaneously. Until recently, High Courts were divided in their stance on whether seeking permission of the court trying the infringement suit was necessary before filing a cancellation action before the IPAB. The Delhi High Court, in a momentous decision rendered this year, clarified that such an action by a party to a suit may be initiated without the prior permission from such court. Keeping a Lawsuit in Abeyance by Filing a Cancellation Action Although proceedings before the Civil Court and the IPAB can run parallel without one affecting the other, trademark law also provides the party to a suit seeking to rectify the other’s party trademark, the choice of having the suit stayed and kept in abeyance until the cancellation action is decided by the IPAB. For the suit to be stayed as such, however, such a party to the suit must demonstrate to the court trying the suit that a prima facie case in respect of the invalidity of the trademark exists. Keeping a suit in abeyance until the cancellation action is decided inevitably delays the trial of the suit. Even though the suit may be stayed until the decision in the cancellation action is rendered by the IPAB, under the Indian trademark law, the court trying the suit can still pass interim orders, including injunctions, during the period of the stay of the suit. Therefore, the motion to keep the suit in abeyance, owing to a party opting for a cancellation action, plays only a limited role in stalling the trial of the suit. There may be also situations where a registered trademark owner sues another registered trademark owner for infringement, or a Defendant’s trademark matures to registration during the pendency of the suit. In all practicality, filing a cancellation action against the Defendant’s registration becomes inevitable in such cases. Typically, in situations such as these, where one registered owner is suing another registered owner, the court before which the suit is filed will suspend further action in the suit until the cancellation action is decided. Thus, such a suit cannot proceed independently of a cancellation action. Extent to which a Successful Cancellation Action serves as a Defense to a Lawsuit Succeeding in a cancellation action necessarily means that the once-registered mark is annulled from the Trade Marks Register. Thus, insofar as the suit is based on the ground of trademark infringement, success in a cancellation action is a complete defense. Having said that, it is pertinent to mention that the succeeding in a cancellation action may not be a complete defense to the suit as a whole, in as much as the suit may be based on the additional ground of passing-off. Trademark infringement suits in India are, more often than not, accompanied by the common law ground of passing-off. Thus, even if the Defendant succeeds in annulling the Plaintiff’s registered trademark(s), the Plaintiff may still be able to succeed in the suit based on the passing-off ground. A trademark cancellation action may well be an effective defense to the claim of trademark infringement in a law suit. It, however, has no bearing on the claim of passing-off, and is to that extent, merely a limited defense.

On September 6, 2016, the Delhi High Court granted Seven Towns Limited., the owner of the world-famous RUBIK’s Cube, an interim injunction against a third-party that was manufacturing and selling puzzles under the name of RANCHO’S Cube. The Order can be accessed here. The 50-page decision, rendered by J. Manmohan Singh, succinctly sums up the Indian position on the law of trade dress. The Plaintiff, Seven Towns Ltd., is the proprietor of all rights in the RUBIK’S Cube by virtue of assignment from Erno Rubik, a Hungarian professor, the creator of the cube. Invented in 1974, the cube has been sold extensively and continuously around the world, including in India. The RUBIK’S Cube has been sold in India since 1981. 350 million cubes were sold all over the world until October 8, 2010, the date of filing of the suit. Notably, at the time of filing of the suit, the Plaintiff had not obtained any trade mark registrations for the three-dimensional RUBIK’s Cube in India. Therefore, the Plaintiff’s suit was based on passing-off, unfair competition and copyright in the cube. On the other hand, the Defendants, Kiddiland and Cybershop Marketing Pvt. Ltd., manufactured and sold cube based puzzles under the mark RANCHO’s Cube. In the pleadings, the Plaintiff claimed exclusive rights in the overall look and feel of the cube. It is important to note that the Plaintiff did not claim any exclusivity in the individual features of the cube, but rather the Plaintiff’s claim of exclusivity spanned the features put together. These features include the black border/cage of the cube consisting of lines of a particular width along with each of its six faces covered with nine square stickers with rounded edges, the stickers consist of particular shades of six solid colors namely red, blue, orange, green, white and yellow, along with the whole packaging and label of the cube. The Court found that, prima facie, the overall look and feel of the RUBIK’S Cube, i.e., the trade dress, of the RUBIK’s cube is protectable. The Court disagreed with the Defendants that the Plaintiff was trying to monopolize functional colors of the puzzle cube. It agreed with the Plaintiff and held that it was not seeking protection in any single feature of the RUBIK’S Cube, but a combination of all these features as described above. Having decided that, prima facie, the trade dress of the RUBIK’S Cube is protectable, J. Manmohan Singh found that the dissimilarities between the Defendants’ Cube and the RUBIK’S Cube, inter alia, were insufficient to distinguish them. The court held that it is required to pay more attention to the points of similarities, and less to the points of dissimilarities, particularly, in a case like this where the Defendants’ dishonesty was apparent. As a second comer, the burden to show honest use lies on the Defendants. The Defendants had numerous permutations and combinations of designs, colors and graphics to choose from. Yet, they chose to manufacture and sell a cube whose overall look and feel resembled the RUBIK’S Cube. If the Defendants were honest business men, it should not have been very difficult for them to choose a trade dress which causes no confusion between their cube and the RUBIK’S Cube. The court ordered that trial in the matter be expedited.

A recent judgment of the Delhi High Court involving a photocopying shop operating in the prestigious Delhi University’s campus is expected to have far reaching consequences in the field of copyright law in India. The judgment is the result of a 2012 suit that was filed by various publishers, including Oxford University Press, Cambridge University Press and Taylor & Francis against the defendants, Rameshwari Photocopy Service and the University of Delhi, seeking to restrain the defendants from photocopying, reproduction and distribution of copies of the plaintiffs’ publications for students. The Delhi High Court held that the defendants were not liable for copyright infringement under Indian law. A copy of the 94 page judgment is accessible here. In the extremely reasoned judgment, the Court examined, at length, the arguments made by both sides and stated that “copyright, especially in literary works, is thus not an inevitable, divine, or natural right that confers on authors the absolute ownership of their creations. It is designed rather to stimulate activity and progress in the arts for the intellectual enrichment of the public. Copyright is intended to increase and not to impede the harvest of knowledge.” It held that the acts of the defendants fall within the scope of the exceptions provided by the law on copyright, namely, reproduction of any work i) by a teacher or a pupil in the course of instruction; or ii) as part of the questions to be answered in an examination; or iii) in answers to such questions. The Court considered whether the defendants’ course packs, i.e., a printed collection of assigned readings for a college course, typically including an assortment of periodical articles or sections of longer books, fall within the above exceptions. The plaintiffs tried to provide a narrow reading of the exceptions, claiming that, at best the law on copyright allows for the provision of materials in the course of a lecture and spatially restricted to a classroom. The Court, while rejecting this claim, stated that “instruction’ cannot be narrowly understood and, through a historically informed reading of the phrase ‘in the course of’ concluded that instruction includes the entire ambit of pedagogy from the creation of syllabus to teaching and provision of reading materials. While discussing advancements made in technology, the Court unequivocally held that advancement of technology cannot, and should not, cause a legal act to become illegal. The Court stated that, “when an action, if onerously done, is not an offence, it cannot become an offence when, owing to advancement in technology doing thereof has been simplified”. The Court, in order to cement this point further, stated “photocopiers have just made the task simpler and faster, but if the act of copying for a particular purpose is itself not illegal, and the effect of the action is the same, the difference in the mode of action cannot make a difference so as to make one an offence”. In conclusion the judgement stated that, “Indian law makers have allowed through statute for the reproduction of a copyrighted work in the course of instruction, on the basis of purpose and with the conviction that this does not unreasonably prejudice the legitimate interest of the author. Further, this flexibility is provided to it through international law, and it is not the place of courts to impose artificial restrictions by way of quantitative limits.” The Court, in its judgement, has clearly recognized the socio-economic realities of India, namely, that libraries and universities have to cope with the needs of thousands of students simultaneously, and students cannot be expected to buy every book prescribed by an educational institution. Lastly, the Court held that no trial was required

Filing a trade mark application in India should be simple, right? Wrong. Consulting with a specialist is a good idea because there are many nuances to an application in India and ignorance regarding these nuances could cost you heavy. 1. Which is the appropriate application? Currently it is possible to file twelve (12) different types of applications to register a trade mark. Based on the information you provide, a specialist can assist in deciding the most appropriate application to file. Failure to file the correct application could render your application unacceptable, leading to a loss of rights that you have claimed. 2. What mark to apply for? Should you file for just the word or just a design or for a composite mark? These decisions are important because failure to apply for the appropriate mark may jeopardize your ensuing registration on the ground that you have not used the mark applied-for. 3. Who should be the applicant? The law mandates that only a proprietor of a mark can be an applicant. Thus, any party that is using or intends to use a mark should be the applicant. Often times, an application is filed in the name of an individual as opposed to a company or a firm. This approach could cost you dearly because if it turns out that the individual applicant did not use or intend to use the mark (separate from the company), the application could be void ab initio. It is not possible to correct a wrong applicant later on (although typographical errors can be corrected). 4. Goods and services. Every application must contain a description of goods and services. You must be familiar with the Nice classification to frame an acceptable description. Furthermore, it is important that an application list only those goods/services on or in relation to which there is bona fide/genuine use or intention to use. 5. Earliest use date. You will need to provide a date when the mark was first used in India in respect of the goods/services covered by the application. The term ‘use’ is construed broadly and is not restricted to application of a mark on goods. Pre-launch activities in India might also constitute use under certain circumstances. Failure to provide an accurate use date could be a ground to cancel your registration, once it issues. For the above reasons, some of which could render your trade mark application void ab initio, it is important that you consult with a specialist before filing.

Despite gradual improvements over the years, the time frame from filing to decision in civil suits in India tends to be very long, only to get further elongated if the other side deploys delaying tactics, and significantly so if a plaintiff does not take appropriate counter-measures. Though recent amendments to procedural law promise to address the issue of delayed injunctions, only time will ascertain how these amendments take effect. Sometimes courts can take upward of 1 year to grant interim injunctions. In trade mark and copyright cases, such a time frame hardly helps a plaintiff’s case. Thus, it is very important to devise an enforcement strategy that deploys civil litigation effectively. The ability of civil courts to grant special interim injunctions in the nascent stages of the suit, and even without hearing the opposite side, significantly enhance the feasibility of civil litigation as an enforcement strategy. These special interim injunctions, known as ex-parte and ad-interim injunctions, are discussed below. What are Ex-Parte and Ad-Interim Injunctions, and Why Are They Useful Procedural law governing civil suits in India allows courts to grant injunctions without hearing the other side – also known as ex-parte injunctions. If a plaintiff asks a court to grant an ex-parte injunction, a court will usually hear the plaintiff within 1-3 days from the date of filing of a suit accompanied by an application for grant of such an injunction. Ex-parte injunctions are usually worded, so that they operate only till the next date of hearing at which the defendant is given an opportunity to present its case. Even if the court refuses to grant an ex-parte injunction, it is still possible to press for an ad-interim injunction. An ad-interim injunction is granted after hearing a defendant and operates only till the next date of hearing. A significant advantage of obtaining an ad-interim injunction (either ex-parte or otherwise) is that it is generally extended to subsequent hearing dates, unless and until the other side challenges it and succeeds – which may not happen soon. What factors affect the grant of Ex-Parte and Ad-Interim Injunctions Delay of even a few days in filing a complaint since discovering an infringer may seriously affect the grant of an ex-parte injunction. On the other hand, for an ad-interim injunction, delay of a month to six weeks may not be fatal. Even if the delay has no bearing on the final outcome of the suit, it is a convenient means by which courts can deny ex-parte or ad-interim injunctions. In ex-parte cases, courts at times infer the possibility of delay if the defendant is highly invested in the trademark in question. Another significant factor that is pivotal to the grant of an ex-parte decision is whether the mark is inherently distinctive or not. For instance, in a recent string of decisions, the Delhi High Court has made it clear that no ex-parte injunction is to be granted unless the mark is inherently distinctive. Strategic Takeaways Pressing for ex-parte and ad-interim injunctions could be incredibly important where an infringer is a competitor. Though ex-parte and ad-interim injunctions may pressure a defendant to opt for an early settlement, this may not always happen – particularly if the defendant is financially strong. Such injunctions may even trigger a defendnat to try his luck and file a cancellation action against your registered mark on which the suit is based. To sum, though ex-parte and ad-interim injunctions promise an early settlement in your favor, a prolonged legal battle in multiple forums is also possible. Obtaining a fair legal opinion of whether your trademark is inherently distinctive under Indian law could give you a realistic idea as to whether you have any chance at all in obtaining an ex-parte injunction. If an ex-parte injunction is unlikely, it is still possible to press for an ad-interim injunction aggressively on each hearing date. Unlike ex-parte injunctions where even a delay of few days could be fatal, the chances of obtaining ad-interim injunctions may still be good even if there is a month’s delay in bringing a suit. Moreover, having evidence that the mark was used in bad faith (such as non-response to legal notices, being a former contractor/licensee/employee) would also assist in improving your chances of success in obtaining an ad-interim injunction. The strategic benefits of obtaining ex-parte and ad-interim injunctions are best summarized by Sun Tzu – Attack him where he is unprepared, appear where you are not expected.