This article has been written by Vansh Bajaj pursuing the Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. This article has been edited by Aatima Bhatia (Associate, Lawsikho), Ruchika Mohapatra (Associate, Lawsikho) and Indrasish Majumdar (Intern at Lawsikho).
This article has been published by Oishika Banerji.
A trademark can be a word, phrase, or logo that becomes the identity of the goods or services. Trademark law protects a business’s identity or brand by restricting other businesses from adopting a name or logo that is “confusingly similar” to an existing trademark. However, if we have to address trademark as per Trademark Act, 1999, we have to refer to Section 2(1)(e) which defines certification trademark as a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which is certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so certified and registrable as such under Chapter IX in respect of those goods or services in the name, as proprietor of the certification trademark, of that person.
The aspects which are guarded by the trademark law are as follows:
- Combination of those that represent a source of goods or services.
Trademark infringement is the unauthorized and illegal use of a trademark or service mark when such use could lead to confusion between the original trademark and a mark that is used later. Through this article, the author seeks to deal with various laws on trademark vis-a-vis landmark cases on trademark infringement.
In 2001, Starbucks, in India, registered their trademark with a word-mark pronounced as STARBUCKS along with a logo visualising “crowned maiden with long hair”. Whereas, the defendant, being a local vendor, initiated his business in 2015, with a name called “Sardarbuksh Coffee & Co”. Slowly and steadily the defendant earned fame and as a result, in May 2018, the defendants formed a private limited company with the name “Sardar Buksh Private Limited”. Pouring some light on the logo of the defendant, you will see a circular black band with the words ‘SARDARBUKSH COFFEE & CO.’ and a turban Commander along with wavy lines extending from the edges.
Everything was going smooth for the defendant, however, recently, Starbucks filed a suit against them in the Hon’ble Delhi High Court. The ground for the case was “duplicitous word mark and logo” also legally known as “deceptively similar analogy”.
- The court’s insight
The first and foremost aspect noted by the court was the product both the companies were dealing with as it is an unwritten yet significant rule that if companies to the suit is dealing with a different product, then having a name almost identical still won’t be counted as an infringement. However, in our scenario, the product was identical which took the proceeding to the next step.
Moving further, the court observed that the name used by the defendant was, to a large extent, confusing. As a consequence, the court ordered the defendant to change the name of its outlet to “Sardarji-Bakhsh Coffee and Co.” from “Sardarbuksh Coffee & Co”. However, the court provided a privilege to the defendant that if any other third party, in future, uses the word mark “Bakhsh” the defendant can sue them for the same. Now, the defendant operates with the name uttered as “Sardarji-Bakhsh Coffee and Co”.
Maaza was first introduced by the company named “Bisleri International Pvt Ltd”, a company famous for providing mineral water. However, lately, Coca-Cola approached Bisleri and acquired the rights attached to the product “Maaza”. Such rights include but are not restricted to the right to formulate and Intellectual property rights. Both the companies signed a deed for transferring the rights. some of the chief clauses of the deeds were:
- Acquisition of goodwill.
- Transfer of the know-how.
- Transfer of the IPR.
- No-use and no-compete clause.
However, in 2008, the Bisleri applied for trademark registration of “Maaza” in Turkey and on the same trademark, they started exporting their product named “Maaza” from India to Turkey. Lately, when Coca-Cola got to know about the same, they filed a case of trademark infringement in Delhi High Court where three issues were raised, which were as follows:
- The trademark has been infringed or not?
- If infringed then whether to grant the permanent injunction or not?
- The question over Delhi high court’s jurisdiction.
- The court’s insight
The court after hearing the arguments of both the parties pronounced the following judgment.
When someone delivers goods from his country to some other country i.e., exports them, such transfer of the goods is called a sale within the country from where the goods are exported and if on such goods trademark infringement happens then it will be considered as the act of infringement. As a consequence, the court-ordered interim injunction against the defendant not to use the trademark named “Maaza” in India or abroad. Furthermore, answering the question, whether the said court has jurisdiction or not? The court clarified that the defendant, being the manufacturer from India, the Delhi high court has the power to entertain the suit.
To support their judgement, the court provided the following points:
i. The deed between the parties is a legal and binding agreement which means the transfer of rights by the defendant to the plaintiff via this agreement is Valid
ii. In the said agreement, the right to IPR has also been transferred by the defendant to the plaintiff which gives the sole right to the plaintiff to exploit the said trademark.
iii. The agreement that has been signed by the defendant includes a clause which talks about confidentiality and the no-compete aspect which means the defendant, neither by themselves nor through any other party, can use formula, trademark and any other right associated with the product Maaza.
Earlier, Hindustan Coca-Cola Limited (now Coca-Cola) publicly exhibited an advertisement in which they asked a child a question about his favourite drink and the child was provided with two choices, the first being Thumbs Up, a product by Coca-Cola and the other option was labelled as PAPPI with the business logo similar to the Pepsi brand logo. Moving further, in the ad, the protagonist asked the child to taste both the brands, but before tasting them, he asked the child to provide the name of his current favourite drink.
Responding to the same, the child uttered the word “Pepsi” which was muted in the advertisement, though easily guessable through the child’s lip-sync. Following this incident, a blind tasting was conducted with a child where the child, after tasting both the brands, opted for the respondent’s drink and made a few defamatory comments against the drink labelled as PAPPI though pronounced and depicted as Pepsi. Such defamatory comments include a comment by the child saying Pepsi(muted) is only meant for children, translating the same in Hindi it would be “Bacho wali drink”, another remark by the child was shown where he said the following words “Wrong choice baby from now Yeh Dil Maange No More” mocking the tagline of the Pepsi.
The tussle between the two parties did not end here as the appellant made another allegation on the respondent where he said that the respondent had copied an advertisement of the appellant by portraying similar thoughts of a roller coaster in another of his advertisements and on the same, the appellant sought an injunction.
- The court’s insight
The issues before the court were :
(i) whether the respondent, through his advertisement, has disparaged and defamed the appellant?
(ii) whether the tagline “Ye Dil Mange More” has been infringed or not?
(iii) whether the respondent by depicting the roller coaster in his advertisement has disturbed the copyright of the appellant or not?
Answering all the issues individually, the court pronounced :For the first issue, the court figured out three broad factors named as Intent of commercial, Manner of the commercial, Storyline of the commercial and the message sought to be conveyed by the commercial. After perusing all the aspects, the court observed that although, the respondent had used the word PAPPI, through the lip-sync of the child it was quite clear that the child was uttering Pepsi and also the brand logo used to denote PAPPI by the respondent was similar to the logo of Pepsi’s brand. Furthermore, the statements used by the child such as “Bacho wali drink” and “Wrong choice baby from now Yeh Dil Maange No More” are also wrong.So, relying upon the above actions and statements, it is quite evident that the advertisement by the respondent was disparaged and defamatory.
Moving to the next, the court mentioned Section 29(1) of the Trademark Act 1999, they said that to know whether there is infringement or not, it is necessary to check how they are used. In this particular case, the court pronounced that there is no infringement as the tagline(s) are not being used in the course of trade as mentioned in Section 29. So, the respondent is not liable for the same.
Coming to the last issue, the court addressed it straightforwardly by applying the test found in the case R.G. Anand versus deluxe Film. After conducting the test, the court pronounced the judgement in the favour of the appellant, they said that after looking at both advertisements they can find only slight changes in the advertisement and the crux of both the ads were identical. So, relying on the said test the court ordered an injunction against the respondent.
This case revolves around two schools named Brilliant Public School Society and Brilliant Public School- Sitamarhi, where Brilliant Public-School Society, being the plaintiff, sued the Brilliant Public School Sitamarhi (hereinafter referred to as the defendant). In the plaint, the plaintiff argued that he has been using the name since 2000 and now, because of the unfortunate act of the defendant, the confusion among the people is arising and the act of the defendant is also hampering the relation of the plaintiff with his stakeholders. On the contrary, the defendant argued that he has been running the school since 1995 as earlier, he had a coaching institute with the name “Brilliant Coaching Institute” which afterward he converted into ‘Brilliant Public School’. Furthermore, the defendant to support his argument said that both the schools operate in different states so there is no ray of confusion among the society. Moreover, the logos of both the schools are also different.
- The court’s insight
- Trial Court: After hearing both sides, the trial court announced their judgement in favour of the defendant by saying that “brilliant is a word which is commonly used in the field of education i.e., it is generic. Furthermore, the logos of both the schools differ by a good amount and also, both the schools are situated in different states. So, there is the scope of confusion and relying on the said remarks, the court rejected the plaintiff’s application for an injunction.
- Chhattisgarh High Court: Not agreeing with the trial court’s decision , the plaintiff challenged the order by filing an appeal in the high court. The high court, after understanding the points and evidence provided by both the parties, reversed the order of the trial court and ordered an injunction against the defendant for not using the prominent trademark ‘Brilliant Public School’. To support their order, the court pronounced that the documents provided by the defendant failed to provide strong evidence supporting their claim that they are using the trademark “brilliant since 1995”. As each document provided by the defendant shows that they are exploiting the trademark “brilliant” since and after 2007 which means the plaintiff, using the trademark since 2000, acquire an edge over the defendant and as a result of the same, the injunction is passed against the defendant.
Furthermore, arguing on the statement made by the trial court commenting on the nature of the word “brilliant” as generic, the high court said: the trial court, by conducting the test laid down in Skyline case declared the word “brilliant” as generic, however, they failed to note that the word “skyline” during the time of its case was being used by a massive number of companies but in this case, there is hardly any evidence provided by any party which may denote that the word is used by a large number of institutions. The lack of such evidence clearly shows that the nature of the word “brilliant” is not generic and can create confusion among society.
Izuk Chemical Works, the plaintiff in this case, is a company that deals with herbal beauty products such as herbal henna, henna powder etc. As per the documents submitted by the plaintiff, they have been working since 1917 and they are using the trademark named “MOONSTAR” and a logo depicting a star in the lap of the moon. They have been using this trademark and logo since 1917 and 1998 respectively. However, later, the plaintiff got to know that defendant is also working and selling henna products under a trademark named “SUPERSTAR” though having similar attributes i.e., the defendant has copied all the essential aspects of the trademark, moreover, the cartons in which the defendant was trading his product was also visualising identical attributes such as colour, woman, words fonts etc. in short, the cartons of defendant is enough to confuse an ordinary person with cartons of the plaintiff. Aggrieved from the said acts of the defendant, the plaintiff requested for a permanent injunction from the court.
- The court’s insight
Following the arguments presented by both the parties, the court said that the trademark opted by the defendant does contain the essential elements of the plaintiff’s trademark, furthermore, the logo used by the defendant also possessed similar attributes as the plaintiff’s mark. Looking at all these points, the court declared it as a prima facie case of infringement. As a consequence, the court allowed the application of the plaintiff and ordered an injunction against the defendant i.e., restrained them from conducting their business with the trademark and logo they are using since they have started working.
Formulating and providing privileges to the general public for their beneficiary is the second most important task performed by the government, however, enacting laws to govern such privileges provided to the general public still remains at the first position.
In the case Izuk Chemical Works v. Babu Ram Dharam we can easily say that the defendant has infringed the rights of the plaintiff voluntarily, however, if we talk about the case Brilliant Public School Society v. Brilliant Public School Sitamarhi it is difficult to say whether the act of infringement is done voluntarily or accidentally. But, one thing that is common in both the cases is that in both the cases the plaintiff has suffered.
The author concludes that if one is ever thinking of exploiting any liberty provided under trademark law or any liberty covered by intellectual property rights as a whole, they should cross-check it twice to see whether rights over such particular thing have been already acquired by any other person and move ahead following due process of law.
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