India has a well-developed system of oppositions to registrations of trade marks.  All oppositions must be filed at one of the five (5) Trade Marks Registry (“Registry”) offices located in Delhi, Mumbai, Kolkata, Chennai and Ahmedabad.  The office in which the opposed application has been filed determines the office in which the opposition must be filed.  However, in recent times, it has become possible to file oppositions electronically through the Registry’s online filing gateway.  Accordingly, for e-filed oppositions, the question of the office in which the opposition should be filed is moot. All oppositions must be filed within a non-extendible four (4) month window counted from the date of publication of an application in the weekly Trade Marks Journal.  Thus, the Registry gives sufficient time for a potential opposer to contact an applicant to attempt settlement, assuming a settlement is possible.  Since opposition proceedings are often protracted, and parties could end up settling anyways, the 4 month window could be beneficial in avoiding unnecessary expenditure of resources.  Sometimes, however, settlement overtures do not yield results until an applicant is faced with a filed Notice of Opposition.  In such cases, opposers might not be left with any choice, but to file a Notice of Opposition and attempt settlement.  The law does not provide for suspension of opposition proceedings owing to settlement negotiations.  However, practically speaking, this is not disadvantageous to parties because, currently, opposition proceedings tend to be quite protracted, giving enough time to parties to reach a settlement. The law provides a potential opposer several grounds on which to base an opposition.  Thus, an opposer could bring an opposition on the basis of lack of distinctiveness, a prior Indian registration, a prior Indian application, prior adoption of a mark in India or abroad, well-known status of a mark, etc.  It is noteworthy that an opposition can even be based on prior use of a mark outside India if such use is extensive (both in volume and geography) and continuous such that consumers in India are aware of the opposer’s mark and associate it with a single source.  Often this available ground has provided solace to foreign brand owners who have well-known brands, but no Indian presence!  The law also states that an opposition can be filed on the ground that use of a mark India is liable to be prevent under copyright law. Modernization efforts at the Trade Marks Registry have been ongoing for some time now.  A majority of filings are done through the e-filing gateway, including oppositions.  Insofar as opposition proceedings are concerned, the e-filing gateway works well and ensures instant proof of filing and updating of records.  Unlike some countries such as the United States, parties to a contested opposition proceeding must appear for an oral hearing.  Owing to the immense backlog at the Trade Marks Registry, it has been taking years for oral hearings to be scheduled.  This may change in times to come!  Recently the Registry initiated a special hearing drive aimed at disposing off matters in which parties had arrived at a settlement or applicants had withdrawn their applications pursuant to the opposition. We expect the Registry to announce a special hearing drive for contested opposition matters soon!

In my career as an IP professional so far, the myth that I have heard most from unwary clients is that an idea is protectable by way of copyright. However, the truth is that an idea is never the subject of a copyright, it is the expression of the idea that is. For instance, if X has a radical idea of a board game, the idea itself cannot be protected by copyright. However, when X actually goes ahead and implements that idea by creating a board game in a tangible form, it becomes eligible for copyright protection. Similarly, the lyrics of a song are not protectable till they are still in the mind of the lyricist. The lyrics need to be jotted down to be protectable as a copyright. It follows that there cannot be any copyright infringement of an idea. However, copyright in a particular expression of an idea bay me infringed. The problem arises when it becomes difficult to separate the idea from the expression of that idea. In certain situations, an idea may be such that it is only possible to express it in a certain way (Idea-Expression Dichotomy). In that case, can that expression of idea be copyrighted? A landmark case in the US answered this question way back in the year 1879, i.e. Baker v. Seldon (101 U.S. 99). Seldon sued Baker alleging copyright infringement for copying of certain ledgers that Baker proposed in his book that described a new way of book-keeping. The US Supreme Court held that the ledger forms that Seldon sought to protect could not be protected under copyright as these forms are necessary to use the book keeping system. In the context of this case, the answer to the question posed in the previous paragraph is a resounding ‘NO’. To sum up, when an idea can be expressed in no more than one way (or in extremely limited ways), it is barred from being a subject of copyright and thus exclusivity. When the idea and expression are so bound together, in a way that there are exceptionally limited ways of expressing it, the expression of that idea becomes incapable of being copyrighted for that very reason. Simply put, since ideas cannot be copyrighted, the limited ways to express the idea cannot be copyrighted because the idea behind the work merges with its expression and copyright of an expression of an idea in such a case would tantamount to copyright of the idea itself which is not permitted by law. Whether or not the Court would apply the doctrine of merger to a certain fact scenario depends on how broad the “idea” is. The doctrine of merger also counters the free speech concerns raised in discussions on copyright. This is because expression necessary to spread ideas are not permitted to be monopolized when there are extremely limited ways of expressing it. The doctrine of merger has been applied by Courts in India too from time to time.  A landmark judgment which discusses the doctrine of merger in detail is the Scrabble Judgment delivered in the case of Mattel, Inc. & Ors. v. Mr. Jayant Agarwalla & Ors, by Justice Ravindra Bhatt of the Delhi High Court.  The Plaintiffs claimed that the Defendants infringed their copyright and trademark in “SCRABBLE” when they launched an online version of their game under the mark “SCRABULOUS” and the same was even available of Facebook. Referring to previous cases, the Court squarely agreed that the doctrine of merger is particularly applicable to games because they consist of abstract rules and play ideas. The Court also dissected the various elements in the game of scrabble as copyright and Trade Mark protection was covered under various elements such as the Rules, the name “Scrabble”, the design of the game etc. The following observation of the Court is extremely pertinent in this regard: “By way of illustration, the arrangement of colours, values on the board, the collocation of lines, value for individual alphabetical tiles, etc have no intrinsic meaning, but for the rules. If these rules- which form the only method of expressing the underlying idea are to be subject to copyright, the idea in the game would be given monopoly: a result not intended by the lawmakers, who only wanted expression of ideas to be protected. Thus, this court concludes, prima facie, that the copyright claim of the plaintiff cannot be granted.” The doctrine of merger is a very important concept which has been recognized and applied globally. The doctrine helps in checking the over reach of copyright to ensure that things which public should have access to are not kept from the public.

The Delhi High Court rendered its preliminary opinion on 31st October, 2014 on a rather unique trademark and copyright dispute. The dispute surrounds the use of animated firefighters in a television advertisement for an antacid to extinguish a ‘fire’ in the actor’s stomach (the fire being symbolic of heartburn caused by acid reflux which antacids cure). Reckitt Benckiser (India) Limited (“Reckitt”), owner of a trade mark registration of the FIREMAN (Device) (depicted below), devised an advertising campaign for its antacid branded GAVISCON which includes a television commercial which portrays the fire fighter from the trade mark registration entering a person’s stomach and treating heartburn and other gastro-oesophageal reflux diseases by sprinkling GAVISCON on the oesophagus and the stomach walls. For a frame-by-frame depiction of the advertisement, please see page 4 of the original judgment here. Reckitt sued Dabur India Limited (“Dabur”) for trademark infringement, copyright infringement and passing off on the basis that Dabur is airing a television commercial for its product PUDIN HARA FIZZ which has copied (allegedly) the original script of Reckitt’s television commercial, has used a virtually identical FIREMAN (Device) and has used the term ‘FIRE BRIGADE’ in its television commercial. For a frame-by-frame comparison of both advertisements, please see page 29 of the original judgment. The Delhi High Court ruled that a claim for trademark infringement cannot be sustained as Dabur was not using the FIREMAN (Device) on its products and was merely using it as part of its TV advertisements. In addition, the Court essentially found Reckitt’s FIREMAN (DEVICE) to be different in appearance to the depiction of firemen being used by Dabur in its TV advertisements. The Delhi High Court also ruled that a case for passing off is not made out as Dabur’s product was available in the Indian market since before Reckitt’s product was launched in India. Reckitt did attempt to establish that its product and the advertising campaign had spilled over into India long before the launched of the product by pointing to the advertisements being available on Youtube but the Judge was not convinced. The Delhi High Court also rejected the claim for copyright infringement since it considered the depiction of firemen extinguishing fire inside a human stomach, a concept or an idea and it is a well-settled principle of copyright law that a mere idea is not protectable. While the Court out rightly denied all of Reckitt’s plea. It did order Dabur to only make changes to the TV advertisement after seeking prior approval from Court. This judgment reinforces the fact that mere ideas are not protectable and that to establish trademark infringement, it is important to establish use of the mark in question on actual goods.

The office of the Controller General of Patents, Designs and Trade Marks (CGPDT) has introduced the e-filing of design applications. This is part of the recent activity and measures which have been taken by the office to decrease the usage of paper and to make filing an easier and more efficient. Agents and attorneys can continue to use the same digital signature that are currently in use for trademarks and patents. The payment gateway also follows the same system adopted by the Trade Marks Office and payment can be made through numerous methods such as net banking, debit card and credit card payments. The efforts of the CGPDT have to be lauded. Time will tell how efficient the system is and if it will result in quicker registrations.

As a lawyer trained primarily in the United States, the approach that Indian courts have taken on the issue of trans-border reputation has been a fascinating revelation for me.  This approach is quite diametrically opposite to the approach taken by US courts. US courts have strictly enforced the territorial nature of trade marks.  A prime example is a case involving ITC and its BUKHARA mark.  In this case, a New York court held that ITC could not stop a local BUKHARA restaurant (set up by ex-employees of its famous Bukhara restaurant in India) because ITC did not use its BUKHARA mark in the United States.  As per the Court, although the United States is a signatory to the Paris Convention, the Paris Convention is not self-executing.  Accordingly Article 6bis of the Convention could not be read into US trade mark law.  Indian courts, on the other hand, have, since the 1990s, recognized trans-border reputation.  Thus, Indian jurisprudence has established that even if a mark is not used and/or registered in the country, it can acquire a reputation and enjoy protection here under certain circumstances.  Courts have noted that goodwill is not limited to a particular country because trade is spread all over the world and goods are transported freely across borders.  Thus, goodwill is not limited to countries where such goods are available because they may be advertised in those countries where they are not available.  A good example is Mind Gym Limited v. Mind Gym Kids Library Private Limited decided by the Delhi High court last year.  In this case, the court held that the plaintiff had made out a prima facie case for passing-off on the basis of trans-border reputation. Clearly Indian law appears more in tune with the times and caters to the concept of the world being one big marketplace.  For foreign brand owners, seeking early registration of their marks in India is recommended even if their plans to enter the Indian market are not imminent.  However, even if a brand owner neglects to seek registration here, it may be successful in enforcing rights locally if it can show that owing to extensive use of its brand outside of India, consumers in India associate the brand with a single source.

The introduction of the new law governing companies in India, namely, The Companies Act, 2013, has brought about the issue of Corporate Social Responsibility (CSR) to the forefront. CSR is basically a management concept by which companies integrate social and environmental concerns in their business operations. As per the law, every company, private limited or public limited, which either has a net worth of INR 500 crore or a turnover of INR 1,000 crore or net profit of INR 5 crore, needs to spend at least 2% of its average net profit for the immediately preceding three financial years on corporate social responsibility activities. Strategic CSR is an evolution of CSR where CSR becomes the core competency of the Company rather than just a part of the company policy and CSR becomes the company’s goal. The question is if Strategic CSR can enable a company to grow as the investment needed is huge. The development of the Prius by Toyota Motor Corporation is a good example of Strategic CSR.  Toyota stole a march on its competitors by creating a car that was not only innovative, but also had competitive advantages and environmental benefits.  Toyota patented the technologies relating to the car.  Toyota took such a huge lead that competitors such as Ford and others started licensing the technology from Toyota.  Thus Toyota was able to monetize its intellectual property.  Toyota was able to do this only because Strategic CSR was the core competency of the company. The intellectual property enabled the company to gain and grow. This is but a tiny example of how a company can innovate and create intellectual property through the adoption and use of Strategic CSR as its goal and objective. Indian companies that have lagged in the innovation department have a huge opportunity to charter a new course which will result creation of intellectual property and thereby expand their revenue stream.

The new government has announced the “Make in India” initiative (http://www.makeinindia.com/).  The objective of this initiative is to bring investment to India by encouraging investors to manufacture in India.    How the initiative plays out, only time will tell.  From the standpoint of foreign companies, the question of intellectual property protection in the country will undoubtedly play an important role.  The new government will need to address this seriously.  The web site mentioned above has page devoted to intellectual property.   The page talks about the extensive digitization efforts of the Trade Marks, Patents and Designs offices, the accession to the Madrid Protocol and other important strides in India’s intellectual property regime.  However, more will need to be done on the improving the intellectual property regime to allay fears of overseas investors.  In particular, there is no discussion on the rampant problem of counterfeiting.  In a recent survey, amongst 30 countries the Global Intellectual Property Centre (a group within the US Chamber of Commerce), India was ranked a lowly 29.   The Global Intellectual Property Centre stated that the government was making the right noises but more needed to be done especially to address online and physical piracy.  We hope that the “Make in India” initiative will become reality through positive improvements in intellectual property regime.

A hashtag is a word or an unspaced phrase prefixed with the hash character (or number sign), #, to form a label. A hashtag allows grouping of similarly tagged messages, and also allows an electronic search to return all messages that contain it. Because of its widespread use, the word, hashtag, was added to the Oxford English Dictionary in June 2014.[1] While the use of the hashtag was first introduced on the micro blogging site Twitter in 2007, its use has increased significantly in the past few years and has expanded to reach almost all social networking websites including giants such as Facebook and Instagram. The idea is for posts and messages regarding a common topic to be accessible at a single place by tagging them with suitable hashtags. The soaring popularity of hashtags has also seen trademarks and company names being used as hashtags by consumers around the world to share their experiences surrounding the trademark and its related products or businesses. However, trademarks have also been misused in the guise of hashtags by competitors. Such free and extensive use of trademarks and company names as hashtags raises some important questions: Can hashtags be trademarked? The Indian Trade Mark Act defines a trademark as “…a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others…”. A hashtag falls squarely within this definition which leads us to believe that a hashtag can be trademarked in India as long as it is meant to be used in connection with a product and service in a way that the hashtag acts as a source identifier. This means that in relation to products, the hashtag must be present on the goods or packaging and in relation to services, the hashtag must be used in relation to performing or advertising the services. Can use of hashtags containing registered trademarks be considered infringement? Considering that hashtags may be used be each and every internet user in the world, regulating its use is nearly impossible for obvious reasons. If a consumer publishes a post and tags it with a hashtag containing a trademark, can the trademark owner stop him from doing so? It depends. According to the Indian Trade Mark Act, “a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark” The important point to note here is that in order to constitute infringement, a mark must be used in the course of trade. Majority of the use of hash tags containing trade marks or business names by internet users is simply for discussions, reviews, criticisms and feedback surrounding a particular product or service. Such use cannot constitute trade mark infringement. However, if a hashtag is used in the course of trade, i.e. on products or in advertising a service, it may constitute trademark infringement. Thus, the context of use of a particular hashtag is important to ascertain whether that particular type of use can be stopped or not. The intention of the user of the hashtag will be an important consideration. If the intention is to deceive the public or suggest some sort of a false association, infringement could be established. What remedies are available to brand owners? A majority of the social media platforms today have policies in place to curb the misuse of trade marks by its users. These general policies would apply to the use of hashtags as well. For example, Facebook has a “Statement of Rights and Responsibilities”[2] governing the relationship between Facebook and its users. It prohibits Facebook users from violating trade-mark rights of other users. The social network also provides a mechanism for “reporting trademark infringement”. Instagram has a similar statement and reporting system. If brand owners see misuse of their trademarks in the guise of hashtags they may use these online mechanisms to report such misuse and have a specific post taken down. #Hashtag – #Friend or #Foe? Is the rise of hashtags a good thing for businesses or a bad thing? There are good arguments on both sides. While unregulated use of hashtags containing trademarks may harm the long term reputation of business and may lead to dilution of a trademark, hashtags can also be smartly used by brand owners to heavily promote products. Many companies have already manipulated hashtags to their own benefits. For example, a hashtag which suddenly becomes popular is termed as a trending hashtag and is displayed on users’ homepages. If brand owners can manage to make hashtags containing their trademarks ‘trend’ on social network, it leads to mass advertising free of cost which will ultimately drive sales. Conclusion Many brand owners have already commenced trademarking hashtags to protect their rights online. However, merely trademarking hashtags will not help. Brand owners need to monitor use of hashtags containing their trademarks very closely to prevent loss of reputation. At the same time, they need to learn how to leverage hashtags as a powerful advertising tool. While there have not yet been any disputes surrounding use of hashtags which have reached the Indian Courts, it cannot be too long before we see these disputes springing up.  #watchthisspaceformore [1] http://en.wikipedia.org/wiki/Hashtag last accessed on 19 January, 2015 [2] https://www.facebook.com/legal/terms?ref=pf last accessed on 19 January, 2015 Image courtesy: blog.touchedeclavier.com

Burger King comes to India.  The US-based fast food chain has finally arrived in India and has aggressive expansion plans!  The chain’s advent was marked by a judgment of the Delhi High Court in which the court ordered a status quo on all legal proceedings against Burger King. The fast food giant is in the midst of a trade mark dispute in India.  Apprehending that the defendants in the dispute could endanger its India launch by getting a stay on the launch, Burger King approached the Delhi High Court for an order to restrain the defendants in the pending trademark infringement suit from approaching lower courts for stay orders against its launch and all the disputes surrounding its trademark should be brought only in the Delhi High Court, where the case is pending. The Delhi High Court granted a stay. In another case, Red Chillies Entertainments Private Limited, a film production company owned by India’s biggest movie star, Shah Rukh Khan, obtained a John Doe order from the Bombay High Court restraining any person from “telecasting /broadcasting /distributing /putting on the cable TV network /disseminating /reproducing or otherwise making available to the public, Khan’s latest blockbuster, Happy New Year (Red Chillies Entertainments Private Limited v. Hathway Cable Datacom Limited, SUIT (L) No. 933 of 2014) Order . Red Chillies had approached the Bombay High Court apprehending that simultaneously with the film’s release, piratical copies of the film would be rampant. The Delhi High Court granted a John Doe order to SanDisk Corporation, the world’s largest provider of flash memory storage devices under the name SanDisk.  By way of background, SanDisk had contented that,certain unknown persons were initially selling counterfeit products under the SANDISK mark from Daryaganj, Old Delhi.  After SandDisk obtained an injunction, these persons started selling counterfeits at temporary Sunday markets at Daryaganj, Old Delhi. However, SanDisk contented that it was impossible to identify the names of such persons as they were majorly impermanent operators, who sold counterfeit products and thereafter vanished to avoid the orders of injunction (M/S SanDisk Corporation v. John Doe/s CS(OS) 3205/2014) . High Courts in India continue to decide cases that further the interests of brand owners.  The two John Doe cases discussed above are noteworthy because they demonstrate the courts’ attempts to tackle the widespread issue of counterfeiting in India.  The Burger King decision is important because it demonstrates the willingness of the Delhi High Court to grant an injunction on the basis of an allegation of worldwide reputation and goodwill of its brand.

On 15 October 2014, a division bench of the Delhi High Court held, in World Wrestling Entertainment v. M/S Reshma Collection & Ors, FAO(OS) 506/2013, that in cases where a plaintiff sells goods via its web site, a buyer’s place of residence can determine jurisdiction. By way of background, in October 2013, a single judge bench of the Delhi High Court had held that the court did not have jurisdiction to decide a trade mark infringement and passing-off case case involving World Wrestling Entertainment, Inc. (‘WWE”), a U.S. based entertainment company and a Mumbai-based defendant, Reshma Collections, which was alleged to be selling merchandise bearing WWE’s marks.  The single judge had held that Delhi High Court did not have jurisdiction because WWE did not carry on business in Delhi. World Wrestling Entertainment v. M/S Reshma Collection & Ors. CS (OS) 1801/2013. WWE appealed the single bench’s decision.  The division bench of the High Court reversed the decision. Section 134(1) of the Trade Marks Act, 1999 (“Act”) states that a suit for infringement or passing-off must be instituted in a court that is not inferior to a District Court that has jurisdiction to try the suit.  Section 134(2) of the Act states that such a suit must be brought in a court within the local limits of whose jurisdiction, at the time of institution of the suit, the person instituting the suit  actually or voluntarily resides, or carries on business, or works for gain. Thus, WWE contended that the Delhi High Court has jurisdiction in this lawsuit for trade mark infringement or passing-off because its television programs were broadcast in Delhi, it sold books and merchandise in Delhi and its goods and services are sold to Delhi consumers via its web sites.  The single bench of the Delhi High Court held that these factors were insufficient to confer jurisdiction on the court. The division bench stated that the entire case hinges on the interpretation of the phrase “carries on business” in Section 134 of the Trade Marks Act.  The Supreme Court’s decision in Dodha House v.  SK Maingi, 2006 (32) PTC, laid down the meaning of “carries on business.” In the case, the Supreme Court had held that a person is said to carry on business at a place when he has an “interest in a business at that place, a voice in what is done, a share in the gain or loss and some control at that place”.  Dodha also recognized that a person may carry on business at a place by himself or through an agent or a manager.  However, in such cases, it is necessary that (i) the agent must be a special agent who attends exclusively to the business of the principal and carries it on in the name of the principal and not as a general agent who does business for any one that pays him; (ii) the person acting as agent must be an agent in the strict sense of the term; and (iii) the essential part of the business must be performed at that place. Here, the plaintiff, WWE, does not have an agent or manager in Delhi.  Thus, the first two conditions of Dodha are not relevant.  The court then considered the third conduction, namely, whether an essential part of WWE’s business is performed in Delhi in light of how business is done over the Internet.  If a customer in Delhi wishes to purchase goods/services from the plaintiff’s web site, the customer must access the web site on his or her computer in Delhi, must place the order on the web site from Delhi, and make payment either through a credit/ debit card or through a cash card from Delhi.   Ultimately the goods/services are delivered to the customer in Delhi.  The court then focused on the following question, namely, that when a transaction takes place over the Internet, where is the contract concluded? Holding that the Supreme Court’s decision in Bhagwan Goverdhandas Kedia v. Girdharilal Parshottamdas & Co. 1966 AIR 543 was instructive, the court stated that the plaintiff’s web site in this case is an invitation to offer, not an offer itself. It becomes an offer when the invitation is accepted by the consumer residing in Delhi, i.e., when a consumer in Delhi places an order.  When through the mode of the software and browser, the transaction is confirmed and payment made to the plaintiff, the customer accepts the offer at Delhi.  Since the transaction is instantaneous, the acceptance of the offer by the web site is instantaneously communicated to its customer via the Internet at Delhi.  As the offers are made by customers at Delhi, subject to confirmation/ acceptance of the appellant/ plaintiff through its website, the payment transaction would emanate from Delhi, court held that, to a certain extent, WWE is carrying on business at Delhi.  The court concluded by stating that “ because of the advancements in technology and the rapid growth of new models of conducting business over the internet, it is possible for an entity to have a virtual presence in a place which is located at a distance from the place where it has a physical presence.” Thus, the ruling of the division bench makes it clear that retailers can bring trade mark infringement lawsuits where they have made sales.