A year in review: trademark trends in India

Internet and trademarks

With business conducted over the internet booming and the increasing impact of the online world in India, a large number of trademark disputes before courts over the past year or so involved issues relating to the internet, including the following:

Shreya Singhal v Union of India

In March 2015, the Supreme Court of India decided the constitutional validity of certain sections of the Information and Technology Act, 2000. As a part of this inquiry, the court assessed the constitutional validity of the safe harbour for intermediaries.

The court held that section 79(3)(b) (the safe harbour provision) “has to be read down to mean that the intermediary upon receiving actual knowledge that a court order has been passed asking it to expeditiously remove or disable access to certain material must then fail to expeditiously remove or disable access to that material. This is for the reason that otherwise it would be very difficult for intermediaries like Google, Facebook, etc, to act when millions of requests are made and the intermediary is then to judge as to which of such requests are legitimate and which are not”.

However, the court suggested that the safe harbour pertains only to acts protectable as “freedom of speech and expression” under the Indian constitution. Whether a take-down request for a trademark violation is a part of freedom of speech and expression is an open question.

The impact of this decision has been that intermediaries in India are not required to comply with simple take-down requests. The rights owner now needs a court order for this.

Intex v Snapdeal

In December 2015, the Delhi High Court passed an order where Snapdeal, an online marketplace, agreed to rectify/remove products from Intex’s page on Snapdeal that did not belong to the rights owner.

The court also directed that “should the petitioner come across any further product listed on the web portal which impairs its intellectual property and goodwill, it shall accordingly intimate the respondent who shall then rectify/remove the same within 36 hours”. It requested the need for a court order for each instance of infringement, as required by Shreya Singhal.

OLX v Padawan

In an order of March 2016, the Delhi High Court passed an ex parte interim order restraining a rogue website from ‘web scrapping’, ie, extraction of data from a website, and using the plaintiff’s trademark as a meta tag.

Louis Vuitton v Pankaj Sharma

An ex parte interim order was passed in April 2016 restraining a website selling counterfeit Louis Vuitton products. Given the ‘whack-a-mole’ problem in controlling sales of counterfeits online, this suit has been filed not just against the website operators but also the courier company and bank through which this website is believed to operate.

Trademark rules under revision

The Trade Marks Registry has invited comments on proposed amendments to the Trademark Rules. The key highlights of the proposed amendments are as follows:

Expedited filing and examination

The draft rules propose several changes to streamline trademark prosecution. These include service of documents by email and through uploading documents on the Trade Marks Registry’s website; expedited examination, acceptance and registration of applications upon payment of fee; and signing of oppositions and counter statements by agents.

"a full bench of the Delhi High Court in Data Infosys v Infosys clarified in March 2016 that the court’s permission is not required for filing a rectification against a trademark registration."

Recognition of well-known trademarks

The draft rules propose a procedure for declaring a trademark as well-known by filing an application before the Trade Marks Registry. The registry expects a court order declaring a trademark as well-known before recording it as a well-known trademark.

Mediation before the Trade Marks Registry

In March 2016, the Trade Marks Registry in Delhi introduced a mediation procedure for pending oppositions and rectifications. Parties can agree to mediation by submitting a joint consent form to the registry.

Damages

The year 2015 witnessed the highest award of damages in intellectual property proceedings in India—INR 1 Crore (roughly $150,000) were awarded to Cartier against rogue website digaaz.com and its operators. With online piracy booming in most parts of the world, this order should deter infringers in India.

Back to basics

Over the past year, courts in India decided many interesting trademark law principles, including the following:

Meaning of a mark

In July 2015, a division bench of the Delhi High Court in Shree Nath v Allied Blenders and Distillers upheld the order of a single judge on appeal under its ‘theory of synonyms’, ie, similarity of meaning between words. The court held that infringement and passing
off of a trademark may be likely where the
rival marks, though not identical, convey the same meaning.

Infringement suits

The Supreme Court, in the case of S Syed Mohideen v Sulochana Bai, held that a suit for trademark infringement against a registered owner of an identical or nearly resembling trademark is not maintainable.

Rectification against a mark

A much awaited decision of a full bench of the Delhi High Court in Data Infosys v Infosys clarified in March 2016 that the court’s permission is not required for filing a rectification against a trademark registration during the pendency of litigation.

However, if a party seeks to obtain a stay of the litigation, it will have to satisfy the court over the prima facie invalidity of the mark against which it has filed, or it proposes to file, a rectification.

Descriptive marks

In April 2016, a division bench of the Delhi High Court held in Apple v Rohit Singh that in the context of descriptive trademarks “it is trite that a number of alternative ways of describing a product is no answer to the criticism of the mark being adopted as a trademark”.

Pravin Anand is a managing partner at Anand and Anand. His practice area is IP, litigation and dispute resolution. Anand has been a counsel in several landmark IP cases, has received recognition for pro bono work for rural innovators, and has spoken at various forums. He can be contacted at: pravin@anandandanand.com

Abhilasha Nautiyal is a senior associate in the litigation team at Anand and Anand. She is a graduate of the Army Institute of Law and completed her master’s in law from Harvard Law School. She can be contacted at: abhilasha@anandandanand.com